Ex Parte Abileah et al

Patent Trial and Appeal Board

Oct 20, 2014

11901649 (P.T.A.B. Oct. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ADIEL ABILEAH and WILLEM DEN BOER

Appeal 2012-0043501
Application 11/901,649
Technology Center 2600
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Before JEAN R. HOMERE, KEN B. BARRETT, and
STANLEY M. WEINBERG, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellants identify the real party in interest as Apple Inc. App. Br. 1.
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Application 11/901,649

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 74–90. Claims 1–73 have been canceled. App.
Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ Invention
Appellants invented a display device having an image viewing surface
(Fig. 15) containing a stack of layers (Fig. 1) including a plurality of light
sensitive elements with multiple nonzero densities across the surface for
detecting an object near or thereon. Spec. ¶¶ 68, 74.
Representative Claim
Independent claim 74 is representative. It reads as follows:
74. A display device comprising:
a surface on which an image is displayed for viewing;
a stack of layers configured to display the image on the
surface; and
a plurality of light sensitive elements included in the
stack of layers, the plurality of light sensitive elements capable
of detecting an object on or near the surface, the plurality of
light sensitive elements having multiple nonzero densities
across the surface.

Prior Art Relied Upon
Inoue US 5,926,238 July 20, 1999
Brownlee US 6,188,781 B1 Feb. 13, 2001
Kim US 2003/0174870 A1 Sept. 18, 2003
Bergquist US 2003/0234759 A1 Dec. 25, 2003

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Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 74–83, 89 and 90 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Kim, Inoue, and Bergquist.
Claims 84–88 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kim, Inoue, Bergquist, and Brownlee.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 3–8, and the Reply Brief, pages 2–6.2

Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in finding
the proposed combination of Kim, Inoue, and Bergquist teaches or suggests,
light sensitive elements having multiple nonzero densities across a viewing
surface, as recited in claim 74?
Appellants argue that the proffered combination of references does
not teach the disputed limitations emphasized above. App. Br. 3. In
particular, Appellants argue that Kim discloses a display device with a first
density of sensors across an image display region (viewing surface- 402),
and a second density of sensors across a fingerprint recognition region (non-
viewing surface- 404). Id. at 3–4. According to Appellants, because Kim’s

2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed October 10, 2011), the Reply Brief (filed
January 19, 2012) and the Answer (mailed November 21, 2011) for the
respective details. We have considered in this Decision only those
arguments Appellants actually raised in the Briefs. Any other arguments
Appellants could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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fingerprint recognition region is not a viewing surface, Kim only discloses a
single density across a viewing region, which does not share the same
surface with the fingerprint recognition region. Reply Br. 2.
In response, the Examiner finds although Kim discloses an image
viewing region and a fingerprint recognition region, both regions are part of
a single surface upon which a stack of layers displays an image for viewing.
Ans. 21. According to the Examiner, because the disputed claim language
does not require all regions of the surface be capable of displaying an image
or be capable of detecting an object near or thereon, Kim’s disclosure of a
single display surface having a viewing region with a nonzero density and a
finger recognition region with another nonzero density teaches the disputed
limitations. Id.
On the record before us, we find error in the Examiner’s obviousness
rejection of claim 74. As correctly noted by the Examiner, Kim’s display
surface includes light sensors for a display region, and touch sensors for a
fingerprint recognition region. While the claim does not require any overlap
between the two regions, the claim nonetheless requires a plurality of light
sensitive elements capable of detecting an object AND having multiple
nonzero densities across the “surface on which an image is displayed for
viewing.” That is, the light sensitive elements must be capable of displaying
data on a viewing surface, and they must also be capable of detecting an
object near or thereon. However, in Kim, the light sensitive elements in the
viewing region are only capable of displaying data, whereas the sensor
elements in the fingerprint region are only capable of recognizing
fingerprints. Thus, while the two regions are part of the same display device,
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none of the elements therein is capable of both detecting an object near or on
the surface and displaying an image thereon. Therefore, we agree with
Appellants that Kim’s light sensitive elements do not have multiple nonzero
densities across a same display surface. Because Appellants have shown at
least one reversible error in the Examiner’s rejection, we need not reach the
merits of Appellants’ other arguments.
Because claims 75–90 recite commensurate limitations as those of
claim 74 discussed above, Appellants have shown error in the Examiner’s
rejections of those claims for the foregoing reasons.
DECISION
We reverse the Examiner’s rejections of claims 74–90 as set forth
above.
REVERSED

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