Ex Parte Sleeman et al

Patent Trial and Appeal Board

Jun 13, 2016

12421705 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/421,705 04/10/2009
12323 7590 06/15/2016
Baker Botts L.L.P.
2001 Ross Avenue, 6th Floor
Dallas, TX 75201
FIRST NAMED INVENTOR
Peter Sleeman
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.
080900.0203 5005
EXAMINER
STEPP JONES, SHAWNA T
ART UNIT PAPER NUMBER
2623
NOTIFICATION DATE DELIVERY MODE
06/15/2016 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER SLEEMAN, SAMUEL BRUNET,
MATTHEW TREND, and HARALD PHILIPP
Appeal2014-009601
Application 12/421,705
Technology Center 2600
Before JEFFREYS. SivIITH, DANIEL N. FISHivIAN, and
JOHN F. HORVATH, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-009601
Application 12/421,705
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1--4, 9, 13, 16-24, 26-33, 35, 36, and 38--42, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
Representative Claim
1. A sensor comprising:
a substrate; and
a sensing region configured to sense a position of an
object within the sensing region, the sensing region comprising:
a plurality of drive electrodes disposed on a first
side of the substrate in a first layer; and
a plurality of sense electrodes disposed on a
second side of the substrate in a second layer so that the
sense electrodes intersect the drive electrodes at a
plurality of intersections offset by a thickness of the
substrate, wherein the plurality of drive electrodes are
substantially area filling within the sensing region
relative to the plurality of sense electrodes;
wherein a gap between adjacent sense electrodes
has a width that is at least three-fifths of the pitch of the
sense electrodes.
Examiner's Rejections
Claims 1, 9, 13, 16, 17, 20, 23, 24, 26-29, 31-33, 35, 36, and 38--42
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hotelling '139
(US 2008/0062139 Al, published Mar. 13, 2008) and Hotelling '702 (US
7 ,511, 702 B2, Mar. 31, 2009).
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Appeal2014-009601
Application 12/421,705
Claims 2--4, 18, 19, 21-23, 27, and 30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hotelling' 139, Hotelling '702, and Philipp
(US 2007/0257894 Al, Nov 8, 2007).
ANALYSIS
Section 103 rejection of claims 1, 13, 16, 17, 20, 23, 26, 27, 29, 31-
33, 35, 36, 38, and 40--42
Claim 1 recites "a gap between adjacent sense electrodes has a width
that is at least three-fifths of the pitch of the sense electrodes." Paragraph
187 of Hotelling '139 teaches the sense lines can have a 5 mm pitch with a
10 to 30 micron gap. The Examiner finds that varying the gap between the
sense electrodes to be at least three-fifths of the pitch would have been a
design choice within the level of ordinary skill in the art. Ans. 2.
Appellants contend the Examiner relies on impermissible hindsight. App.
Br. 9; Reply Br. 2-3.
Appellants have not provided persuasive evidence or argument to
show the ratio of the gap to the pitch is anything more than arbitrary and,
therefore, obvious. We agree with the Examiner that such limitation cannot
be a basis for patentability, because where patentability is based upon
particular chosen dimensions or upon another variable recited in a claim, the
applicant must show that the chosen dimensions are critical. See In re
Woodruff, 919 F.2d 1575, 1578 (Fed.Cir.1990). Here, Appellants have not
done so.
We sustain the rejection of claim 1 under 35 U.S.C. § 103. Appellants
do not present arguments for separate patentability of claims 13, 16, 17, 20,
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Appeal2014-009601
Application 12/421,705
23, 26, 27, 29, 31-33, 35, 36, 38, and 40-42, which fall with claim 1. App.
Br. 10.
Section 103 rejection of claims 9, 24, and 28
Claim 9 recites "the sensing region further comprises a plurality of
isolated conductive elements disposed on the second side of the substrate
between the sense electrodes." The Examiner cites the conductive dots
taught in paragraph 190 of Hotelling' 139 to teach the isolated conductive
elements between sense electrodes. Non-Final Act. 5; Ans. 3. Appellants
contend the cited paragraph teaches placing conductive dots on the ends of
drive segments, not between sense lines or drive lines. Reply Br. 4--5.
We agree with Appellants. The Examiner has not persuasively
explained how the prior art teaches placing conductive dots between sense
electrodes as required by each of claims 9, 24, and 28.
We do not sustain the rejection of claims 9, 24, and 28 under 35
U.S.C. § 103.
Section 103 rejection of claim 39
Claim 39 recites "an outermost drive electrode has a width that is
approximately half of a width of an adjacent drive electrode, the outermost
drive electrode being adjacent to only one drive electrode." Appellants
contend the Examiner has not identified any teaching in the cited references
that any two drive traces may have differing widths. App. Br. 11; Reply Br.
6. Appellants' contention is inconsistent with paragraphs 352 and 353 of
Hotelling' 139, which teach varying the widths of different drive electrodes
based on factors such as desired resistance and length. Nor have Appellants
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Appeal2014-009601
Application 12/421,705
provided persuasive evidence showing the claimed dimensions of the widths
are critical.
We sustain the rejection of claim 39 under 35 U.S.C. § 103.
Section 103 rejection of claims 2--4, 18, 19, 21-23, 27, and 30
Appellants do not present arguments for separate patentability of
claims 2--4, 18, 19, 21-23, 27, and 30. We, therefore, sustain the rejection
of claims 2--4, 18, 19, 21-23, 27, and 30 under 35 U.S.C. § 103.
DECISION
The rejections of claims 1--4, 13, 16-23, 26, 27, 29-33, 35, 36, and
3 8--4 2 are affirmed.
The rejection of claims 9, 24, and 28 is reversed.
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.
§ 41.50(±).
AFFIRMED-IN-PART
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