Ex Parte Shaw et al

Patent Trial and Appeal Board

Aug 30, 2018

13926944 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/926,944 06/25/2013
147148 7590 09/04/2018
Ray Quinney & Nebeker - Microsoft
36 South State Street
Suite 1400
Salt Lake City, UT 84111
FIRST NAMED INVENTOR
Timothy C. Shaw
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.
338777-US-NP 9823
EXAMINER
SAEED, AHMED M
ART UNIT PAPER NUMBER
2833
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
mspatent@rqn.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY C. SHAW, PAUL H. DIETZ,
FLA VIO PROTASIO RIBEIRO, and CHRISTIAN C. GADKE
Appeal2017-010086
Application 13/926,944
Technology Center 2800
Before RAEL YNN P. GUEST, DONNA M. PRAISS, and
LILAN REN, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
This is an Appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 5, 8, 12, and 15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 This Decision makes reference to the Specification filed June 25, 2013
("Spec."), the Final Office Action mailed September 23, 2016 ("Final Act."),
the Appeal Brief filed February 13, 2017 ("Br."), and the Examiner's
Answer mailed May 3, 2017 ("Ans.").
Appeal2017-010086
Application 13/926,944
The subject matter of this Appeal relates to pressure sensitive keys
with a single-sided direct conduction sensor for implementation in, e.g.,
mobile computing devices. Spec. ,r,r 1, 14, 1 7. Claim 1 is illustrative and
reproduced below ( with disputed element italicized):
1. A direct conduction sensor, comprising:
a contact layer;
a sensor substrate having formed thereon a first
conductor interdigitated to a second conductor;
a carbon layer disposed to substantially surround the first
conductor interdigitated to the second conductor, the carbon
layer not including a pressure sensitive material;
a conductive layer fabricated on a bottom surface of the
contact layer, the conductive layer being formed of a non-
pressure sensitive conductive material; and
a force sensing layer fabricated on the bottom surface of
the contact layer substantially surrounding the conductive layer,
the force sensing layer being formed of a pressure sensitive
conductive material;
wherein the contact layer, the conductive layer, and the
force sensing layer are configured to cooperatively flex in
response to an application of pressure to contact the first
conductor or the second conductor formed on the sensor
substrate;
wherein the force sensing layer comprises a force sensing
ink having a first conductivity under the application of pressure;
and
wherein the conductive layer comprises a second
conductivity higher than the first conductivity.
Br. 15 (Claims Appendix).
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Appeal2017-010086
Application 13/926,944
The Examiner maintains and Appellant2 appeals the rejection of
claims 1, 5, 8, 12, and 15 under 35 U.S.C. § 112, first paragraph, for failing
to comply with the written description requirement. Final Act. 2; Ans. 2; Br.
10.
ANALYSIS
After review of the arguments and evidence presented by both
Appellant and the Examiner, we affirm the written description rejection
under Section 112, first paragraph.
It is the Examiner's position that the recitation in each of the
independent claims "the carbon layer not including a pressure sensitive
material," is not supported by the disclosure in Appellant's Specification for
the reasons stated on page 2 of the Final Office Action and pages 2-3 of the
Answer.
In the Appeal Brief, Appellant contends that even though the negative
limitation is not literally disclosed in the Specification, "the [S]pecification
sufficiently discloses [the] recited device ... by the unequivocal teaching of
the absence of any pressure sensitive material added to carbon layer 716."
Br. 14 (citing In re Wright, 866 F.2d 422 (Fed. Cir. 1989)). Appellant
directs us to paragraph 66 of the Specification in which the carbon layer is
described as being "configured 'to substantially surround the first conductor
interdigitated to the second conductor' and to smooth rough edges in the
conductors 712 that may deteriorate force sensitive ink 710 to thereby
2 Appellant is the Applicant, Microsoft Corporation. The real party in
interest is identified in the Appeal Brief as Microsoft Technology Licensing
LLC. Br. 3.
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Appeal2017-010086
Application 13/926,944
improve the general life and/or performance of pressure sensitive key 700."
Id. at 13-14. According to Appellant, it would be evident to those of skill in
the art that the purpose of the carbon layer in the claimed device "has
nothing to do with having pressure sensitive characteristics," thus, "the
[S]pecification cries out for a description of pressure sensitive materials
added to carbon layer 716 if carbon layer 716 were intended to have or was
to benefit from having those characteristics." Id. at 14 ( citing Ex parte
Parks, 30 USPQ2d 1234 (BPAI 1993)).
The Examiner responds that paragraph 66 of the Specification does
not support the negative limitation prohibiting a pressure sensitive material
because it "suggests the opposite of what the negative limitation requires" in
that it discloses the carbon layer "may comprise carbon or any other material
known to a person of ordinary skill in the art applied in any manner to the
substrate 704 known to a person of ordinary skill in the art." Ans. 2 (quoting
Spec. ,r 66). In addition to the Specification's use of the word "comprise,"
which the Examiner states is synonymous with "include" and is inclusive
rather than exclusive, the Examiner also finds that carbon material can
operate as a pressure sensitive material "by mixing it with other materials
that are known to be pressure sensitive ... similar to layer 23' ofKitano."
Id. at 2-3.
We are not persuaded by Appellant that the Examiner reversibly erred
in rejecting the claims for lacking written description support for the
prohibition that the carbon layer not include a pressure sensitive material.
The purpose of the written description requirement is to convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
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Appeal2017-010086
Application 13/926,944
applicant was in possession of the invention as now claimed. Vas-Cath Inc.
v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
Paragraph 66 of Appellant's Specification supports the Examiner's
finding that the carbon layer is inclusive of carbon and any other material
rather than exclusive of any particular material, and pressure sensitive
material in particular, as Appellant contends. Spec. ,r 66. That paragraph 66
of the Specification explicitly identifies carbon as a component of the carbon
layer and not pressure sensitive characteristics of the carbon layer does not
convey with reasonable clarity to those skilled in the art that the "other
material" explicitly taught by the Specification does not include materials
having certain properties and, specifically, pressure sensitive material.
Appellant's reliance on Parks is inapposite because the Specification
in Parks included a description of the temperatures used to conduct the
claimed decomposition step generating nitric oxide, including the disclosure
of a temperature for an optimum conversion, without mention of the use of a
catalyst to achieve this optimal result. The record in Parks also included
declaration testimony from a chemistry professor that supported a finding
that an equation disclosed in the Specification indicated the reaction was
conducted without a catalyst present. In this context, the omission of a
catalyst in the disclosed process of Parks was said "to cry out for a catalyst
if one were used." Parks, 30 USPQ2d at 1236. Appellant's Specification,
on the other hand, is inclusive of "carbon" and "any other material" besides
carbon in the carbon layer. Therefore, Appellant's Specification does not
similarly cry out for the omission of a material having any specific
characteristic.
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Appeal2017-010086
Application 13/926,944
In sum, the preponderance of the evidence in this record demonstrates
that "the carbon layer not including a pressure sensitive material" recited in
independent claims 1, 8, and 15 lacks written description support in the
Specification. Accordingly, we affirm the rejection of claims 1, 8, and 15
along with dependent claims 5 and 12 under 35 U.S.C. § 112, first
paragraph.
DECISION
For the foregoing reasons, we affirm the Examiner's rejection under
35 U.S.C. § 112, first paragraph.
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)(v).
AFFIRMED
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