Ex Parte Sung et alDownload PDFPatent Trial and Appeal BoardDec 30, 201612641169 (P.T.A.B. Dec. 30, 2016) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/641,169 12/17/2009 Kuo-Hua Sung 106842034400 (P8485US1) 1091 69753 7590 01/04/2017 APPLE c/o MORRISON & FOERSTER LLP LA 707 Wilshire Boulevard Los Angeles, CA 90017 EXAMINER MERKOULOVA, OLGA VLADIMIROVNA ART UNIT PAPER NUMBER 2692 NOTIFICATION DATE DELIVERY MODE 01/04/2017 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): EOfficeL A @ mofo. com PatentDocket @ mofo. com pair_mofo @ firsttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KUO-HUA SUNG and SHIN JOHN CHOI1 Appeal 2015-007122 Application 12/641,169 Technology Center 2600 Before JASON V. MORGAN, JOSEPH P. LENTIVECH, and DAVID J. CUTITTAII, Administrative Patent Judges. MORGAN, Administrative Patent Judge. DECISION ON APPEAL Introduction This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s non- final rejection of claims 19—21. Claims 1—18 and 22—25 are withdrawn or cancelled. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Invention Appellants disclose the use of injection molding to encapsulate a touch sensor at a substantially uniform distance from a touch surface of a molded material. Abstract. 1 Appellants identify Apple Inc. as the real party in interest. Br. 2. Appeal 2015-007122 Application 12/641,169 Exemplary Claim Claim 19, reproduced below with key limitations emphasized, is representative: 19. An electronic mouse comprising: a curved touch surface; a sensor configured to detect a touch on a curved touch surface of the device, the sensor comprising a curved surface having substantially a same curvature as the curved touch surface; and an injection molded body encapsulating the sensor to form the curved touch surface and configured to provide a substantially uniform capacitive dielectric between an object touching the curved touch surface and the sensor; wherein the injection molded body is formed with a uniform thickness above the sensor to maintain the curved touch surface at a substantially uniform distance from the sensor. Rejections The Examiner rejects claims 19-21 under 35U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. Non-Final Act. 3. The Examiner rejects claims 19-21 under 35 U.S.C. § 103(a) as being unpatentable over Rosenfeld (US 2010/0245246 Al; Sept. 30, 2010) and Weber (US 2009/0073130 Al; Mar. 19, 2009). Non-Final Act. 4-6. ANALYSIS We agree with and adopt as our own the Examiner’s findings of facts and conclusions as set forth in the Answer and in the Action from which this appeal was taken. We have considered Appellants’ arguments, but do not 2 Appeal 2015-007122 Application 12/641,169 find them persuasive of error. We provide the following explanation for emphasis. 35 U.S.C. § 112, second paragraph The Examiner rejects claims 19-21 under 35 U.S.C. § 112, second paragraph, because the recitation of “the device” in independent claim 19 lacks an antecedent basis (the Examiner treats this recitation as referring to the preamble recitation of an electronic mouse for purposes of examination). Non-Final Act. 3. Appellants do not raise any issues with respect to this rejection, which we summarily affirm. 35 U.S.C. § 103(a) Issue'. Did the Examiner err in finding the combination of Rosenfeld and Weber teaches or suggests “wherein the injection molded body is formed with a uniform thickness above the sensor to maintain the curved touch surface at a substantially uniform distance from the sensor,” as recited in claim 19? The Examiner finds that Rosenfeld’s disclosure of a protective layer, such as a dielectric paint, for sensors on a curved mouse teaches or suggests a body formed with a uniform thickness above the sensor to maintain the curved touch surface at a substantially uniform distance from the sensor. Non-Final Act. 4—5 (citing, e.g., Rosenfeld || 37, 62, 64, 74, Figs. 1, 2, and 5); Ans. 4 (citing, e.g., Rosenfeld || 71, 73). The Examiner relies on Weber’s formation of cover 110 using shot injection molding to teach or suggest the body being an injection molded body. Non-Final Act. 5 (citing Weber || 31, 41, and Fig. 6B); Ans. 4. Appellants contend the Examiner erred because “neither reference discloses a curved injection molded body with uniform thickness between 3 Appeal 2015-007122 Application 12/641,169 the touch surface and the sensor.” Br. 4. In particular, Appellants argue “Rosenfeld at most discloses bending the sensor over the surface of the mouse to form a touch-sensitive computer mouse .... [and] at most mentions the thickness of the substrate of the sensor element.” Br. 5. Appellants further argue that in Weber “both the cover and the sensor are shown to be flat. As such, Weber also does not disclose a curved injection molded body having a uniform thickness between a touch surface and a sensor.” Id. Appellants’ arguments unpersuasively attack Rosenfeld and Weber individually without addressing the Examiner’s use of their combined teachings and suggestions. In particular, Appellants’ arguments with respect to Rosenfeld’s substrate teachings do not address the Examiner’s findings as they pertain to Rosenfeld’s protective layer (i.e., a layer that is applied over the sensors). See Ans. 4 (citing, e.g., Rosenfeld 173). Appellants’ arguments regarding Weber’s cover and sensors being flat also fail to show error in the Examiner’s finding that the use of Weber’s injection molding would have been a known method for producing the curved protective layer of Rosenfeld. See Ans. 4. Therefore, we agree with the Examiner that the combination of Rosenfeld and Weber teaches or suggests, “wherein the injection molded body is formed with a uniform thickness above the sensor to maintain the curved touch surface at a substantially uniform distance from the sensor,” as recited in claim 19. Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claim 19, and claims 20 and 21, which Appellants do not argue separately. 4 Appeal 2015-007122 Application 12/641,169 DECISION We affirm the Examiner’s decision rejecting claims 19—21. 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(f). 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