Racing Optics, Inc.Download PDFPatent Trials and Appeals BoardMar 1, 20212020001399 (P.T.A.B. Mar. 1, 2021) 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. 15/090,681 04/05/2016 Bart E. Wilson 20206-138535-US 2971 22242 7590 03/01/2021 FITCH EVEN TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 2100 CHICAGO, IL 60603-3406 EXAMINER CHANG, VICTOR S ART UNIT PAPER NUMBER 1788 MAIL DATE DELIVERY MODE 03/01/2021 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BART E. WILSON and STEPHEN S. WILSON ____________ Appeal 2020-001399 Application 15/090,681 Technology Center 1700 ____________ Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and MONTÉ T. SQUIRE, Administrative Patent Judges. BEST, Administrative Patent Judge. I. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–12, 15, 17–19, and 21–23 of Application 15/090,681. Final Act. (April 8, 2019). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Racing Optics, Inc. as the real party in interest. Appeal Br. 3. Appeal 2020-001399 Application 15/090,681 2 II. BACKGROUND The ’681 Application describes a particular shield that can be used to protect a display screen or a touch screen. Spec. ¶¶ 2–4. The protective shield comprises a rigid base layer made from a first material, a flexible outer layer made from a second material, a first adhesive layer that attaches the flexible outer layer to the base layer, and a second adhesive layer that is used to mount the shield to the screen. Id. ¶ 5. Claim 1 is representative of the ’681 Application’s claims and is reproduced below from the Appeal Brief’s Claims Appendix. 1. A display surface shield comprising: a rigid base layer having a shape that corresponds to a shape of a display surface comprising a touch screen, the rigid base layer comprising a first material; a first adhesive layer applied about a lower surface of the shield, the first adhesive layer configured to removably attach the shield to the display surface; a flexible outer layer forming an upper surface of the shield that is opposite the first adhesive on the lower surface of the shield, the flexible outer layer comprising a second material; and a second adhesive layer adhering the outer layer to the base layer; wherein the shield is configured to attach to the display surface so that, upon removably attaching the shield to the display surface, the flexible outer layer faces away from the display surface, wherein the second material is a different material than the first material such that the flexible outer layer is softer and more flexible relative to the rigid base layer, and wherein the shield is configured to attach to the display surface so that the touch screen maintains touch sensitivity through the attached shield. Appeal Br. 23 (emphasis added). Appeal 2020-001399 Application 15/090,681 3 III. REJECTIONS On appeal, the Examiner maintains2 the following rejections: 1. Claims 1, 2, 4, 5, 9–12, and 15 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Wilson.3 Final Act. 2. 2. Claims 3, 6, and 7 are rejected under 35 U.S.C. § 103 as unpatentable over Wilson. Final Act. 5. 3. Claims 8, 17–19, and 21–23 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Wilson and Huang.4 Final Act. 5. IV. DISCUSSION A. Rejection of claims 1, 2, 4, 5, 9–12, and 15 as anticipated by Wilson Appellant only argues for reversal of this rejection based on claim 1’s limitations. Thus, we choose claim 1 as representative of the claims subject to this ground of rejection. 37 C.F.R. § 41.37(c)(1)(iv) (2018). We limit our discussion accordingly. In rejecting claim 1, the Examiner necessarily found that Wilson describes each limitation of the claim. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (explaining that an anticipatory reference “must disclose each and every element of the claimed invention, whether it does so explicitly or inherently.”). 2 Application 15/072,913 became abandoned on February 19, 2019. Thus, the provisional double patenting rejection, see Final Act. 6, is moot. 3 US 2015/0013891 A1, published January 15, 2015. 4 US 9,063,699 B1, issued June 23, 2015. Appeal 2020-001399 Application 15/090,681 4 Appellant argues that the Examiner erred in so finding. We agree. We, therefore, reverse the rejection of claim 1 as anticipated. Claim 1 recites, among other things, that the rigid base layer comprises a first material and the flexible outer layer comprises a second material “wherein the second material is a different material than the first material.” Appellant argues that the Examiner erred by finding that Wilson describes a display shield that satisfies this requirement. Appeal Br. 12–14. In rejecting claim 1, the Examiner found that Wilson’s base layer may comprise transfer materials “such as biaxially-oriented polyethylene terephthalate (boPET), etc.” Final Act. 3 (citing Wilson ¶ 51). The Examiner also found that Wilson’s outer layer may also be fabricated from a transparent material such as boPET. Id. (citing Wilson ¶ 545). The Examiner further found that since Wilson teaches that the base layer (first material) may be fabricated from a transparent material, such as biaxially- oriented polyethylene terephthalate (boPET), etc. (other materials), and the sacrificial layers (second material) 14a-n may also be fabricated from a transparent material, such as boPET, Wilson clearly teaches that suitable base materials is [sic] not particularly limited, and useful transparent materials include materials which is [sic] not boPET. That is, Wilson’s teaching reads on the limitation as claimed. Id. at 4. 5 We agree with Appellant that the Examiner intended to cite Wilson’s paragraph 53. Appeal 2020-001399 Application 15/090,681 5 As the Federal Circuit has explained, “‘anticipation’ requires lack of novelty of the invention as claimed. The invention must have been known to the art in the detail of the claim; that is, all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001) (emphasis added). In this case, the Examiner has not demonstrated that Wilson describes a display surface shield meeting all of the limitations of claim 1. Wilson describes a display surface shield comprising a base transparent layer and sacrificial layers made of transparent materials—a description not limited to boPET. See Wilson ¶¶ 51, 53. Wilson, however, does not describe an embodiment of the display surface shield in which the base transparent layer and the sacrificial layers are made from different transparent materials, let alone transparent materials having the relative softness and flexibility recited in claim 1. Wilson, therefore, does not anticipate claim 1.6 For the reasons set forth above, we reverse the rejection of claim 1 as anticipated by Wilson. We, therefore, also reverse the rejection of claims 2, 4, 5, 9–12, and 15 as anticipated by Wilson. B. Rejection of claims 3, 6, and 7 as unpatentable over Wilson Claims 3, 6, and 7 depend from claim 1. In rejecting claims 3, 6, and 7 as obvious over Wilson, the Examiner relied upon the findings made in the rejection of claim 1 as anticipated. Final Act. 5. As discussed above, we have determined that the Examiner erred in finding that Wilson describes 6 We express no opinion regarding whether claim 1 may be obvious in view of Wilson, either alone or in combination with some other reference. Appeal 2020-001399 Application 15/090,681 6 each limitation of claim 1. In the analysis of the claims subject to this ground of rejection, the Examiner does not explain how Wilson suggests the limitations of claim 1 that we determined it does not expressly describe. Thus, the Examiner has not established a prima facie case of obviousness with respect to the claims subject to this ground of rejection. In view of the foregoing, we reverse the rejection of claims 3, 6, and 7 as obvious over Wilson because the Examiner has failed to establish a prima facie case. C. Rejection of claims 8, 17–19, and 21–23 as unpatentable over the combination of Wilson and Huang The claims subject to this ground of rejection may be divided into three groups. We address each group individually. 1. Claim 8 Claim 8 depends from claim 1. In rejecting claim 8 as obvious over Wilson, the Examiner relied upon the findings made in the rejection of claim 1 as anticipated. Final Act. 5. As discussed above, we have determined that the Examiner erred in finding that Wilson describes each limitation of claim 1. In the analysis of the claims subject to this ground of rejection, the Examiner does not explain how Wilson suggests the limitations of claim 1 that we determined it does not expressly describe. Thus, the Examiner has not established a prima facie case of obviousness with respect to the claims subject to this ground of rejection. In view of the foregoing, we reverse the rejection of claim 8 as obvious over Wilson because the Examiner has failed to establish a prima facie case. Appeal 2020-001399 Application 15/090,681 7 2. Claims 17–19, 21, and 22 Claims 18, 19, 21, and 22 depend from claim 17. Thus, we select claim 17 as representative of this group of claims. 37 C.F.R. § 41.37(c)(1)(iv). In rejecting claim 17, the Examiner found that it would have been obvious to use Huang’s glass sheet as the rigid base layer in the Wilson’s display surface shield. Final Act. 6. The Examiner, however, does not explain why, in the absence of the ’681 Application’s disclosure, a person of ordinary skill in the art would have chosen to substitute Huang’s glass sheet for Wilson’s base layer rather than for Wilson’s sacrificial layers. We note that Huang describes its glass sheet as the outer layer of its display surface shield. See, e.g., Huang Fig. 5. The Examiner’s assertion that “selection of a no material based on its suitability for its intended use support[s] a prima facie obviousness determination” is conclusory and not supported by sufficient reasoning. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). In view of the foregoing, we reverse the rejection of claims 17–19, 21, and 22 as obvious over the combination of Wilson and Huang. 3. Claim 23 The Examiner rejected claim 23 for the same reasons used to reject claim 17. Final Act. 6. For the reasons set forth above, we have reversed the rejection of claim 17. The same defects are present in the rejection of claim 23. Thus, we also reverse the rejection of claim 23. Appeal 2020-001399 Application 15/090,681 8 V. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 5, 9–12, 15 102(a)(1) Wilson 1, 2, 4, 5, 9–12, 15 3, 6, 7 103 Wilson 3, 6, 7 8, 17–19, 21–23 103 Wilson, Huang 8, 17–19, 21–23 Overall Outcome 1–12, 15, 17–19, 21–23 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REVERSED Copy with citationCopy as parenthetical citation