Ex Parte Prest et al

Patent Trial and Appeal Board

May 27, 2016

13544527 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/544,527 07/09/2012 Christopher D. Prest
67673 7590 06/01/2016
APPLE c/o MORRISON & FOERSTER LLP NOV A
1650 TYSONS BLVD.
SUITE 300
MCLEAN, VA 22102
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.
106842004210
(P4775USD1)
2381
EXAMINER
LAM, VINH TANG
ART UNIT PAPER NUMBER
2628
NOTIFICATION DATE DELIVERY MODE
06/01/2016 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER D. PREST, FLETCHER ROTHKOPH,
and RICHARD H. DINH
Appeal2014-009300
Application 13/544,527
Technology Center 2600
Before ALLEN R. MacDONALD, JON M. JURGOV AN, and
AMBER L. HAGY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-009300
Application 13/544,527
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 10-14 and 23. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary independent claim 10 under appeal reads as follows
(emphasis added):
1. A device comprising:
a frame,
a moveable platform configured to move relative to the frame,
the moveable platform comprising a touch sensitive surface, and
a switch comprising two domes configured to push the
moveable platform into engagement with the frame.
Rejections on Appeal
The Examiner rejected claims 10, 11, 13, and 14 under 35 U.S.C.
§ 102(e) as being anticipated by Zadesky et al. (US 2007 /0273671 Al; Nov.
29, 2007). 1
The Examiner rejected claims 12 and 23 under 35 U.S.C. § 103(a) as
being unpatentable over Zadesky. 2
1 Separate patentability is not argued for claims 11, 13, and 14. Except for
our ultimate decision, these claims are not discussed further herein.
2 Separate patentability is not argued for claims 12 and 23. The rejection of
these claims turns on our decision as to the underlying § 102 rejection.
Except for our ultimate decision, these claims are not discussed further
herein.
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Application 13/544,527
Appellants' Contention
1. Appellants contend that the Examiner erred in rejecting claim 10
because:
Zadesky ... teaches a device having multiple switches 78, and
Zadesky teaches that each one of these switches 78 may be a
dome switch. However, there is no express disclosure or
suggestion in Zadesky that any of the switches 78 may
comprise two domes, as required by claims 10 - 14 and 23 and
as illustrated, for example, in Figures 6A-6C of the present
application. Nor is there any explicit teaching or suggestion in
Zadesky to replace any of the single dome switches 78 with a
two dome switch, as defined by the pending claims. A switch
having two domes, like the switches shown in Figures 6A-6C of
the present application, is not expressly taught or suggested by
Zadesky.
App. Br. 5---6.
The rejected claims define a combination that includes a
switch comprising two domes. The prior art Zadesky reference,
in contrast, teaches a device having multiple switches, each one
of which may comprise one dome. In short; the claimed
combination requires a two dome switch.
The Zadesky reference fails to disclose or suggest a two
dome switch. The differences between the claims and the
Zadesky reference are apparent even in the comparative
examples illustrated on page 3 of the Examiner's Answer. On
the right side of page 3, Figure 6B of the present application
shows an example of the claimed combination including a
switch comprising two domes 622 and 626. On the left side of
page 3, Zadesky's Figures 6-7 show multiple switches 78, each
one of which may comprise one dome.
Reply Br. 2.
2. Appellants further contend that the Examiner erred in rejecting
claim 10 because:
Although not identified as such by Zadesky, it appears to be the
Examiner's position that Zadesky's electrode layer 86, disposed
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Appeal2014-009300
Application 13/544,527
on top of Zadesky' s platform 80, is itself a kind of "switch" and
that Zadesky' s switches 78 are also all part of this electrode
layer switch 86. The Examiner therefore asserts, erroneously,
that Zadesky discloses a switch (electrode layer 86 on platform
80) comprising two domes (since any one of the switches 78
could, optionally, be a dome switch).
App. Br. 6.
Issue on Appeal
Did the Examiner err in rejecting claims 10 because Zadesky fails to
teach the argued limitations?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner has erred.
As to Appellants' above contention 1, we disagree. Appellants'
figures SA-SC illustrate an example of a side view, in cross section, of an
input device according to a first embodiment of the present invention. The
first embodiment includes "a single flexible member 608" (emphasis added)
which may be "for example the dome on a SMT dome switch." Spec.
iii! [55]-[56]. "The flexible member 608 can be formed in a bubble shape
that provides the spring force to push the gimbal plate into mating
engagement with the top wall of frame 602 and away from supportive
surface 608." Spec. if [57], emphasis added.
Appellants' figures 6A-6C illustrate an example of a side view, in
cross section, of an input device according to a second embodiment of the
present invention. Spec. iii! [ 19]-[20]. The second embodiment "uses two
dome switches. One dome switch 622 is activated by a user pressing
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Application 13/544,527
anywhere around the click wheel 624, and the second dome switch 626 is
activated by depressing the center button 628." Spec. i-f [65].
Positioned beneath the center button 628 are two dome
switches 622 and 626. The two dome switches provide the
mechanical spring action for center button 628 and click wheel
624. A rigid plate 648 is positioned between the two dome
switches. The rigid plate 648 extends through holes in legs 647
and under click wheel 624. In this manner, the rigid plate
transmits the spring force of dome switches 622 and 626 to the
click wheel 624 and the rigid plate transmits any force supplied
by a user to click wheel 624 to dome switch 622.
Spec. i-f [69], emphasis added.
Appellants' claim 10 as originally filed recited "a single switch
configured to push the platform into engagement with the frame" (emphasis
added). We read this originally filed claim as covering the first embodiment
(single flexible member 608 provides the spring force), but not the second
embodiment (two dome switches provide the mechanical spring action).
During prosecution, Appellants amended claim l 0 to recite "a switch
comprising two domes configured to push the moveable platform into
engagement with the frame" (emphasis added). We read this amended claim
as covering the second embodiment, but not the first embodiment.
We find no recitation in Appellants' detailed description of the term
"a switch" to describe the second embodiment. At best Appellants'
amendment adding this term to claim the second embodiment must be based
on an artisan recognizing that the two domed switches form a single
complex switch mechanism (i.e., "a switch"). If not read in this manner, we
would otherwise reject Appellants' amended claim 10 as not being
supported by the disclosure as originally filed. Having concluded that
Appellants are permitted to describe their two domed switches mechanism
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as "a switch," we must similarly conclude that an artisan would recognize
that the four "spring biased" domed switches (78A-78D) of Zadesky (i-f [65],
Figs. 7 A-7d) equally form a single complex switch mechanism (i.e., "a
switch").
As to the claim limitation "a switch comprising two domes," we
conclude that Zadesky teaches this claim limitation for the above discussed
reasons. Appellants do not dispute that the four switches of Zadesky are
configured to push the moveable platform into engagement with the frame.
The Examiner has correctly shown that Zadesky teaches all of the limitations
of amended claim 10 on appeal.
As to Appellants' above contention 2, we do not reach this argument.
Having concluded that Zadesky teaches all of the limitations of amended
claim 10 on appeal, it is of no moment whether (or not) an artisan would
include in "a switch" various other additional disclosed components of
Zadesky. A resolution of this argument would not change the result of our
conclusion as to above contention 1.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 10, 11, 13, and 14
as being anticipated under 35 U.S.C. § 102(e).
(2) The Examiner has not erred in rejecting claims 12 and 23 as being
unpatentable under 35 U.S.C. § 103(a).
(3) Claims 10-14 and 23 are not patentable.
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DECISION
The Examiner's rejections of claims 10-14 and 23 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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