Ex Parte Harley

Patent Trial and Appeal Board

Dec 29, 2014

11945832 (P.T.A.B. Dec. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JONAH HARLEY
____________________

Appeal 2012-006656
Application 11/945,832
Technology Center 2600
____________________

Before MAHSHID D. SAADAT, ELENI MANTIS MERCADER, and
JOHN F. HORVATH, Administrative Patent Judges.

HORVATH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant requests review of the rejection of claims 1–3, 5–14, and
16–25 under 35 U.S.C. § 134. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2012-006656
Application 11/945,832

2

SUMMARY OF THE INVENTION
The invention is directed to a capacitive sensing input device with
reduced sensitivity to humidity and condensation. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A mutual capacitance sensing input device, comprising:
at least one substrate;
at least one drive electrode disposed on the substrate and
substantially in a first plane;
a plurality of sense electrodes disposed on the substrate
and substantially in the first plane, the sense electrodes being
electrically isolated from the drive electrode, at least portions of
the sense electrodes being separated from the drive electrode by
a first gap;
at least one electrically conductive fixed potential or
ground conductor disposed in at least portions of the first gap
between the sense electrodes and the drive electrode and
substantially in the first plane, the electrically conductive fixed
potential or ground conductor being electrically isolated from
the sense electrodes and the drive electrode;
an electrically insulative touch surface disposed above
the substrate, the drive electrode and the sense electrodes, the
touch surface being separated from the drive electrode by a
second gap;
wherein the sense electrodes, the drive electrode, the
fixed potential or ground conductor, and the touch surface are
configured respecting one another to at least one of prevent,
inhibit and diminish direct electrical coupling through water or
water vapor disposed between the sense electrodes and the
drive electrode or atop, beneath or adjacent to the touch surface.

Appeal 2012-006656
Application 11/945,832

3
REJECTIONS
Claims 1-3, 5-14 and 16-25 stand rejected under 35 U.S.C § 103(a) in
view of Gerpheide1 and Applicant’s Admitted Prior Art2 (“AAPA”). Ans. 6.

ISSUES AND ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We are not persuaded by
Appellant’s arguments, and affirm the Examiner’s rejections for the
following reasons.
I. Whether Gepheide teaches or suggests placing a conductive
electrode in the same plane as and between at least portions of
the AAPA’s sense and drive electrodes.

The Examiner finds Gerpheide teaches disposing a water electrode
between electrodes to cancel out the effects of a liquid (e.g., water) on a
capacitive sensing touchpad device. Ans. 23. The Examiner also finds it
would have been obvious for a person of ordinary skill in the art at the time
of Appellant’s invention to dispose Gerpheide’s water electrode in the air
gap between electrodes in AAPA’s capacitive sensing device in order to
cancel out the effects of water on the AAPA device. Id.
Appellant argues it would not have been obvious to a person of skill
in the art to modify the AAPA as proposed by the Examiner because
Gerpheide’s water electrode is neither disposed in a gap between sense and
drive electrodes, nor in the same plane as the sense and drive electrodes.
App. Br. 41. Appellant further argues the proposed modification would not
have been obvious because Gerpheide teaches disposing the water electrode

1 U.S. Patent No. 6,730,863 issued May 4, 2004
2 Appellant’s Figures 1–4.
Appeal 2012-006656
Application 11/945,832

4
between drive electrodes, rather than between drive and sense electrodes,
and “the only way the cited teachings could be combined is by splitting the
single AAPA drive electrode into portions, and interposing water electrodes
therebetween.” Reply Br. 14–15. This, Appellant argues, would involve “a
significant redesign and reconfiguration of the AAPA and in any case would
result in a water electrode positioned between drive electrodes.” Id. 15.
We agree with the Examiner’s findings, and find Appellant’s
arguments unpersuasive. “The test for obviousness is what the combined
teachings of [prior art] references would have suggested to one of ordinary
skill in the art.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). But
“[t]here is a distinction between trying to physically combine . . . two
separate apparatus disclosed in two prior art references on the one hand, and
on the other hand trying to learn enough from the disclosures of the two
references to render obvious the claims in suit. . . . Claims may be obvious in
view of a combination of references, even if the features of one reference
cannot be substituted physically into the structure of the other reference.”
Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir.
1983).
Because Appellant’s arguments focus on the particular geometries of
AAPA and Gerpheide, we produce relevant figures from those references
below. First, we reproduce figure 1 from Appellant’s Application.
App
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06656
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Appeal 2012-006656
Application 11/945,832

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the 9 fingers of water electrode 18.3 Gerpheide further teaches the “number
of electrode fingers is not to be considered accurate. The figure is provided
only to illustrate the concept of using interleaved electrodes . . .” Id. 5:48–
52. Thus, the figure could as easily have shown surrounding a 5-fingered
drive electrode 16 with a 6-fingered water electrode 18, or a 3-fingered drive
electrode 16 with a 4-fingered water electrode 16, or a single drive electrode
16 with a 2-fingered or U-shaped water electrode 18.
Applying Gerpheide’s teaching to the AAPA, therefore, amounts to at
least partially surrounding the single disk shaped drive electrode 60 with an
arc or circularly shaped water electrode 18 to balance out the added
capacitance between the drive electrode 60 and sense electrodes 50, 52, 54,
and 56 due to the presence of water on the touch screen surface. As the
Examiner correctly found, this combination “would then teach [the] claimed
limitation wherein the sense electrode, drive electrode as well as water
electrodes would then be disposed on the same (i.e. first) plane as well as
water electrode being disposed/present between the electrodes.” Ans. 20.

II. Whether Gepheide teaches or suggests using a conductive
electrode to prevent, inhibit or diminish the increased capacitive
coupling between the AAPA’s sense and drive electrodes due to
water on a touchscreen surface.

Appellant next argues the Examiner erred in rejecting claim 1 because
Gerpheide fails to teach or suggest using the water electrode to “prevent,

3 Appellant argues “Gerpheide teaches that the water electrode is
surrounded by drive electrodes.” Reply Br. 19. However, we find
Gerpheide teaches the exact opposite—at least partially surrounding drive
electrode 16 by water electrode 18 as shown in figure 2. Gerpheide 5:46–48,
Fig. 2.
Appeal 2012-006656
Application 11/945,832

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inhibit and diminish direct electrical coupling through water or water vapor
disposed between the sense electrodes and the drive electrode or atop,
beneath or adjacent to the touch surface.” App. Br. 41. Instead, Appellant
argues, Gerpheide teaches using the water electrode to “compensat[e] for the
effect of direct electrical coupling through water disposed atop the touch
surface . . . [by] detecting such coupling with the deliberate addition of [the]
water electrode, and using that detection to generate a correcting signal to be
applied to the touch signal of interest.” Id. at 41–42. We are not persuaded
by Appellant’s arguments.
First, the Specification does not define what it means to “prevent,
inhibit and diminish direct electrical coupling4 through water or water vapor
disposed between the sense electrode and the drive electrode or atop,
beneath or adjacent to the touch surface,” as recited in claim 1. Instead, the
Specification discloses that introducing a ground conductor between the
drive and sense conductors “interrupts field lines and blocks direct electrical
coupling between drive electrode 60 and sense electrodes 50, 52, 54 and 56.”
Spec. 17:15–17; Figs. 5 & 6. The Specification further discloses “[b]y
placing first, second and third conductors between drive electrode 60 and
sense electrodes 50, 52, 54 and 56, and between sense electrodes 50, 52, 54
and 56, erroneous readings arising from undesired electrical coupling

4 We note the term direct electrical coupling generally refers to resistive or
conductive coupling between circuit components as opposed to inductive or
capacitive coupling between circuit components. See, e.g., Newnes
Dictionary of Electronics (Elsevier Science & Technology 1999). Since the
issue was not raised on Appeal, we do not consider whether the term “direct
electrical coupling” has been defined in the Specification, or whether claims
directed to preventing direct electrical coupling are supported by the written
description or enabled under 35 U.S.C. § 112 ¶ 2.
Appeal 2012-006656
Application 11/945,832

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between drive electrode 60 and sense electrodes 50, 52, 54 and 56 is
virtually, if not entirely, eliminated.” Id. 18:4–8.
As noted supra, Gerpheide suggests surrounding AAPA’s drive
electrode 60 with a water electrode. Consistent with Appellant’s
Specification, doing so would block direct electrical coupling between the
drive and sense electrodes, and eliminate undesired electrical coupling
between them. Spec. 17:15–17; 18:4–8. This phenomenon—introducing
grounded planes between electronic components on a circuit board to
prevent cross-talk or capacitive coupling between the components— is well
known in the art. As the Examiner found, it is “well known in the art [to]
use a conductive material (wire) in an electronic device to inhibit or
reduce/subtract or cancel electrical coupling of electrodes.” Ans. 21.
Second, we are not persuaded by Appellant’s argument that Gerpheide
teaches using the water electrode to generate a compensating signal to
subtract from the signal the drive electrode induces in the sense electrode.
Reply Br. 16–17 (citing Gerpheide 5:63–6:13). Although the cited passage
indicates the water electrode is used “to ‘balance’ out the added capacitance
between the drive electrodes (X and Y), and the common sensing electrode,”
and is “dedicated to subtracting the influence of water,” it does not describe
generating a compensating signal as Appellant contends, or subtracting out
the compensating signal from the sense electrode signal. Indeed, as shown
in Gerpheide’s Figures 4 and 5, the only input to Gerpheide’s touch sensing
circuitry is the signal from the sense electrode.

Appeal 2012-006656
Application 11/945,832

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III. Whether the gap between the sense and drive electrodes recited
in claim 2 is a design choice.

Appellant next argues the Examiner erred in rejecting claim 2, which
recites the gap between the drive and sense electrodes is between about 0.1
and 4 mm, as an obvious design choice. Appellant further argues “the range
specified in the claim would be particularly appropriate to the claimed
design in allowing for the insertion of the recited fixed potential or ground
conductor in that gap between the sense and drive electrodes.” App. Br. 45.
We are not persuaded by Appellant’s arguments.
As shown in Figure 1 of Appellant’s Drawings, AAPA includes an
electrode array 59 containing a drive electrode 60, sense electrodes 50, 52,
54 and 56, and gaps between the drive and sense electrodes. According to
the Specification, electrode array 59 is one of three components of a prior art
capacitive touch sensing device that also includes a puck assembly and a
capacitance sensing circuit. Spec. 8:2–11. The Specification discloses
“[t]hese three sets of components are typically customized according to the
particular dimensional and operational specifications set by a mobile device
manufacturer.” Id. 8:12–14 (emphases added). Consequently, we agree
with the Examiner’s finding that the particular dimensions for the gap
between the sense and drive electrodes recited in claim 2 are merely design
choices and would have been obvious to one of ordinary skill in the art.
Ans. 8, 24.

Appeal 2012-006656
Application 11/945,832

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IV. Whether Gepheide teaches or suggests placing a conductive
electrode in the same plane as and between at least portions of
interleaved sense and drive electrodes.

Claim 11 recites the device of claim 1, “wherein the device is a
capacitive sensing switch, the drive electrode and the plurality of sense
electrodes comprise interleaved conductors, and the ground conductor is
disposed between at least portions of the interleaved conductors.” Claims
App’x. The Examiner finds AAPA is a capacitive sensing switch with drive
and sense conductors, and Gerpheide’s Figures 1 and 2 teach the drive and
sense conductors can be interleaved conductors. Ans. 10. Moreover, the
Examiner finds it would have been obvious to ground Gerpheide’s water
electrode / ground conductor since grounding electronic devices was well
known in the art. Id.
Appellant argues “the interleaving of sense and drive electrodes is not
equivalent to the disposition of any other conductor between portions of
those interleaved conductors.” App. Br. 46. Appellant further argues “the
fact that grounding of an electronic device is well known in the art does not
mean it would be obvious to ground the water electrode.” Id. We are not
persuaded by Appellant’s arguments.
Although Appellant disagrees with the Examiner’s findings, Appellant
provides no basis for and cites no evidence to support Appellant’s contention
that the Examiner’s findings or reasoning are erroneous. Since an
“Attorney’s argument in a brief cannot take the place of evidence,” we are
not persuaded the Examiner erred in rejecting claim 11. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974).
Appeal 2012-006656
Application 11/945,832

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For the reasons indicated above, the Examiner’s rejection of claims 1,
2 and 11 are sustained. Appellants do not separately argue for the
patentability of claims 3, 5–10, 12–14, and 16–25. App. Br. 45–46. We
therefore sustain the rejections of these claims for the same reasons we
sustain the rejections of claims 1, 2 and 11. 37 C.F.R.
§ 41.37(c)(1)(vii).

DECISION
The Examiner’s rejection of claims 1–3, 5–14, and 16–25 are
sustained.
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).

AFFIRMED

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