David Birnbaum

Patent Trials and Appeals Board

Feb 12, 2021

2020000399 (P.T.A.B. Feb. 12, 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.
12/605,651 10/26/2009 David Birnbaum IMM323 (51851/368567) 1234
34300 7590 02/12/2021
Immersion / Kilpatrick Townsend and Stockton
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
ELAHI, TOWFIQ
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
02/12/2021 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):
eofficeaction@appcoll.com
ipefiling@kilpatricktownsend.com
kts_imm_docketing@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID BIRNBAUM
Appeal 2020-000399
Application 12/605,651
Technology Center 2600
Before ELENI MANTIS MERCADER, JAMES W. DEJMEK, and
JOHN R. KENNY, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–2, 4, 9–14, and 16–26. See Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2018). Appellant identifies the real party in interest as Immersion
Corporation. Appeal Br. 1.
Appeal 2020-000399
Application 12/605,651
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CLAIMED SUBJECT MATTER
The claims are directed to a systems and methods for using static
surface features on a touch-screen for tactile feedback. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A system comprising:
a processor configured to transmit a plurality of display
signals, each display signal comprising a plurality of display
elements having a first unique preset display pattern; and
a display configured to output a visual representation of
the display signal, the display comprising a touch-sensitive input
device, a surface of the display configured to receive a physical
removable overlay configured to be coupled to the surface of the
display, the physical removable overlay comprising a surface and
one or more permanent surface features comprising a ridge raised
above the surface or a trough into the surface forming a second
display pattern, wherein the physical removable overlay
comprises an identifier, and wherein upon recognizing the
identifier the processor sends the display signal having the first
unique preset display pattern that matches the second display
pattern.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kraus US 2005/0099403 A1 May 12, 2005
Briancon US 2007/0220427 A1 Sept. 20, 2007
Boer US 2008/0121442 A1 May 29, 2008
Fyke US 2008/0303796 A1 Dec. 11, 2008

Appeal 2020-000399
Application 12/605,651
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REJECTIONS2
1. Claims 1, 2, 4, 9–13, 16–18, 20–22 and 24–26 are rejected under
35 U.S.C. § 103(a) as unpatentable over Fyke and Kraus.
2. Claims 14 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fyke, Kraus, and Boer.
3. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Fyke, Kraus, and Briancon.

Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1, 2, 4, 9–13, 16–18,
20–22, 24–26
103 Fyke, Kraus
14, 23 103 Fyke, Kraus, Boer
19 103 Fyke, Kraus, Briancon

OPINION
To the extent consistent with our analysis below, we adopt the
Examiner’s findings and conclusions in (i) the action from which this appeal
is taken and (ii) the Answer. We add the following primarily for emphasis.

2 The Examiner withdrew the rejections of claims 1, 2, 4, and 9–26 under
35 U.S.C. §112, first and second paragraphs. Thus, these rejections are not
before us.

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Application 12/605,651
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Claims 1, 2, 4, 9–13, 16–18, 20–22, and 24–26 rejected under 35 U.S.C.
§ 103(a)
A. Did the Examiner’s Motivation to Combine Fyke and Kraus
Constitute Improper Hindsight?
Appellant argues that the Examiner’s recited motivation “to make a
touch-sensitive display screen into a more acceptable extended data-entry
device” constitutes improper hindsight. App. Br. 18–19. Appellant asserts
that the prior art must provide a motivation or reason to combine without the
benefit of Appellant’s Specification. Id. at 19.
Any judgement on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.

In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).

We agree with the Examiner’s finding that Kraus provides a
motivation to modify Fyke to “enhance the experience of entering data on
any touch-sensitive display screen.” Ans. 4 (citing Kraus, para. 9); see also
Final Act. 6. The Examiner further finds additional advantages such as
simpler design and better tactile feedback, due to Kraus’ keys being raised
relative to valleys of the keyboard overlay. Ans. 4 and Final Act. 5 (citing
Fig. 3B and Fig. 3C). As explained in Kraus with respect to Figure 3B,
ridges and valleys allow the user to feel whether or not “his fingers are
properly oriented over the key areas” thereby enhancing the user’s
experience. Kraus, para. 34.
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Upon reviewing the record before us, we find that the Examiner’s
suggestion for the proposed modification in the prior art suffices as an
articulated reason with a rational underpinning to establish a prima facie
case of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
We also agree with the Examiner that the proposed combination
merely substitutes the permanent overlay of Fyke with the removable
overlay of Kraus. See Ans. 5. “‘The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.’” Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1161 (Fed. Cir. 2007) (quoting KSR, 550 U.S. at 416). A
simple substitution of Fyke’s permanent overlay with Kraus’ removable
overlay is a simple substitution amounting to a predictable variation to a
person of ordinary skill in the art designing such interfaces. See KSR, 550
U.S. at 417 (“If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.”).

B. Modification Would Break the Shape-Changing Surface of Fyke by
Including Static Features?
Appellant argues that applying the mechanical overlay of Kraus
overtop of the shape changing surface of Fyke, would prevent the user from
experiencing any shape changes performed by Fyke’s changeable surface.
App. Br. 20. According to Appellant, this entirely defeats the purpose of
shape changing. Id.
Appellant concludes that a person of skill in the art would not make
the Examiner’s proposed modification, because it would render the shape
changing surface of Fyke unsatisfactory for its intended purpose, e.g.,
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because the surface would be covered by the overlay of Kraus. Id.
Appellant argues that for the same reason the Examiner has not established
that a person of ordinary skill in the art would be motivated to combine Fyke
and Kraus because the modification would change the principle of operation
of Fyke. Id. (citing MPEP § 2143.01; In re Ratti, 270 F.2d 810, 813 (CCPA
1959)). Appellant explains that the principle operation of Fyke is to use a
shape-changing surface, and to modify this shape changing surface by
covering it with a static overlay would modify the principle of operation,
because the overlay covers the shape changing surface and prevents any
dynamic shape changing. Id.
The Examiner finds, and we agree, that the principle operation of
Fyke is a touch screen with shape adaptive physical removable input device
with ridges raised above the surface that provide tactile feedback. See
Ans. 4. The Examiner finds that Kraus has a very similar operation such as
“keyboard overlay” that sits on top of a touch-sensitive display screen. Id. at
4–5. The Examiner further finds that the keyboard overlay is formed to
provide tactile finger-position feedback so that a user can keep their fingers
oriented properly over the keyboard. Id. at 5 (citing Kraus, para. 34). The
Examiner finds that one of the functions of the keyboard overlay 110 is to
provide a user with finger-position feedback. Id. Two of many possible
mechanisms for providing such feedback are shown in Figure 3b. Id. First,
a key area 300 is surrounded by a ridge 308 and the key areas 300 are raised
relative to the “valleys” 310 between the key areas 300. Id. These features
allow the user to feel whether or not his fingers are properly oriented over
the key areas 300. Id. Other possible feedback mechanisms include a raised
spot on one or more of the key areas 300 and a depressed crown of the key
areas 300. Id. As such Fyke and Kraus have similar principal of operations.
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Additionally, the Examiner explains that the proposed combination is
merely to substitute the permanent overlay of Fyke with the removable
overlay of Kraus. Id. The principle of operations would be unchanged and
the proposed modification would not break the shape-changing surface of
Fyke by including static features. Id.
We agree with the Examiner’s findings. Here, the Examiner’s
proposed combination uses prior art elements predictably according to their
established functions to yield a predictable result (i.e., substituting the
permanent overlay of Fyke with the removable overlay of Kraus). See KSR,
550 U.S. at 417.
Accordingly, we affirm the Examiner’s rejection of claims 1–2, 4, 9–
13, 16–18, 20–22, and 24–26.

Claims 14, 19, and 23 rejected under 35 U.S.C. § 103(a)
We affirm the Examiner’s rejection of claims 14, 19, and 23 for the
same reasons as stated above because they were not separately argued.
CONCLUSION
The Examiner’s rejections are AFFIRMED.

The Examiner’s decision to reject claims 1–2, 4, 9–14, and 16–26 is
AFFIRMED.

Appeal 2020-000399
Application 12/605,651
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 9–
13, 16–18,
20–22, 24–
26
103(a) Fyke, Kraus 1, 2, 4, 9–
13, 16–18,
20–22, 24–
26

14, 23 103(a) Fyke, Kraus, Boer 14, 23
19 103(a) Fyke, Kraus,
Briancon
19
Overall
Outcome
1, 2, 4, 9–
14, 16–26

RESPONSE
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.
§ 1.136(a)(1)(iv).
AFFIRMED