Ex Parte Chen

Patent Trial and Appeal Board

Sep 19, 2016

12610589 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/610,589
21874 7590
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
11102/2009
09/21/2016
FIRST NAMED INVENTOR
Chung-Chun Chen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Ol 14775.104US2 1748
EXAMINER
EARLES,BRYANE
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHUNG-CHUN CHEN
Appeal2015-003786
Application 12/610,589
Technology Center 2600
Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and
NABEEL U. KHAN, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-003786
Application 12/610,589
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1---6 and 15-19. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A capacitive position detector, comprising:
(a) an input for providing a supply voltage, VIN;
(b) a capacitive sensor array, comprising:
(i) a first sensing output;
(ii) a second sensing output;
(iii) a plurality of capacitors, {C(m)}, m = 1, 2, ... , M, M being
a positive integer, each capacitor C(m) having a first
electrode and a second electrode;
(iv) a plurality of sensor resistors, {Rs(m)}, each sensor
resistor Rs(m) having a first terminal and a second
terminal, wherein the first and second terminals of the j-th
sensor resistor RsU) are electrically connected to the first
electrodes of the j-th capacitor CU) and the u+ 1 )-th
capacitorCU+l ), respectively,j = 1, 2, ... , (M-1), and the
first and second terminals of the M-th sensor resistor Rs(M)
are electrically connected to the first electrode of the M-th
capacitor C(M) and the first sensing output, respectively;
and
(v) a plurality of reference resistors, {RcoM(m)}, each
reference resistor RcoM(m) having a first terminal and a
second terminal, wherein the first and second terminals of
the j-th reference resistor RcoMU) are electrically connected
to the second electrodes of the j-th capacitor CU) and the
u+ 1 )th capacitor cu+ 1 ), respectively, and the first and
second terminals of the M-th reference resistor RcoM(M) are
electrically connected to the second electrode of the M-th
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Appeal2015-003786
Application 12/610,589
capacitor C(M) and the second sensing output, respectively;
and
( c) an operational amplifier having an inverting input terminal
electrically coupled to the first sensing output of the capacitive
sensor array, and a non-inverting input terminal, and an output
terminal, wherein the non-inverting input terminal and the second
sensing output of the capacitive sensor array are electrically
connected in common to the input, and wherein an output terminal
is adapted for outputting an output signal, V ouT; and
( d) a feedback capacitor CT electrically connected between the
inventing input terminal and the output terminal of the operational
amplifier.
Examiner's Rejections
The Examiner rejected claims 1-3 and 15-18 under 35 U.S.C.
§ 102(b) as being anticipated byNohno et al. (US 6,239,788 Bl, issued May
29, 2001). 1
The Examiner rejected claims 4---6 and 19 as being unpatentable under
35 U.S.C. § 103(a) as being unpatentable over ofNohno in various
combinations with other references. 2
1 As to this rejection, our decision as to the rejection of independent claim 1
is determinative. Therefore, except for our ultimate decision, the rejection
of claims 2, 3, and 15-18 is not discussed further herein.
2 As to this rejection, our decision as to the rejection of independent claim 1
is determinative. Therefore, except for our ultimate decision, the rejections
of claims 4---6 and 19 are not discussed further herein.
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Appeal2015-003786
Application 12/610,589
Appellant's Contention3
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(b) because Nohno does not expressly describe the
circuitry structure as claimed:
[As shown in the record], Appellant has emphasized that Nohno
fails to teach or reasonably suggest the specific connections
(i.e., circuitry) of the capacitors and resistors recited in
claim[ 1] of the present application.
Further, the Examiner has previously, and repeatedly,
stated that Nohno does indeed disclose an equivalent circuit of
the position detection device. By doing so, the Examiner has
previously, and repeatedly, acknowledged that that Nohno does
not expressly disclose each and every circuitry connection as
currently claimed in the present application. Accordingly, it
should be without a doubt that Nohno does not expressly teach
all of the elements of the circuitry structures as recited in
claim [ 1 ].
App Br. 29-30, emphases added.
2. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(b) because Nohno does not inherently teach the
circuitry structure as claimed:
[T]he Examiner has the burden to provide rationale or evidence
showing that Nohno inherently teaches the specific connections
(circuitry) as recited in claim[ 1]. [T]o satisfy the burden, the
Examiner must provide a basis in fact and/ or technical
reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the
teachings of Nohno. . .. [T]he Examiner did not satisfy such
burden by showing that Nohno merely teaches an equivalent
circuit of the circuitry structure as recited in claim[ 1]. As
3 This contention is determinative as to the rejections on appeal.
Therefore, Appellant's other contentions are not discussed herein.
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Appeal2015-003786
Application 12/610,589
Appellant has previously indicated in the response of record, an
equivalent circuit is a most simplified form of a theoretical
circuit. Implementations of the equivalent circuit, however,
generally include more complex circuitry structures. The same
equivalent circuit may be implemented with multiple, different
and more complex circuitry structures, and each
implementation of the circuitry structures may include different
elements (i.e. circuit components and connections). Further,
the Examiner has failed to provide a basis in fact and/or
technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessarily flows from the
teachings of Nohno .... As to the connections of the resistors,
the Examiner merely stated in the Office Actions of record that
the resistors are inherently provided since "it is well known in
the art that there exists a sheet resistance within any two points
of a conductive body". One of ordinary skill in the art, based
on the showing of capacitors or capacitive connections as
shown in Nohno, would still have insufficient information to
understand the inherent characteristics to implement the
specific connections of the capacitors and resistors as recited
in claim [ 1 ].
App Br. 30-32, emphases added.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being anticipated because
Nohno fails to disclose the argued limitation?
ANALYSIS
We agree with the Appellant's above recited contention.
The Examiner finds that "N ohno does not expressly disclose an array
of sensor resistors Rs(m); however, these resistors are inherently provided
since it is well known in the art that there exists a sheet resistance within any
two points of a conductive body" (Final Act. 3) and "Nohno does not
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Appeal2015-003786
Application 12/610,589
expressly disclose an array of reference resistors RcoM(m); however, these
resistors are inherently provided since it is well known in the art that there
exists a sheet resistance within any two points of a conductive body" (Final
Act. 3--4). We conclude the Examiner's analysis shows that inherent
"resistances" exist. However, for the reasons set forth by Appellant, the
Examiner's analysis does not show the particular claimed circuit structure is
known in the art where the circuit structure comprises two groups of plural
resistors (not merely resistances) each with a first terminal, a second
terminal, and being electrically connected to a particular electrode of the
plural capacitors.
CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 1-3 and 15-18 as being anticipated under 35 U.S.C. § 102(b).
(2) Appellant has established that the Examiner erred in rejecting
claims 4---6 and 19 as being unpatentable under 35 U.S.C. § 103(a).
(3) On this record, claims 1-6 and 15-19 have not been shown to be
unpatentable.
DECISION
The Examiner's rejections of claims 1---6 and 15-19 are reversed.
REVERSED
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