Ex Parte Liu et al

Patent Trial and Appeal Board

Jun 6, 2016

13409134 (P.T.A.B. Jun. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/409,134 03/01/2012 Chen-Yu Liu
83121 7590 06/08/2016
Bayramoglu Law Offices LLC
2520 St. Rose Parkway
Suite 309
Henderson, NV 89074
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.
TPK-P08001-02-USI 2427
EXAMINER
CHOWDHURY, AFROZA Y
ART UNIT PAPER NUMBER
2628
NOTIFICATION DATE DELIVERY MODE
06/08/2016 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):
in@bayramoglu-legal.com
Richard.Huang@tpk.com
Wendy.XF.Chen@tpk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHEN-YU LIU and KWAN-SIN HO
Appeal2014-006835
Application 13/409,134
Technology Center 2600
Before MAHSHID D. SAADAT, CHARLES J. BOUDREAU, and
ADAM J. PYONIN, Administrative Patent Judges.
BOUDREAU, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-56, all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION under pre-AIA 35 U.S.C. § 112, second paragraph, pursuant to
our authority under 37 C.F.R. § 41.50(b ).
1 An oral hearing was held in this appeal on April 6, 2016. A transcript from
the oral hearing was entered into the file on May 5, 2016.
2 Appellants identify TPK Touch Solutions Inc. as the real party in interest.
App. Br. 3.
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Application 13/409, 134
STATEMENT OF THE CASE
Appellants' claimed invention "relates to a touch panel, especially to a
capacitive touch panel assembled with a display panel." Spec. i-f 2.
Claims 1, 7, 13, 21, and 2 9 are independent. Independent claims 1
and 13, reproduced below, are illustrative of the subject matter on appeal
(emphasis and paragraphing added):
1. An integrally-formed capacitive touch panel, comprising:
a singular lens substrate having a first surface for receiving
physical tactile input and a second surface;
a mask layer; and
a sensing circuit,
wherein said sensing circuit is formed on said second
surface of said singular lens substrate and said mask layer is
formed on said first surface of said singular lens substrate.
13. A capacitive touch panel comprising:
a sensing circuit;
a physical tactile inputting integration having a peripheral
masking area and having one side for receiving physical tactile
input and another side for forming said sensing circuit,
wherein there is no other substrate made of glass or plastic
material laminated or bonded to the opposite side of said
sensing circuit.
REJECTIONS ON APPEAL
Claims 13-34 stand rejected under 35 U.S.C. § 112(a) or pre-AIA
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. See Final Act. 2-3.
Claims 1--4, 6-10, 12-18, 20-26, 28-32, 34--44, 46--49, and 51-55
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
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Application 13/409, 134
Applicants' Admitted Prior Art ("AAP A") and Hotelling
(US 2008/0165158 Al, published July 10, 2008). See Final Act. 4--10.
Claims 5, 11, 19, 27, 33, 45, 50, and 56 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over AAPA, Hotelling, and Sanelle
(US 7,405,779 B2; issued July 29, 2008). See Final Act. 10-11.
ANALYSIS
Re} ection under 3 5 US. C. § 112
The Examiner finds claims 13-34 contain subject matter that "was not
described in the specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA
the inventor( s ), at the time the application was filed, had possession of the
claimed invention." Final Act. 2-3. In particular, according to the
Examiner:
Claims 13, 21, and 29 recite the limitation, "there is no
other substrate made of glass or plastic material laminated
or bonded to the opposite side of said sensing circuit". This
limitation constitutes a negative limitation, i.e. stating what the
invention does not do rather what it does and as such, according
to [the Manual of Patent Examining Procedure (MPEP)], has to
have an explicit support in the original specification. See MPEP
2173.05(i). Besides according to the original specification and
figures, there are more layers are bonded to the opposite side of
the said sensing circuit.
Final Act. 3.
In traversal of the rejection, Appellants assert that the original
Specification supports the limitation quoted by the Examiner. App. Br. 11-
13. Appellants cite, in particular, paragraph 22 of the published
Specification (i.e., US 2012/0162130 Al; "the '130 publication"), which
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Application 13/409, 134
states that "there is no need to adopt other substrates for the integrally-
formed capacitive touch panel 1," and that "there is no need to perform
lamination in the assembly of the present touch panel as required in the
conventional touch module." Id. at 12. Appellants rely on declaration
evidence of Dr. George E. Gerpheide, who opines that one skilled in the art
"would clearly understand the meaning of 'there is no other substrate
laminated or bonded to the opposite side of said sensing circuit,"' and that
"one of ordinary skill in the art would know [from the original specification]
that there is no other substrate made of glass or plastic material laminated or
bonded to the opposite [side] of the sensing circuit." Id. at 12-13 (citing
Gerpheide Deel. i-fi-f 12-14 (citing '130 publication i-fi-122, 23, and 303)).
The Examiner does not provide any response in the Answer to
Appellants' contentions, other than the general statement that "[ e ]very
ground of rejection set forth in the [Final Office Action] is being maintained
by the examiner." Ans. 2.
We agree with Appellants that the Specification, including, in
particular, the portions cited by Appellants, provides sufficient written
description support for the limitation "there is no other substrate made of
glass or plastic material laminated or bonded to the opposite side of said
sensing circuit," to demonstrate that the inventors had possession of that
claim limitation at the time the application was filed. Accordingly, we do
3 Although Dr. Gerpheide recites paragraphs 22, 23, and 30 of "the original
specification," we understand the paragraph numbers cited by Dr. Gerpheide
instead to correspond to the '130 publication. Other than the paragraph
numbers, however, we discern no differences between paragraphs 22, 23,
and 30 of the '130 publication and corresponding paragraphs 20, 21, and 28
of the original Specification, respectively.
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Application 13/409, 134
not sustain the Examiner's rejection of claims 13-34 under 35 U.S.C.
§ 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph.
Rejections under 35 USC§ 103(a)
Claims 1-3, 6-9, 12, and 35-40
The Examiner finds AAP A discloses all elements of the integrally
formed capacitive touch panel of claim 1, except for specific teaching of
"said [sensing] circuit is formed on [said] second surface of said singular
lens substrate and said mask layer is formed on [said] first surface of said
singular lens substrate." Final Act. 4. The Examiner finds Hotelling teaches
those further limitations, citing Hotelling's patterning 1178 and blackmask
1190 as the recited "sensing circuit" and "mask layer," respectively formed
on second and first surfaces of a singular lens substrate (i.e., Hotelling's
clear polycarbonate (PC) 1118). Id. (citing Hotelling i-f 80, Fig. 11 A). The
Examiner additionally finds "it would have been obvious to one skilled in
the art at the time of the invention ... to modify AAP A's touch panel by
incorporating Hotelling' s idea of including a sensing circuit and mask layer
that are formed on the opposite surface of said singular lens substrate in
order to make a cost-effective and space-efficient touch panel." Id. at 4--5.
The Examiner relies on essentially the same findings with respect to
independent claim 7. Id. at 6.
Appellants assert that Hotelling fails to disclose "said sensing circuit
is formed on said second surface of said singular lens substrate and said
mask layer is formed on said first surface of said singular lens substrate."
App. Br. 15. In particular, according to Appellants, "Hotelling's sensing
circuit (1178, 1180) is not formed on the second surface of the singular lens
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substrate," but "[i]nstead, sensing circuit (1178, 1180) is formed on different
surfaces of substantially transparent 0.5 borosilicate or aluminum silicate
glass of glass subassembly 1176." Id. at 15-16. Further, "Hotelling's
b lackmask 1190 is formed on clear PC 1118." Id. at 16 (citing Hotelling
i-f 80). Appellants contend "clear PC 1118 and substantially transparent 0.5
borosilicate or aluminum silicate glass of glass subassembly 1176 are two
separate substrates, and the two substrates are bonded together by [pressure-
sensitive adhesive (PSA)] 1108," in contrast with the "claim[ ed] ...
structure wherein the mask layer and the sensing circuit are placed on
opposite sides of a single substrate." Id.; see also Reply Br. 2 ("Applicant
claims a single substrate and mask layer is formed (or grown) on the first
surface of the single substrate while the sensing circuit is formed (or grown)
on the second surface of the single substrate.").
Appellants' contentions are not persuasive. We agree with the
Examiner that Hotelling discloses a mask layer (i.e., blackmask 1190) and a
sensing circuit (i.e., patterning 1178) that are formed on opposite surfaces of
clear PC 1118 (i.e., on "a first surface for receiving physical tactile input"
and "a second surface," respectively, of a "singular lens substrate," as
recited in independent claim 1; or on "a top surface for receiving physical
tactile input" and "a bottom surface," respectively, of a "singular substrate,"
as recited in independent claim 7). Final Act. 4; Hotelling i-f 80, Fig. 1 lA.
Although claims 1 and 7 recite a mask layer and a sensing circuit formed on
different surfaces of a "singular" substrate, we understand that to mean that a
mask layer and a sensing circuit both must be formed on the same substrate,
but not as precluding either the presence of a second substrate also being
included elsewhere in a touch panel or additional sensing circuitry (e.g.,
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Application 13/409, 134
Hotelling' s patterning 1180) being formed on such a second substrate. 4
Accordingly, Appellants' characterization of Hotelling as teaching "two
separate substrates" is unpersuasive of error.
Moreover, despite Appellants' equation of "formed" with "grown" in
the Reply Brief (see Reply Br. 2), we find no support for such a narrow
reading of "formed" in the Specification. See In re Zietz, 893 F.2d 319, 321
(Fed. Cir. 1989) (during patent examination the pending claims must be
interpreted as broadly as their terms reasonably allow). Under a broad, but
reasonable, interpretation of the term "formed," we agree with the Examiner
that Hotelling discloses that patterning 1178 is formed on clear PC 1118
(Final Act. 4), at least by virtue of its being bonded thereto by PSA 1108
(see Hotelling i-f 80). Indeed, dependent claim 4, which depends from claim
1 and, therefore, incorporates by reference that "said sensing circuit is
formed on said second surface of said singular lens substrate" (see 35 U.S.C.
§ 112(d) or pre-AIA 35 U.S.C. § 112, fourth paragraph), explicitly recites a
touch panel of claim 1 further comprising "a smooth layer between said
singular lens substrate and said sensing circuit." Claim 10, which depends
from claim 7, similarly recites "a smooth layer between said singular
substrate and said sensing circuit." Because a "claim in dependent form
shall ... specify a further limitation of the subject matter claimed"
(35 U.S.C. § 112(d) or pre-AIA 35 U.S.C. § 112, fourth paragraph), it
follows that the term "formed" must at least be broad enough to encompass a
4 Claims 1 and 7 each recite the transitional term "comprising," which is an
open-ended term of art used in claim language and means that the named
elements are essential, but other elements may be added and still form a
construct within the scope of the claim. See Genentech, Inc. v. Chiron
Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
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Application 13/409, 134
relationship in which there is a layer (e.g., Hotelling's PSA 1108) between
the singular substrate and the sensing circuit in each of claims 1 and 7.
Accordingly, we affirm the Examiner's rejection of independent
claims 1 and 7 under 35 U.S.C. § 103(a) as being unpatentable over AAPA
and Hotelling. We also affirm the Examiner's rejection of dependent
claims 2, 3, 6, 8, 9, 12, 35--40, for which Appellants do not provide any
separate substantive argument, on that same ground.
Claims 4 and 10
Claims 4 and 10 depend from claims 1 and 7, respectively, and recite
that the claimed touch panels further comprise "a smooth layer between said
singular [lens (claim 4)] substrate and said sensing circuit." The Examiner
points to Hotelling's PSA 1108 as teaching that limitation in both claims 4
and 10. Final Act. 5---6.
Appellants contend that Hotelling fails to disclose the smooth layer of
claims 4 and 10. App. Br. 21. In particular, according to Appellants,
[T]he element indicated by the Examiner is PSA 1108 for
bonding housing 1118 and substantially transparent glass
subassembly 1176 (fig. 1 lA [0080] of Hotelling) rather than the
smooth layer claimed by applicants. . . . Hotelling discloses
[glass-on-glass ( G+G)] structure, cover lens with black mask and
substrate with sensing circuit are produced separately. PSA is
used for bonding cover lens and substrate. However, in the
structure of applicant's disclosure, both black mask and sensing
circuit are formed on cover lens. Smooth layer is disposed
between the cover lens and the sensing circuit for smoothening
the sensing circuit.
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Application 13/409, 134
Therefore, the PSA indicated by the Examiner is not only
structurally but also functionally different from the smooth layer
claimed by applicants.
Id. at 20-21 (emphasis omitted).
Appellants' contentions are again unpersuasive. Notwithstanding
Appellants' argument that "PSA is used for bonding cover lens and
substrate," it is clear from Hotelling's Figure 1 lA and corresponding
disclosure that PSA 1108 forms a 0.100 millimeter layer directly between
clear PC 1118 and patterning 1178. See Hotelling i-f 80 (reciting "0.100
substantially transparent PSA 1108"); see also id. i-f 30 (stating that
dimensions are in units of millimeters unless otherwise noted). The fact that
patterning 1178 may also be formed on the surface of a second substrate
(i.e., glass subassembly 1176) does not negate Hotelling's teaching. Further,
Appellants point to no definition of "smooth layer" in the Specification or to
any ordinary meaning known in the art that would exclude PSA 1108 from
the broadest reasonable intei pretation of that term.
Accordingly, we affirm the Examiner's rejection of claims 4 and 10
under 35 U.S.C. § 103(a) as being unpatentable over AAPA and Hotelling.
Claims 5 and 11
Claims 5 and 11 depend from claims 1 and 7, respectively, and require
that the claimed touch panels further comprise a shielding layer formed on
the periphery of a particular surface of the recited singular substrate, wherein
said shielding layer is positioned between the substrate and the recited
sensing circuit. The Examiner finds that AAP A as modified by Hotelling
does not teach a shielding layer formed on the periphery of the second
surface of the singular lens substrate, as recited in claim 5, but that Sanelle
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Application 13/409, 134
teaches an integrally formed capacitive touch panel comprising a shielding
layer formed on a second surface of a singular lens. Final Act. 10 (citing
Sanelle, col. 5, 11. 23-39, col. 6, 11. 13-23, Fig. 1 (EMI shield 27)). The
Examiner additionally finds it would have been obvious to one skill in the
art at the time of the invention was made to incorporate Sanelle's idea of
adding a shielding layer to modify the capacitive touch panel of AAP A (as
modified by Hotelling) "to make an improved and cost-effective integrally[]
formed capacitive touch panel where a shielding layer [is] formed on the
periphery of the second surface of the singular lens in order to prevent noise
signals." Id. at 11. The Examiner relies on the same findings with respect to
claim 11. Id.
Appellants contend, in traversal of the rejection, that "Sanelle's EMI
shield 27 has a different function than Applicants' shielding" and that "there
is no suggestion or motivation to make the proposed modification indicated
by the Examiner." App. Br. 23. According to Appellants, "EMI shield 27 of
Sanelle is a complete layer disposed on LCD panel, which covers the whole
panel area; while the shielding layer claimed by applicants is disposed
between the periphery of the singular lens and the mask layer." Id. at 24.
Appellants further contend that EMI shield 27 has a different function than
the recited shielding layer: "EMI shield 27 of Sanelle is used for reducing
ambient light reflection in the view of an observer while the shielding layer
claimed by Applicants is for preventing noise signals between the finger and
the metal trace. Id. (citing Sanelle, col. 5, 11. 23-39; Spec. i-f 4).
We are not persuaded of Examiner error. Claims 5 and 11 recite a
shielding layer "formed on the periphery" of the second or bottom surface of
the recited singular substrate, but do not recite that the shielding layer is
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Application 13/409, 134
"formed only on the periphery" of those surfaces. Accordingly, Appellants'
contention that Sanelle's EMI shield 27 "is a complete layer ... which
covers the whole panel area" is unpersuasive. Moreover, notwithstanding
Appellants' arguments concerning the intended function of the recited
shielding layer, claims 5 and 11 do not recite prevention of noise signals.
Accordingly, we affirm the Examiner's rejection of claims 5 and 11
under 35 U.S.C. § 103(a) as being unpatentable over AAPA, Hotelling, and
Sanelle.
Claims 13-34 and 41-56
For reasons stated in the following section, we determine that claims
13-34 and 41-56 are indefinite. Having so determined, we cannot sustain
the rejections of those claims under 35 U.S.C. § 103(a) because to do so
would require speculative assumptions as to the meaning and scope of the
claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) (holding that
the Board erred in affirming a rejection of indefinite claims under 35 U.S.C.
§ 103(a)).
We emphasize that we reverse the§ 103(a) rejection of claims 13-34
and 41-56 only because we determine that those claims are indefinite;
hence, no decision has not been made based on the merits of the prior art
rejections of claims 13-34 and 41-56.
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Application 13/409, 134
NEW GROU-ND OF REJECTION PURSUANT TO 37 C.F.R. § 41.50(b)
The following is a quotation of pre-AIA 35 U.S.C. § 112, second
paragraph: 5
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.
Claims 13-34 and 41-56 are rejected under pre-AIA 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
Independent claims 13, 21, and 29 each recite the limitation "wherein
there is no other substrate made of glass or plastic material." Because those
claims do not otherwise recite a "substrate made of glass or plastic material,"
there is insufficient antecedent basis for this limitation in the claims to
determine what is meant by "other substrate made of glass or plastic
material" (emphasis added). It is unclear, for example, whether the claims
require that the recited "capacitive touch panel" comprise a "substrate" at
all, or, if so, whether such substrate must be made of glass or plastic
material. Accordingly, claims 13, 21, and 29 are indefinite.
Claims 13 and 29 each also recite the limitation "the opposite side of
[said (claim 13) I the (claim 29)] sensing circuit." There is insufficient
antecedent basis for this limitation in the claims. In particular, claims 13 and
5 Section 4(c) of the Leahy-Smith America Invents Act (AIA), P.L. 112-29,
re-designated 35 U.S.C. § 112, second paragraph, as 35 U.S.C. § 112(b).
Because Appellants' application was filed before September 16, 2012 (the
effective date of the statute), we refer to the pre-AIA second paragraph of
35 U.S.C. § 112.
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29 do not previously recite any "side of the sensing circuit" with respect to
which the recited "opposite side" may be "opposite." Accordingly, claims
13 and 29 are indefinite for this additional reason.
Claims 14--20 and 41--45 depend from claim 13, claims 22-28 and
46-50 depend from claim 21, and claims 30-34 and 51-56 depend from
claim 29, and, likewise, all are indefinite.
DECISION
The Examiner's rejection of claims 13-34 under 35 U.S.C. § 112(a) or
pre-AIA 35 U.S.C. § 112, first paragraph, is REVERSED.
The Examiner's rejections of claims 1-12 and 35--40 under 35 U.S.C.
§ 103(a) are AFFIRMED.
The Examiner's rejections of claims 13-34 and 41-56 under
35 U.S.C. § 103(a) are REVERSED PROFORMA.
In a NEW GROUND OF REJECTION pursuant to our authority
under 37 C.F.R. § 41.50(b ), we reject claims 13-34 and 41-56 under
pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a ne\~1 ground of rejection can be
found in MPEP § 1214.01 (9th ed., rev. 07.2015, Nov. 2015).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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