HP PRINTING KOREA CO., LTD.

Patent Trials and Appeals Board

Mar 4, 2021

2019003936 (P.T.A.B. Mar. 4, 2021)

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.
14/935,919 11/09/2015 Hwi-kyeong AN 84740514 2476
22879 7590 03/04/2021
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
DULANEY, BENJAMIN O
ART UNIT PAPER NUMBER
2672
NOTIFICATION DATE DELIVERY MODE
03/04/2021 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):
ipa.mail@hp.com
jessica.pazdan@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HWI-KYEONG AN and SUNG-WEON SONG

Appeal 2019-003936
Application 14/935,919
Technology Center 2600

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 6–11, 13–15 and 17–20.2 Claims
3–5 are withdrawn from consideration. Appeal Br. 1. Claims 12 and 16 are
cancelled. Appeal Appendix. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“HP PRINTING KOREA CO., LTD.” Appeal Br. 3.
2 The Examiner finds that “[c]laims 21 and 22 are objected to as being
dependent upon a rejected base claim, but would be allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims.” Final Act. 9.
Appeal 2019-003936
Application 14/935,919

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STATEMENT OF THE CASE
Appellant’s Invention
According to Appellant, the invention “relates to . . . a display having
a haptic function that generates vibrations in response to a user’s touch.”
Spec. ¶ 2. Claim 1, reproduced below, illustrates disputed subject matter.
1. An electronic apparatus comprising:
a main body; and
a user interface including:
a display including: a touch screen to receive a touch
input on a front side of the touch screen, and a frame
fixed to a rear side of the touch screen;
a base, connectable to the main body of the electronic
apparatus, having an edge portion that surrounds a side
portion of the display and which is spaced apart from the
side portion of the display in a direction perpendicular to
a front-to-rear direction of the display;
a buffering member, disposed on an inner side surface of
the edge portion between the edge portion of the base and
the side portion of the display and spaced apart from the
side portion of the display in the direction perpendicular
to the front-to-rear direction of the display, to prevent the
side portion of the display from contacting the edge
portion of the base when the display moves in the
direction perpendicular to the front-to-rear direction of
the display;
a vibrator provided on the display and to induce
vibrations on the display based on the received touch
input; and
a support connecting the base to the display so that the
display is structurally isolated from the base except for
being connected by the support, to thereby reduce a
transfer of the vibrations on the display to the base.
Appeal Br., Claims Appendix.
Appeal 2019-003936
Application 14/935,919

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Rejections
Claims 1, 2, 6, 7, 9–11, 13, 14, and 17–20 stand rejected under
35 U.S.C. § 103 as being unpatentable over Miles (US 2012/0092272 A1;
April 19, 2012) and Abe (US 2013/0201127 A1; Aug. 8, 2013).
Final Act. 2–7.
Claims 8 and 15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Miles, Abe, and Kono (US 2014/0176318 A1;
June 26, 2014). Final Act. 7–9.
OPINION
“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage . . . ,
taking into account whatever enlightenment . . . may be afforded by . . . the
applicant’s specification.” In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). As Appellant contends (see infra), the Examiner’s
interpretationof the “disposed on” verbiage recited by the independent
claims (1 and 18) is not reasonable. We therefore do not sustain the
obviousness rejections.
Specifically, the Examiner applies two unreasonable interpretations of
the claimed “buffering member[] disposed on an inner side surface of the
[base’s] edge portion” (claims 1 and 18 (emphasis added)) in an effort to
show a display panel 71 of Abe’s Figure 3 (partly reproduced below) teaches
the claimed buffering member. See, e.g., Final Act. 4; Adv. Act.,
Cont’n Sheet; Ans. 10. The first interpretation, the Examiner finds Abe’s
display panel 71 vibrates entirely across the surrounding space δ, thereby
intermittently contacts the opposing side of the base 3, and is thus “disposed
on an inner side surface” (claims 1 and 18) of the base 3. Final Act. 4;
Appeal 2019-003936
Application 14/935,919

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Adv. Act., Cont’n Sheet (“Paragraph 54 does disclose a gap but also
discloses that this gap allows the assembly 7 to move, thereby contacting
and being ‘disposed on’ the inner surface of the edge portion at various
times during vibration.”). We do not agree with the Examiner’s finding that
Abe discloses, “panel 71 vibrates entirely across the surrounding space δ,
thereby intermittently contacts the opposing side of the base 3”because Abe
actually recites, “A very small gap 8 is created between the inner edge of the
window 3a and the side face of the panel assembly 7. This allows the panel
assembly 7 to move inside the window 3a.” Abe 54, Adv. Act., Cont’n
Sheet. There is no indication within Abe’s paragraph 54 that panel 71
Abe’s Figure 3, reproduced above, is a
cross-sectional view of the applied device.
Appeal 2019-003936
Application 14/935,919

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vibrates across the entire surrounding space δ to contact the opposing side of
the base 3.
The second interpretation, the Examiner finds “disposed on” does not
“narrowly . . . mean ‘in direct physical contact with’” but can rather mean
“‘arranged next to’ or ‘arranged near’,” the panel 71 is near the opposing
side of the base 3, and the panel 71 is thus “disposed on an inner side
surface” (claims 1 and 18) of the base 3. Ans. 10.
Appellant contends, and we agree, something “‘disposed on’ an
object” must be “placed on that object.” Reply Br. 3 (emphasis added);
see also Appeal Br. 17–18. We agree because something “disposed on” a
surface is held by the surface (i.e., set on, placed on, etc.). That is the
ordinary meaning of “on”—receiving support from and/or attached to—
when describing structures. See, e.g., ON, Dictionary.com, https://
www.dictionary.com/browse/on?s=t (last visited Jan. 20, 2021)
(“preposition[:] so as to be or remain supported by or suspended from[;] . . .
so as to be attached to or unified with” and “adverb[:] in, into, or onto a
position of being supported or attached[;] . . . in, into, or onto a position of
covering or wrapping”). That is also Appellant’s illustration of the claimed
“buffering member[] disposed on an inner side surface of the [base’s] edge
portion,” which shows (Figs. 11, 16) a “buffering member” (280, 380)
held by an inner-side surface of a frame/base (240, 340). See Reply Br. 4
(describing this illustration).
The Examiner seeks to replace the above ordinary and disclosed
meaning of “disposed on” (claims 1 and 18) with a meaning satisfied by
intermittent contact and/or proximity. Final Act. 4; Adv. Act., Cont’n Sheet;
Ans. 10. The Examiner fails to present evidentiary support and, instead,
Appeal 2019-003936
Application 14/935,919

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offers only the following speculation as to how “disposed on” might be
interpreted in another context:
[A] standard printer paper tray that slides in and out of a main
printer body case could be legitimately described as “a paper
tray disposed on a front face of a printer main body” even
though the tray itself generally does not directly physically
contact the facing of the printer (as it requires at least a little
gap for movement).
Ans. 10. “A rejection based on section 103 clearly must rest on a factual
basis[;] . . . [i]t may not . . . resort to speculation.” In re Warner, 379 F.2d
1011, 1017 (CCPA 1967).
We add, lastly, Miles and Abe support our interpretation of “disposed
on.” Both references repeatedly attach the term “disposed” to a preposition
(between, beneath, along, about, in, to inside, on, over). Miles ¶¶ 11, 24,
30–31, 33, 35–36; Abe ¶¶ 12, 39, 41, 46, 55, 59, 102. Generally speaking,
all instances describe something in relation to another object. Id. And, the
instances of “disposed on” describe something held by—supported by and/or
attached to—another object. Abe ¶¶ 46 (describing a panel assembly 7
supported by a base 51), 103 (describing a detector 72 attached to a cover
panel 74); Figs. 3–4 (illustrating these “disposed on” relationships).
Appeal 2019-003936
Application 14/935,919

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OVERALL CONCLUSION
We reverse the Examiner’s decision to reject claims 1, 2, 6–11, 13–15
and 17–20.
DECISION SUMMARY
Claim(s)
Rejected 35 U.S.C. §
Reference(s)/
Basis Affirmed Reversed
1, 2, 6, 7,
9–11, 13,
14, 17–20
103 Miles, Abe
1, 2, 6, 7,
9–11, 13,
14, 17–20
8, 15 103 Miles, Abe, Kono 8, 15
Overall
Outcome
1, 2, 6–11,
13–15, 17–
20

REVERSED