Ex Parte Serban

Board of Patent Appeals and Interferences

Feb 13, 2012

10553657 (B.P.A.I. Feb. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BOGDAN SERBAN

Appeal 2010-0079851
Application 10/553,657
Technology Center 2600
____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
ANDREW J. DILLON, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is IEE International Electronics & Engineering
S.A. (App. Br. 2.) An oral hearing was held in this appeal on February 09,
2012.
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Application 10/553,657

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 9-24. Claims 1-8 have been canceled. (App. Br. 1.) We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellant’s Invention
Appellant invented a position detection device (8) for determining
where on the device a force acts, as well as the intensity of the force. (Spec.
1, ll. 4-5.) In particular, the position detection device (8) includes a substrate
upon which a plurality of electrical conductors (22) and conducting elements
(24) are alternately arranged in parallel such that the first and second ends of
each conducting element are respectively connected to a third and fourth
terminals (26, 30) of the position detection device. (Fig. 1, Spec. 8, ll. 15-
27.)
Illustrative Claim
Independent claim 9 further illustrates the invention. It reads as
follows:
Claim 9: A position detection device, comprising:

a first substrate;

a first ohmic resistor applied to said first substrate and
extending along an active surface of said position detector, said
first ohmic resistor connected between first and second
terminals of said position detection device;

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Application 10/553,657

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a plurality of electrical conductors connected to the first
ohmic resistor at discrete points thereon and said electrical
conductors extending from the first ohmic resistor within the
active surface; and

a plurality of conducting elements arranged, within said
active surface, so as to alternate between said electrical
conductors, a first end of said conducting elements being
connected to a third terminal of said position detection device;

wherein said conducting elements are configured as an
ohmic resistor extending over the active surface of the device
and a second end of said conducting elements is connected to a
fourth terminal of said position detection device.

Prior Art Relied Upon
Eckert US 3,806,912 Apr. 23, 1974
Kakuhashi US 4,517,546 May 14, 1985
Asher US 5,159,159 Oct. 27, 1992
Buchana US 5,543,589 Aug. 6, 1996

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 9, 11, 12, 16, 17, 19, 20, and 24 stand rejected under 35
U.S.C. § 103 (a) as being unpatentable over the combination of Asher and
Eckert.
2. Claims 10 and 18 stand rejected under 35 U.S.C. § 103 (a) as
being unpatentable over the combination of Asher, Eckert, and Buchana.
3. Claims 13-15 and 21-23 stand rejected under 35 U.S.C. § 103
(a) as being unpatentable over the combination of Asher, Eckert, and
Kakuhashi.
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Application 10/553,657

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Appellant’s Contentions
Appellant argues that the combination of Asher and Eckert does not
teach or suggest that a first and second ends of each of a plurality of
conducting elements are respectively connected to a third and a fourth
terminals of the position detection device, as recited in independent claim 9.
According to Appellant, Asher discloses that only one end of each
conductive trace is connected to a terminal of the touch sensor and that the
other end of the conductive trace is free and not connected to a terminal.
(App. Br. 9-13, Reply Br. 2-3.)
Examiner’s Findings and Conclusions
In response, the Examiner finds that, because one end of each of the
conductive traces disclosed in Asher is connected to two terminals of the
touch sensor, Asher’s disclosure teaches or at least suggests that each
conductive element as a whole, including the two ends thereof, is connected
to the terminals. Therefore, the Examiner finds that Asher’s disclosure
teaches or suggests the disputed limitations as broadly claimed. (Ans. 13-
17.)
Therefore, the pivotal issue before us is as follows:
II. ISSUE
Has Appellant shown that the Examiner erred in concluding that the
combination of Asher and Eckert teaches or suggests a first and second ends
of each of a plurality of conducting elements that are respectively connected
to a third and a fourth terminals of the position detection device, as recited in
independent claim 9?
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III. ANALYSIS
We find error in the Examiner’s rejection of independent claim 9,
which recites, inter alia, a first and second ends of each of a plurality of
conducting elements that are respectively connected to a third and a fourth
terminals of the position detection device.
We note at the outset that there are no material disputes as to the
pertinent facts in this appeal. In particular, both the Examiner and Appellant
agree that Asher discloses that one end of each of a plurality of conductive
traces is connected to two terminals of the touch sensor. (Ans. 13, App. Br.
6.) The Examiner and Appellant do not agree, however, that the cited
disclosure teaches the disputed limitations. We agree with Appellant. We
find that Asher, at best, teaches that each conductive trace is connected to
two terminals. Nonetheless, such a connection only occurs at a single end of
the conductive trace and therefore falls short of suggesting that each end of
the conductive trace is connected to a terminal.
We note that the Examiner relies upon circular reasoning to somehow
find that a connection of the terminals with one end of a conductive trace is a
connection with the conductive trace as a whole (including its two ends) and
is therefore a connection of the terminals with the two ends of the trace. In
following this line of reasoning, the Examiner lost sight of the fact that the
connection disclosed in Asher is at one end of the trace, and not both. We
therefore agree with Appellant that the proffered interpretation of Asher’s
disclosure is unreasonable and does not teach the disputed imitations.
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Because Appellant has shown at least one error in the Examiner’s
rejection of claim 9 and Eckert does not cure the noted deficiencies, we need
not address Appellant’s other arguments. It follows that Appellant has
shown the Examiner erred in concluding that the combination of Asher and
Eckert renders independent claim 9 unpatentable.
Since claims 10-24 also recite the disputed limitations of claim 9 and
the additional references do not cure the noted deficiencies, we find that
Appellant has also shown error in the Examiner’s rejection of those claims.
IV. DECISION
We reverse the Examiner’s prior art rejections of claims 9-24 as set
forth above.
REVERSED

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