Ex Parte Yilmaz

Patent Trial and Appeal Board

Sep 1, 2016

12605779 (P.T.A.B. Sep. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/605,779 10/26/2009
12323 7590 09/06/2016
Baker Botts L.L.P.
2001 Ross Avenue, 6th Floor
Dallas, TX 75201
FIRST NAMED INVENTOR
Esat Yilmaz
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.
080900.0250 1498
EXAMINER
KIYABU, KARIN A
ART UNIT PAPER NUMBER
2695
NOTIFICATION DATE DELIVERY MODE
09/06/2016 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 ESAT YILMAZ
Appeal2015-001941
Application 12/605,779
Technology Center 2600
Before JOSEPH L. DIXON, LA1\1ES R. HUGHES, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-001941
Application 12/605,779
STATE~vfENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-6, 8-11, 15, 22, and 24. Claims 7, 12-14, 16-21, 23, and 25 have been
withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The claims are directed to a sense electrode design. Claims 1, 6, 15,
and 24, reproduced below, are illustrative of the claimed subject matter:
1. A touch sensitive device comprising:
a plurality of drive electrodes;
a plurality of sense electrodes arranged in a pattern to
receive charge from the drive electrodes, the pattern having
extreme portions having charge transfer times, wherein the
charge transfer times at multiple extreme portions are
substantially equal to a worst case charge transfer time.
6. A sense electrode for a touch sensitive device, the sense
electrode comprising:
a spme;
multiple width crossbars coupled to the spine, wherein the
crossbars are arranged with increasing width from a point of the
spine to couple to sense circuitry.
15. A touch sensitive device comprising:
a layer of longitudinal adjacent drive electrodes separated
from each other by a gap, the layer of longitudinal adjacent drive
electrodes to be positioned above a display;
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Application 12/605,779
a layer of sense electrodes, the sense electrodes formed in
the shape of spines running transverse to the drive electrodes and
having different width crossbars running in the same direction as
the drive electrodes such that portions of the crossbars that run in
the same direction as the drive electrode have different widths
than portions of other crossbars that run in the same direction as
the drive electrode.
24. A method comprising:
forming a layer of longitudinal adjacent drive electrodes
separated from each other by a gap, the layer of longitudinal
adjacent drive electrodes providing a shield from electric fields
from a display; and
forming a layer of sense electrodes separated from the
drive electrodes, the sense electrodes formed in the shape of
spines running transverse to the drive electrodes and having
different width crossbars running in the same direction as the
drive electrodes such that portions of the crossbars that run in the
same direction as the drive electrode have different widths than
portions of other crossbars that run in the same direction as the
drive electrode.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kent et al.
Sano et al.
Eriguchi et al.
Anno
Orsley
Badaye
Philipp et al.
US 6,297,811 Bl
US 2003/0076308 Al
US 2010/0007628 Al
US 2010/0085326 Al
US 2010/0252335 Al
US 2011/0018557 Al
US 2011/0095990 Al
3
Oct. 2, 2001
Apr. 24, 2003
Jan. 14,2010
Apr. 8, 2010
Oct. 7, 2010
Jan. 27, 2011
Apr. 28, 2011
Appeal2015-001941
Application 12/605,779
REJECTIONS
The Examiner made the following rejections:
Claims 1, 2, and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Orsley in view of Sano.
Claims 3, 4, 6, and 11 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Orsley in view of Sano, in further view of Eriguchi.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Orsley in view of Sano, in further view of Eriguchi, and in
further view of Anno.
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Orsley in view of Sano, in further view of Eriguchi, and in
further view of Kent.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Badaye in in view of Orsley, in further view of Eriguchi.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Badaye in view of Orsley, in further view ofEriguchi, and
in further view of Anno.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Badaye in view of Orsley, in further view ofEriguchi, and
in further view of Philipp.
ANALYSIS
Claims 1, 2, and 5
With respect to claims 1, 2, and 5, Appellants argue the claims
together. (App. Br. 17.) As a result, we select independent claim 1 as the
representative claim for the group and will address Appellants' arguments
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Application 12/605,779
thereto. 37 C.F.R. § 41.37(c)(iv). Appellants contend the proposed Orsley-
Sano combination fails to disclose, teach, or suggest that "charge transfer
times at multiple extreme portions are substantially equal to a worst case
charge transfer time." (App. Br. 17-20.)
As an initial matter of claim construction, we conclude a question
arises as to whether the contested functional limitations recited in the
"wherein" clause limit the scope of claim 1, because the contested functional
limitations do not further limit the structure of the apparatus of claim 1.
Regarding apparatus claims generally, our reviewing court guides the
patentability of an apparatus claim "depends on the claimed structure, not on
the use or purpose of that structure." Catalina Marketing Int 'l., Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). "It is well
settled that the recitation of a new intended use for an old product does not
make a claim to that old product patentable." In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997) (citations omitted). As addressed by the court
in Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1090 (2009),
The problem with construing "displaying real-time data" as used
in the claims of the '759 patent to preclude "contextually
meaningful delay" is that such a construction injects a use
limitation into a claim written in structural terms. "[A ]pparatus
claims cover what a device is, not what a device does." Hewlett-
Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468
(Fed.Cir.1990).
Absent an express limitation to the contrary, any use of a device
that meets all of the limitations of an apparatus claim written in
structural terms infringes that apparatus claim . . . see also
Roberts v. Ryer, 91 U.S. 150, 157, 23 L.Ed. 267 (1875) ("The
inventor of a machine is entitled to the benefit of all the uses to
which it can be put, no matter whether he had conceived the idea
of the use or not."). Construing a non-functional term in an
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Application 12/605,779
apparatus claim in a way that makes direct infringement turn on
the use to which an accused apparatus is later put confuses rather
than clarifies, frustrates the ability of both the patentee and
potential infringers to ascertain the propriety of particular
activities, and is inconsistent with the notice function central to
the patent system.
Id. at 1091.
I\!1PEP § 2111.04 provides further guidance regarding the patentabfo
weight to be given to "'vvherein" clauses: <:> •
Claim scope is not limited by claim language that suggests or
makes optiorwJ but does not require steps to be performed, or l~r
clairn language that does not limit a clairn to a particular
structure, HovveveL examples of claim language, although not
exhaustive, that may raise a question as to the limiting effect of
the 1anguage ir1 a claim are:
(A) "'adapted to" or '"adapted fi1r" clauses:
(B) "wherein" clauses; and
(C) "\vhereby" clauses,
(IvfPEP §211L04 Ninth Edition, Rev, 7, Nov. 2015, emphasis added.)
Appellants contend:
the mere disclosure of "adjusting the widths of electrodes of a
touch panel device to achieve uniform electrical properties" in
some general sense does not actually disclose that "the charge
transfer times at multiple extreme portions [of a pattern in which
sense electrodes are arranged] are substantially equal to a worst
case charge transfer time," as specifically recited in Claim 1.
(App. Br. 18, emphasis omitted.) We note that Appellants' argument does
not identify any structural limitation to differentiate the touch sensitive
device from the prior art. Appellants further argue:
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The cited portion [of Sano J appears merely to disclose that
electrostatic capacity, which purportedly is determined by the
pitch and length (cross width) of drawing electrode 5 in each
segmented region, is made nearly constant, and that the width
and length of each drawing electrode 5 are adjusted so that its
resistance becomes nearly equal. Not only does this disclosure
of Sano fail to disclose, teach, or suggest the general concept of
"adjusting the widths of electrodes of a touch panel device to
achieve uniform electrical properties," but it also does not
disclose, teach, or suggest that "the charge transfer times at
multiple extreme portions [of a pattern in which sense electrodes
are arranged] are substantially equal to a worst case charge
transfer time," as specifically recited in Claim 1.
(App. Br. 18, emphasis omitted.) Again, we note that Appellants' argument
does not identify any structural limitation to differentiate the touch sensitive
device from the prior art. Therefore, Appellants' argument does not show
error in the Examiner's conclusion of obviousness of representative
independent claim 1.
Appellants contend the:
proposed Orsley-Sano combination is improper at least because
the Office Action does not provide an adequate explanation,
based either on the cited references or knowledge generally
available to one of ordinary skill in the art at the time of
Appellant's invention, to combine or modify Orsley with Sano in
the proposed manner.
(App. Br. 20.) Appellants further contend:
While Orsley and Sano may both purport to be directed to a touch
sensitive device, Orsley appears to be directed to "an electronic
device having a mutual capacitance touchscreen or touchpad,"
and Sano is directed to a "touch panel device for detecting a
position touched by an object by sensing an attenuation or break
of surface acoustic waves." See Orsley at Abstract; Sano at
Abstract. Thus, Orsley and Sano appear to rely on different
principles of operation, and the Office Action has not provided
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an adequate explanation for combining Sano 's disclosure relating
to surface acoustic wave technology with Orsley's disclosure
relating to mutual capacitance. For at least these additional
reasons, Appellant respectfully submits that the Office Action
does not adequately explain why it would have been obvious to
combine or modify Orsley with Sano in the proposed manner.
(App. Br. 20-21.) We disagree with Appellants' argument and find
Appellants' argument does not show error in the Examiner's stated line of
reasoning for the motivation. Appellants' argument appears to be based
upon a difference in the sensing of the touch, but the claims are broadly
directed to driving and sensing electrodes in an arranged pattern. Moreover,
the Orsley reference discloses that there are many different electrode
interleaving and electrode array configurations other than those shown in the
Orsley reference. (Orsley ,-i 39). The Examiner further maintains:
examiner respectfully disagrees and submits that the
combination of Orsley and Sano is proper because the
modification is based on the use of known techniques to improve
similar devices, i.e., touch sensitive devices, in the same way.
One of ordinary skill in the art at the time of the invention would
have been motivated to modify the touch sensitive device
disclosed by Orsley to include adjusting the widths of electrodes
of a touch panel device to achieve uniform electrical properties
as disclosed by Sano since touch sensitive device charge transfer
times can differ depending on a distance of sense electrode
portions to connection lines.
(Ans. 21 ). Consequently, we agree with the Examiner that Appellants are
arguing the references individually and the mere fact that the references are
not directed to the same sensing methodology does not make them
uncombinable. (App. Br. 20). As a result, Appellants' argument does not
show error in the Examiner's proffered combination.
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Application 12/605,779
Regarding Appellants' genus/species argument, Appellants do not
identify how the difference in terminology for "achieving uniform electrical
properties" of the Sano reference and "charge transfer time" as recited in the
claim identifies a difference in the structure of the claimed touch sensitive
device from the prior art combination. (App. Br. 21 ). Appellants
additionally argue:
the cited portions of Sano do not actually disclose any general
concept of "adjusting the widths of electrodes of a touch panel
device to achieve uniform electrical properties." [Appellants
further contend that] Sano fail to disclose, teach, or suggest the
general concept of "adjusting the widths of electrodes of a touch
panel device to achieve uniform electrical properties," but it also
does not disclose, teach, or suggest "the charge transfer times at
multiple extreme portions are substantially equal to a worst case
charge transfer time," as specifically recited in Claim 1.
(App. Br. 21.)
The Examiner further explains that it would have been obvious to one
of ordinary skill in the art at the time of the invention to include "wherein
the charge transfer times at multiple extreme portions are substantially equal
to a worst case charge transfer time" because charge transfer times at
multiple extreme portions farthest away from connection lines are inherently
substantially equal to a worst case charge transfer time due to increased
resistance of sense electrode portions farthest away from connection lines.
(Ans. 20.) We agree with the Examiner's line of reasoning. The Examiner
additionally maintains:
Appellant's argument is not commensurate with the
rejection. As discussed above and in the rejections, the
combination of Orsley and Sano discloses "wherein the charge
transfer times at multiple extreme portions are substantially
equal to a worst case charge transfer time". Sano teaches that the
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widths of the touch panel electrodes are adjusted to achieve
uniform electrical properties, and this, in combination with the
transfer times and extreme portions disclosed by Orsley,
discloses the claimed feature. Moreover, the reason for the
combination of the Orsley and Sano is as stated in the rejections
above, namely, the use of known techniques to improve similar
devices in the same way.
(Ans. 22-23.) We agree with the Examiner's line of reasoning. Therefore,
Appellants' argument does not show error in the Examiner's conclusion of
obviousness of representative independent claim 1, and we sustain the
obviousness rejection of representative claim 1.
Claims 3, 4, 6, and 11
With respect to claims 3, 4, 6, and 11, Appellants argue the claims
together. As a result, we select independent claim 6 as the representative
claim for the group and will address Appellants' arguments thereto. See
37 C.F.R. § 41.37(c)(iv).
With respect to claims 3 and 4, Appellants rely upon the arguments
set forth with respect to independent claim 1. (App. Br. 22). The Examiner
merely identifies that there is no error in the rejection of independent claim 1
and consequently claims 3 and 4 are not allowable. (Ans. 23-24). We agree
with the Examiner.
Additionally, we find the Eriguchi reference to be more relevant to the
charge transfer time of independent claim 1, but neither the Examiner nor
Appellants have specifically addressed the prior art rejection as applied by
the Examiner with respect to the underlying limitations of representative
independent claim 1. 1
1 See para. 49 of the Eriguchi reference.
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Because Appellants do not set forth separate arguments for
patentability, Appellants' argument does not show error in the Examiner's
rejection of the touch sensitive device recited in claims 3 and 4, and we
sustain the rejection of claims 3 and 4.
With respect independent claim 6, Appellants contend:
At a minimum, the cited portions of the proposed Orsley-
Sano-Eriguchi combination do not disclose, teach, or suggest a
sense electrode comprising "multiple width crossbars coupled to
the spine, wherein the crossbars are arranged with increasing
width from a point of the spine to couple to sense circuitry," as
recited in independent Claim 6. The Office Action alleges that
Eriguchi discloses that "bars are arranged with increasing width
from a point of the part of the spine.
(App. Br. 23, emphasis omitted.) Appellants further contend "Referring to
Figure 3A of Eriguchi, reproduced below, the cited portions disclose that 'a
branching part of the Y-coordinate electrode derives from the Y-coordinate
electrode (for example, Y 1) extends in an x direction.' Eriguchi at ,-i 004 7."
(App. Br. 23.) Appellants argue:
According to Eriguchi, a "coordinate auxiliary electrode YS 1
(310), a coordinate auxiliary electrode YS2 (311 ), a coordinate
auxiliary electrode YS3 (312), and a coordinate auxiliary
electrode YS4 (313) extend from the branching part of the X-
coordinate electrode and in parallel to the Y-coordinate
electrode." Id. Eriguchi discloses that "the coordinate auxiliary
electrodes for the Y -coordinate electrode (hereinafter referred to
as 'Y -coordinate auxiliary electrode') have the same length and
different line widths from each other in a relationship of YS 1
(310)