Ex Parte Naor

Patent Trial and Appeal Board

Jul 29, 2016

13363331 (P.T.A.B. Jul. 29, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
APPLICATION NO./
CONTROL NO.
13/363,331
22830 7590
FILING DATE
01/31/2012
0712912016
CARR&. FERRELL LLP
120 CONSTITUTION DRIVE
MENLO PARK, CA 94025
UNITED STATES DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
M:fress: COMMISSIONER FOR PAlENTS
P.O. Box 1450
FIRST NAMED INVENTOR I
PATENT IN REEXAMINATION
Isaac S. Naor
Alexardria, Virgilia 22313-1450
WWW.l.5plo.gov
ATTORNEY DOCKET NO.
PA5941US
EXAMINER
ORTIZ, RAFAEL ALFREDO
ART UNIT PAPER NUMBER
3728
[MAIL DATE DELIVERY MODE
07/29/2016 PAPER
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.
MOD PTOL-90A (Rev.06/08)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ISAAC S. NAOR
Appeal 2014-002323
Application 13/363,331
Technology Center 3700
Before JOHN C. KERINS, JAMES P. CAL VE, and LEE L. STEPINA,
Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1-13 and 23-31. 1 Claims 14-22 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant cancelled claim 12 in an Amendment After Final submitted on
April 12, 2013, and amended claim 9 to include the limitations found in
dependent claim 12. Amendment After Final, 6. The Amendment was
entered by the Examiner. Adv. Act. 1, mailed April 25, 2013.
Appeal2014-002323
Application 13/363,331
CLAIMED SUBJECT MATTER
Claims 1 and 9 are independent. Claim 1 is reproduced below.
1. A sterile cover for a touchscreen device, comprising:
a transparent, electrically conductive screen area adapted
to cover a screen of the touchscreen device, the screen area
comprising a first sterile material; and
a perimeter area surrounding the screen area and having
an opening adapted to receive the touchscreen device, the
perimeter area comprising a second sterile material, the opening
including a hook and loop fastener arranged on a flap adapted
to cover the opening.
REJECTIONS2
Claims 1, 3-5, 7, 8, 23, and 24 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Adair (US 5,812, 188, Sept. 22, 1998) and Zuleta
(US 2003/0127345 Al, pub. July 10, 2003).
Claims 2, 6, 25, and 26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Adair, Zuleta, and Hodges (US 2006/0124482 Al, pub.
June i 5, 2006).
Claims 9, 10, 11, and 13 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Adair and Chen (US 2009/0078707 Al, pub. Mar.
26, 2009).
Claims 27 and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Adair and Zuleta.
Claims 29-31 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Adair and Hodges.
2 As a result of the amendment of claim 9 to include limitations of claim 12,
which was cancelled, the Examiner did not assert the rejection of claims 9,
10, and 13 under 35 U.S.C. § 102(b) as anticipated by Adair. Final Act. 2-3;
see Ans. 2-9.
2
Appeal 2014-002323
Application 13/363,331
ANALYSIS
Claims 1, 3-5, 7, 8, 23, and 24 as unpatentable over Adair and Zuleta
The Examiner found that Adair discloses a sterile cover 12 for a
touchscreen device including electrically conductive screen 19 adapted to
cover a screen of the touchscreen device, but does not disclose a hook and
loop fastener on the flap. Final Act. 3; Ans. 2-3. The Examiner found that
Zuleta discloses a protective cover for an electronic device with an opening
that is sealed by hook and loop material 65, 71. Final Act. 3; Ans. 3. The
Examiner also found that Adair teaches that the monitor screen of the device
can be controlled by touching touch screen switches and controls 56 that are
under sealing material 59 or the window screen area 19 of the cover. Ans.
10-11. The Examiner also found that Adair's cover inherently is electrically
conductive because it allows the manipulation of touchscreen features and
touchscreen controls of a touchscreen device. Id. at 11. Alternatively, the
Examiner determined that it would have been obvious to make the screen
cover electrically conductive "to have a better interaction of the touchscreen
device with the transparent window" if Adair's polycarbonate or acrylic
window screen is not considered to be electrically conductive. Id.
We agree with Appellant that the Examiner has not established that
Adair expressly or inherently discloses a cover for a touchscreen device that
includes ••a transparent, electrically conductive screen area adapted to cover
a screen of the touchscreen device" as recited in claim 1. Appeal Br. 8-12.
The Examiner found that Adair discloses an electrically conductive screen
area 19 (Final Act. 3; Ans. 2), but the Examiner also found that Adair did
not teach this feature in claim 12 (Final Act. 7) and "is silent disclosing the
transparent area being electrically conductive" (Ans. 7). Reply Br. 2.
3
Appeal2014-002323
Application 13/363,331
The Examiner has not established that Adair expressly discloses that
either window 19 of sterile enclosure 12 or sealing material 59 is electrically
conductive. Adair's disclosure of touch screen switches 56 (Figures 3, 4)
that may be used to control an image on monitor touch screen 54 "by simply
touching the sealing material 59 covering the monitor screen 54 at the
appropriate location" does not disclose that sealing material 59 is electrically
conductive or that touch screen switches 56 are activated electrically through
an electrically conductive sealing material 59. Appeal Br. 8-9; Reply Br. 2.
Nor has the Examiner established by a preponderance of evidence that
Adair discloses this feature inherently. See Ans. 10-11; In re Robertson,
169 F.3d 743, 745 (Fed. Cir. 1999) ("Inherency ... may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient."). The Examiner has not
explained sufficiently how Adair's disclosure of window portion 19 being
made of acrylic or polycarbonate material necessarily results in window 19
being electrically conductive, as claimed. Appellant has provided evidence
that polycarbonate is used in the electrical sector because of its "outstanding
electrical insulation." Appeal Br. 10 (citing Serini, Ullmann 's Encyclopedia
of Industrial Chemistry, Polycarbonates (2012)).3 Appellant argues
persuasively that while some acrylics and polycarbonates may be electrically
conductive, these materials are not inherently electrically conductive. Id.
Adair's disclosure of touch screen switches 56 that are actuated by touch
(Adair, 6:22-26) does not necessarily mean that the switches are actuated
through an electrically conductive sealing material 19, 59as they could be
activated by pressure, temperature, or other means. See Reply Br. 2.
3 Appellant discloses a reusable sleeve made of polycarbonate. Spec. if 52.
4
Appeal2014-002323
Application 13/363,331
The Examiner's determination that it would have been obvious to
modify Adair's cover/window 19, 59 to be electrically conductive "to have a
better interaction of the touchscreen device with the transparent window" is
not supported by rational underpinning, technical reasoning, or evidence.
Ans. 3, 10. This rationale makes sense only if touch screen 32, 50 operates
by electrical conductivity, rather than pressure, temperature, or other means.
As discussed above, the Examiner has not established that Adair's touch
screen is electricaiiy conductive. Thus, the Examiner's rationale appears to
be based on impermissible hindsight and Appellant's disclosure rather than
on any evidence that Adair's touch screen is electrically conductive such that
an electrically conductive cover would facilitate operation of the electrically
conductive touch screen of the monitor. Reply Br. 3-4 (arguing that such
modification would improve interaction with the device's touchscreen only
if the touchscreen is touch based on electrical conductivity rather than by
buttons, pressure, temperature, or optical positioning); Appeal Br. 11 (same).
We do not sustain the rejection of claims 1, 3-5, 7, 8, 23, and 24.
Claims 9, 10, 11, and 13 as unpatentable over Adair and Chen
The Examiner found that Adair discloses a removable sterile cover for
encapsulating a display device, as recited in claim 9, including a transparent
area 19 for covering a display of the display device but lacks magnets for
closing the cover opening. Final Act. 7; Ans. 6-7. The Examiner found that
Chen teaches this feature. Final Act. 7-8; Ans. 7. The Examiner also found
that ".LALdair is silent [about] disclosing the transparent area being electrically
conductive." Ans. 7. The Examiner found that this feature would have been
obvious "for better interaction of the touchscreen device with the transparent
window" as the Examiner also found for claim I. Id. at 7, 10.
5
..
Appeal 2014-002323
Application 13/363,331
The Examiner has not established that Adair discloses a sterile cover
with a transparent area that is electrically conductive, as recited in claim 9.
The Examiner's findings that this feature is taught expressly or inherently by
Adair and/or rendered obvious by Adair is not supported by a preponderance
of evidence or by rational underpinnings for the reasons discussed above for
claim 1. See Reply Br. 2-4; Appeal Rr. 12-1 ~.
We do not sustain the rejection of claim 9 or claims 10, 11, and 13
that depend therefrom.
Rejections of Claims 2, 6, and 25-31
The Examiner rejected dependent claims 2, 6, and 25-31 based on
various combinations of Adair with Zuleta and/or Hodges. The Examiner
relied on Hodges or Zuleta to teach the features of these dependent claims
and not to overcome any deficiencies of Adair discussed above for claims 1
and 9. See Ans. 5-6, 8-9; Final Act. 6, 8-9. Thus, we do not sustain the
rejections of these claims.
DECISION
We REVERSE the rejections of claims 1-11, 13, and 23-31.
REVERSED
6