Apple Inc. et al.

Patent Trials and Appeals Board

Oct 23, 2020

15882010 - (D) (P.T.A.B. Oct. 23, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/882,010 01/29/2018 Phillip Michael Hobson 090911-
P5377USC11-1075867
8228
65656 7590 10/23/2020
KILPATRICK TOWNSEND & STOCKTON LLP/Apple
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
PHAM, LONG D
ART UNIT PAPER NUMBER
2691
NOTIFICATION DATE DELIVERY MODE
10/23/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________ 

Ex parte PHILLIP MICHAEL HOBSON, ERIK L. WANG, KENNETH A.
JENKS, ROBERT J. HILL, RICHARD HUNG MINH DINH, TANG YEW
TAN, ADAM D. MITTLEMAN, BARTLEY K. ANDRE, DANIEL J.
COSTER, DANIELE G. DE IULIIS, RICHARD P. HOWARTH,
JONATHAN P. IVE, STEVE P. JOBS, DUNCAN ROBERT KERR, SHIN
NISHIBORI, MATTHEW DEAN ROHRBACH, DOUGLAS B.
SATZGER, CALVIN Q. SEID, CHRISTOPHER J. STRINGER, EUGENE
ANTONY WHANG, RICO ZÖRKENDÖRFER, and
ROBERT W. SCHLUB
________________

Appeal 2020-004469
Application 15/882,010
Technology Center 2600
________________

Before JOHNNY A. KUMAR, JASON J.CHUNG, and
JASON M. REPKO, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Apple Inc. is the real party in
interest. Appeal Br. 3.
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INVENTION
The claimed invention relates to handheld electronic devices. Spec.
¶ 2. Claim 1 is illustrative of the invention and is reproduced below:
1. A wireless communications device comprising:
wireless communications circuitry;
a display that includes a glass element, wherein the glass
element includes an opening extending through the glass
element;
a button included in the opening; and
a plurality of touch screen sensors covered by the glass
element, wherein at least one of the plurality of touch screen
sensors is integrated into the display, and wherein at least a
portion of the plurality of touch screen sensors are positioned
between the wireless communications circuitry and the glass
element of the display.

Appeal Br. 15 (Claims App.).
REJECTIONS
Claim 1, 3–8 and 10–14 are rejected under pre-AIA 35 U.S.C. 103(a)
as being unpatentable over Bang et al. (US 2008/0070635 A1, published
March 20, 2008) in view of Liu et al. (US 2003/0206161 A1, published
November 6, 2003).
Claims 2, 9 and 15–20 are rejected under pre-AIA 35 U.S.C. 103(a) as
being unpatentable over Bang in view of Liu and in view of Castaneda et al.
(US 2008/0049980 A1, published February 28, 2008).

ANALYSIS
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
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make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
We agree with the Examiner and adopt as our own (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief (see Ans. 3–15). We have
considered Appellant’s Reply Brief, but find it unpersuasive to rebut the
Examiner’s responses. We highlight and address specific findings and
arguments for emphasis as follows.
The Examiner finds that Bang teaches all of the limitations of claim 1,
except a display that includes a glass element. Final Act. 3. The Examiner
finds that Liu teaches the glass element limitation of claim 1. Final Act. 4;
Ans. 13–15 (citing Liu ¶ 29; Fig. 2b).
In particular, Liu discloses
[t]he transparent protective layer 150 is consisted of
glass, plastics, acrylic fiber, or the like transparent materials.
For example, the above-mentioned transparent protective layer
may be a coated glass (FG-SAl T9)… Therefore, the above-
mentioned coated glass can efficiently reduce monitor light
damage and the loss of transparency.

Liu ¶ 29 (emphasis added).
The Examiner further concludes that a person having ordinary skill in
the art at the time of Appellant’s invention would have found it obvious to
modify the device of Bang with the teachings of Liu, for the purpose of
efficiently reducing monitor light damage and loss of transparency. Final
Act. 4 (citing Liu ¶ 29).
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Appellant argues that Bang and Liu are not combinable because “Liu
reference pertains to a capacitive touch screen that is a fundamentally
different technology than the resistive touch screen of Bang.” (Reply Br. 3),
and thus “combining the disclosures of Bang and Liu would render Bang
unsatisfactory for its intended purpose,” (Appeal Br. 6, 9), Namely,
Appellant argues,
Bang reference pertains to a Resistive Touch Screen and outer
protective film layer 75 needs to be sufficiently flexible to
allow the touch screen to work properly. Appellants further
noted that a person of ordinary skill in the art would appreciate
that the relatively thick glass layer discussed in the Liu
references (which discloses a capacitive touch screen) is not
sufficiently flexible to be incorporated as the outer protective
layer of the resistive touch screen disclosed in Bang and doing
so would make the resistive touch screen disclosed in Bang
inoperable.

Reply Br. 3. (emphasis added).
Furthermore, Appellant contends,
The Examiner's point - that Liu teaches that its protective layer
150 could be either glass or plastic - is an indication that
Rejection has an element of hindsight to it. After all, if Liu
teaches that either plastic or glass could be used as protective
layer 150 and a person of skill in the art would recognize that
the outer most layer of a resistive touch screen is typically a
very thin plastic layer, such as a polyethylene terephthalate
(PET) layer or other clear thermoplastic film, the combination
of Bang and Liu made by a skilled artisan would result in
protective film 75 of Bang being a plastic layer as disclosed in
Liu, not a 2 mm glass layer.

Reply Br. 3. (emphasis added).

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“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Applying the guidance above, we agree with the Examiner that Liu
provides an express motivation to combine, namely “glass can efficiently
reduce monitor light damage and the loss of transparency.” Liu ¶ 29; see
Final Act. 4.
Appellant’s argument that combining the teachings of Bang with Liu
would render Bang unsatisfactory for its intended purpose (Appeal Br. 6–
11), is unavailing because:
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what
the combined teachings of the references would have suggested
to those of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). The artisan is not compelled
to blindly follow the teaching of one prior art reference over the other
without the exercise of independent judgment. See Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
Here, the Examiner concludes, and we agree that:
[T]he primary reference of Bang teaches the basic structure and
limitations of the claimed invention as stated in the rejection
above, except for a glass element. The secondary reference of
Liu teaches the concept of having the transparent protective
layer 150 is consisted of glass, plastic, acrylic fiber or the
like transparent materials. For example, transparent
protective layer may be a coated glass ... the thickness of the
coated glass is about 2.00mm (Liu: fig. 2b, [0029]). Thus,
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replacing Bang's top protection film layer 75 with Liu's
concept of having a top transparent protective layer 150
made of coated glass would not make Bang's device
unsatisfactory for its intended purpose because the coated glass
would obviously have to be modified thin enough to be
applicable with the device of Bang. Also, it is obvious that one
of ordinary skill in the art at the time the invention was
made would be able to make/modify the thickness of the coated
glass to have a certain degree of bending to be operable with
Bang's device. Overall, the secondary reference Liu is simply to
teach that the concept of having the top protective layer can be
made of glass and be used in a touch display device is known in
the art. Therefore, the combination of Bang in view of Liu
would result in the top protective layer 75 be made of glass to
be functional with the device of Bang.

Ans. 14–15.

We also disagree with Appellant’s contention that the Examiner’s
rationale amounts to hindsight assertions. Appeal Br. 3. We are cognizant
that our reviewing courts have not established a bright-line test for hindsight.
In KSR, the Supreme Court guides that “[a] factfinder should be aware, of
course, of the distortion caused by hindsight bias and must be cautious of
argument reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 36 (1966)).
Nevertheless, the Supreme Court qualified the issue of hindsight by stating,
“[r]igid preventative rules that deny factfinders recourse to common sense,
however, are neither necessary under our case law nor consistent with it.”
Id.
In reviewing the record here, we find Appellant has not identified any
knowledge relied upon by the Examiner that was gleaned only from
Appellant’s disclosure and that was not otherwise within the level of
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ordinary skill in the art at the time of invention. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971).
Moreover, Appellant has not provided persuasive evidence that
combining the respective teachings of the references would have been
“uniquely challenging or difficult for one of ordinary skill in the art,” or that
such a combination would have “represented an unobvious step over the
prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007). Nor has the Appellant provided any objective evidence of
secondary considerations, which our reviewing court guides “operates as a
beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and
Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
As discussed above, the Examiner has instead proffered an articulated
reasoning with rational underpinnings, particularly in the case of a protective
layer to be made of glass for the purpose of efficiently reducing monitor
light damage and loss of transparency. Final Act. 3.
Based on the foregoing and by a preponderance of the evidence, we
sustain the Examiner’s obviousness rejection independent claims 1, 7, 15
and their respective dependent claims not argued separately.
Accordingly, we affirm the Examiner’s obviousness rejections of
claims 1–20.
CONCLUSIONS
The Examiner did not err in rejecting claims 1–20 as being obvious
under pre-AIA 35 U.S.C. § 103(a) over the cited combinations of references.

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DECISION SUMMARY
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 3–8, 10–
14
103(a) Bang, Liu 1, 3–8, 10–
14

2, 9, 15–20 103(a) Bang, Liu, Castaneda 2, 9, 15–20
Overall
Outcome
1–20
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED