Ex Parte Albano et al

Patent Trial and Appeal Board

Sep 29, 2016

13328112 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/328, 112 12/16/2011 Gherardo R. Albano
87048 7590 10/03/2016
Jordan IP Law (IBM - SVL)
12501 Prosperity Dr., Suite 401
Silver Spring, MD 20904
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.
FR920100054US 1 3488
EXAMINER
MATTHEWS, ANDRE L
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GHERARDO ALBANO, FRANCESCO M. DE COLLIBUS,
LUCA LANDI, and CLAUDIO PRUDENZI
Appeal2015-007077
Application 13/328, 112
Technology Center 2600
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b). Claims 18-20
are canceled. See Br. 21 (Claims App 'x).
We affirm-in-part and enter new grounds of rejection within the
provisions of 37 C.F.R. § 41.50(b) (2013).
1 According to Appellants, the real party in interest is International Business
Machines Corporation. Br. 3.
Appeal2015-007077
Application 13/328, 112
STATEMENT OF THE CASE
The Invention
Appellants' invention relates to "human interface devices, and in
particular to a sphere shaped human interface device." Spec. i-f 1. Claims 1
and 14 are independent and illustrative of the subject matter on appeal:
1. An apparatus comprising:
an inner sphere, wherein the inner sphere has a center
point;
an outer sphere, wherein the outer sphere is
compressible;
a plurality of pressure sensors in contact with both the
inner sphere and the outer sphere for detecting localized
compression of the outer sphere;
a first three-axis-accelerometer located within the inner
sphere; and
a second three-axis-accelerometer located within the
inner sphere, wherein the first three-axis-accelerometer and the
second three-axis-accelerometer-accelerometer are each located
at least a predetermined distance from the center point.
See Br. 16 (Claims App 'x).
14. A computer program product comprising:
a computer readable storage medium; and computer
usable code stored on the computer readable storage medium,
where, if executed by a processor, the computer usable code
causes a computer to:
receive time dependent pressure sensor data from a
plurality of pressure sensors distributed between and in contact
with both an inner sphere and the outer sphere for detecting
localized compression of the outer sphere;
receive time dependent accelerometer data from a first
three-axis-accelerometer and a second three-axis-accelerometer
located within the inner sphere; and
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Application 13/328, 112
determine a control gesture in accordance with the time
dependent pressure sensor data and the time dependent
accelerometer data.
See Br. 20 (Claims App 'x).
Rejections on Appeal
Claim 14 stands rejected under 35 U.S.C. § 112, second paragraph, as
indefinite. See Final Act. 2.
Claims 1-17 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Vaananen et al. (US 8,441,434 B2; issued May 14, 2013)
("Vaananen"), Zhai et al. (US 5,923,318; issued July 13, 1999) ("Zhai"),
Walker (US 6,072,467; issued June 6, 2000), and Nmngani (US 5,541,621;
issued July 30, 1996). See Final Act. 3-12.
RELATED PROCEEDINGS
Application 13/328,112 is the subject of the present appeal, in which
Appellants filed a Notice of Appeal on August 5, 2014 and an Appeal Brief
on November 26, 2014. Application 13/328,112 is the parent application of
Application 13/415,293, which is the subject of Appeal 2015-007090,
decided September 28, 2016, and in which Appellants filed a Notice of
Appeal on July 25, 2014 and an Appeal Brief on October 17, 2014.
Accordingly, although Appellants did not identify it as a related proceeding,
Appeal 2015-007090 is related to the present appeal. 2
2 Appellants disavow knowledge of any related appeals. Br. 3. Appellants
and the registered practitioner representing Appellants are reminded of the
obligation to identify related appeals, interferences, and trials in the Appeal
Brief. See 37 C.F.R. § 41.37(c)(ii) (2012).
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Application 13/328, 112
ISSUES
The issues presented by Appellants' contentions are as follows:
Under§ 103, did the Examiner err in the rejection of claim 1 because
modifying Zhai with Nmngani would frustrate the intended purposed of
Zhai?
Under§ 103, did the Examiner err in finding that Zhai's plurality of
piezoelectric switches incorporated into the surface of the housing of an
input device would have taught or suggested "a plurality of pressure sensors
distributed between ... both an inner sphere and the outer sphere for
detecting localized compression of the outer sphere," as recited in claim 14?
ANALYSIS
DEFINITENESS
Appellants do not address the rejection of claim 14 under 35 U.S.C.
§ 112, second paragraph. See generally Br. 5-15. Therefore, Appellants
have waived such arguments. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Accordingly, we summarily sustain the rejection of claim 14 under
35 U.S.C. § 112, second paragraph, as being indefinite.
PRIOR ART REJECTIONS
Claims 1-13
The Examiner found Figure 5 of Zhai teaches or suggests "a plurality
of pressure sensors ... for detecting localized compression of the outer
sphere," as recited in claim 1. See Final Act. 3 (citing Zhai Fig. 5, items 22,
30, 64); Ans. 15. The Examiner further found that Nmngani teaches a
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trackball system for a mouse where sensors are disposed inside the ball to be
"in contact with both the inner sphere and the outer sphere." See Final Act.
4--5 (citing Nmngani Fig. 7, in which inner sphere 72 and outer sphere 70
have two combination sensor devices 74 and 76 comprised of elements 60,
62, 63, and 75 that are shown to contact both inner sphere 72 and outer
sphere 70).
Appellants contend the proposed modification of Zhai with Nmngani
would frustrate the intended purpose of Zhai. See Br. 7. Appellants argue
that in order to combine Ngngani with Zhai's device, one would have to
entirely deconstruct the Zhai device, resulting in a complete change in
philosophy of Zhai. Id. at 10.
Although not cited by the Examiner (see Final Act. 3-5; Ans. 13-14),
Figure 4 of Zhai teaches the concept of a pressure sensor that is in contact
with both an inner sphere and an outer sphere for detecting compression of
the outer sphere. See Zhai Fig. 4 (showing elastically deformable
conductive rubber layer 56 sandwiched between inner and outer electrical
contact layers 44 and 46, in contact with sponge 30 and outer elastic housing
58), col. 5, 11. 42--44, 49-55 ("the impedance properties of deformable
conductive layer 56 are altered when a preselected pressure is applied across
any point on its surface, thereby causing an electrical change which is
detected and decoded as an indication of the presence of a switching event").
Accordingly, we disagree with Appellants' contention that modifying Zhai
with Nmngani's device would frustrate the intended purpose or require a
significant deconstruction of Zhai, as both Zhai and Nmngani teach spherical
user interface devices having one or more sensors in contact with inner and
outer spheres. See Br. 7-10; Zhai Fig. 4; Nmngani Fig. 7. As our analysis
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deviates from the Examiner's Final Rejection and Answer (see Final Act. 3-
5; Ans. 13-14), however, we do not sustain the Examiner's rejection of
claims 1-13 and designate our findings and conclusion to be a new ground
of rejection within 37 C.F.R. § 41.50(b) for claim 1under35 U.S.C. § 103(a)
over Vaananen, Zhai, Walker, and Nmngani.
We leave it to the Examiner to consider the patentability of dependent
claims 2-13, in light of our findings and conclusions supra. The fact that we
did not enter new grounds of rejection for claims 2-13 should not be
construed to mean that we consider those claims to be directed to patentable
subject matter or to be patentable over the prior art of record.
Claims 14-17
The Examiner mapped claim 14' s "plurality of pressure sensors
distributed between ... an inner sphere and the outer sphere for detecting
localized compression of the outer sphere" to Figure 5 of Zhai, which shows
a plurality of piezoelectric switches incorporated into the surface of the
housing of an input device. See Final Act. 9 (citing Zhai Fig. 5, items 22,
30, 64); Ans. 15. The Examiner explained that because Figure 5 of Zhai
shows switches disposed beneath the surface of housing 22, those switches
are "between" the outer surface ("outer sphere") and inner surface ("inner
sphere") of housing 22. See Ans. 15; Final Act. 9; Zhai Fig. 5.
Appellants contend Zhai' s switches, which are incorporated into the
surface of the housing (outer sphere), are not arranged "between ... an inner
sphere and the outer sphere" as recited in claim 14. See Br. 13-14.
According to Appellants, interpreting a first structure as "between" a second
and third structure when the first structure is located at or within the second
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or third structure "completely tears away at the conventional notion of what
constitutes a spatial location 'between' two objects/structures." See id at 14.
We are persuaded of error. Appellants' Specification discloses that
"[t ]he inner sphere may be made of a rigid material or it may be ... semi-
rigid that is ... to a certain degree compressible" and "[t]he outer sphere is
compressible .... [and] may be made of a material that is deformable."
Spec. i-f 13; see also Spec. i-f 4. In other words, consistent with Appellants'
Specification, the "inner sphere" and "outer sphere" recited in claim 14 are
physical elements made of material, i.e., structures. See Spec. i-fi-14, 13.
Furthermore, a pertinent definition of "between," consistent with the term's
usage in Appellants' Specification and the plain and ordinary meaning, is
"[i]n the interval or position separating .... [or] [c]onnecting spatially."
WEBSTER'S II DICTIONARY 69 (3d ed. 2005); see Appellants' Spec. ,-r,-r 13,
32, 46; Figs. 1, 2. Accordingly, we interpret claim 14 as requiring a plurality
of pressure sensors distributed in a position separating or connecting
spatially two structures, each comprising a physical sphere.
Applying this interpretation, we find the Examiner erred in relying on
Figure 5 of Zhai to teach or suggest claim 14' s "plurality of pressure
sensors" limitation. See Final Act. 9; Ans. 15; Zhai Fig. 5. We agree with
the Examiner that Figure 5 of Zhai shows a plurality of piezoelectric
switches 64 incorporated into a housing 22. See Final Act. 9; Ans. 15; Zhai
Fig. 5. But we disagree with the Examiner that disposing these switches
beneath the surface of housing 22 teaches or suggests that the switches are
"distributed between ... an inner sphere and the outer sphere," as recited in
claim 14. See Ans. 15. Here, it appears the Examiner interpreted the "outer
sphere" as an outer surface of housing 22 located above switch 64 and the
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Application 13/328, 112
"inner sphere" as an inner surface of housing 22 located beneath switch 64.
But this interpretation is overly broad and inconsistent with Appellants'
Specification, which, as discussed above, describes inner and outer spheres
as physical elements, not as surfaces. See Spec. i-fi-1 4, 13.
Accordingly, because Zhai's switches 64 are distributed only within an outer
sphere, housing 22, and not in a position separating or connecting spatially
two physical spheres (such as Zhai's sponge 30 and housing 22), the
Examiner has not shown that Zhai teaches or suggests "plurality of pressure
sensors distributed between ... both an inner sphere and the outer sphere for
detecting localized compression of the outer sphere," as recited in claim 14.
See Zhai Fig. 5; Br. 11-15; Final Act. 9; Ans. 15. Further, the Examiner has
not shown that Vaananen, Walker, or Nmngani cures this deficiency of Zhai.
See Final Act. 8-11; Ans. 15. Nor has the Examiner provided an adequate
rationale to fill the gaps in the cited prior art.
In view of the foregoing, we conclude the Examiner erred in the
rejection of claim 14. Accordingly we do not sustain the rejection of
independent claim 14. For the same reason, we do not sustain the rejections
of dependent claims 15-1 7, each of which include the same deficiency
discussed above for the rejection of claim 14. See Br. 20-21 (Claims
App'x); Ans. 15; Final Act. 11-12.
We enter a new ground of rejection within 37 C.F.R. § 41.50(b) for
claim 14 under 35 U.S.C. § 103(a) as unpatentable over Vaananen, Zhai,
Walker, and Nmngani.
We adopt as our own the Examiner's findings, conclusions, and
reasoning for claim 14 (see Final Act. 8-11; Ans. 13-15) except, as
discussed above, the finding that Figure 5 of Zhai alone teaches or suggests
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"a plurality of pressure sensors distributed between ... both an inner sphere
and the outer sphere for detecting localized compression of the outer
sphere." Nevertheless, we conclude the combination of Vaananen, Zhai, and
Walker teaches or suggests this claim limitation.
More specifically, Figure 4 of Zhai teaches a single pressure sensor
between an inner sphere and an outer sphere for detecting localized
compression of the outer sphere. See Zhai Fig. 4 (showing elastically
deformable conductive rubber layer 56 sandwiched between inner and outer
electrical contact layers 44 and 46, in a position between sponge 30 and
outer elastic housing 58), col. 5, 11. 42--44, 49-55 ("the impedance properties
of deformable conductive layer 56 are altered when a preselected pressure is
applied across any point on its surface, thereby causing an electrical change
which is detected and decoded as an indication of the presence of a
switching event"). Figure 4 of Zhai does not explicitly teach "a plurality of
pressure sensors distributed" between its inner and outer spheres, but Figure
5 of Zhai teaches the concept of distributing a plurality of pressure sensors
along a sphere in a user interface device. See Zhai Fig. 5 (showing
piezoelectric switches 64), col. 5, 11. 61---64. Modifying Figure 4 of Zhai to
include a "plurality of pressure sensors" as taught in Figure 5 of Zhai, would
have been a straightforward combination of well-known elements that a
person of ordinary skill in the art could have combined as an exercise of
routine skill with predictable results. See KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007) ("[W]hen a patent 'simply arranges old elements with
each performing the same function it had been known to perform' and yields
no more than one would expect from such an arrangement, the combination
is obvious."); Zhai col. 5, 11. 29-31. A person of ordinary skill in the art
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would have been motivated to make this modification in order to facilitate
user communication at a plurality of localized positions on the user interface
device. See Zhai col. 5, 1. 66-col. 6, 1. 3 ("The piezoelectric elements are
positioned so the minimum spacing between each piezoelectric element is
less than a finger width in order to ensure the switch is engaged by a user
squeezing the input device with it in any orientation in the user's fingers.");
col. 3, 11. 47-53 ("Accordingly, it would be advantageous to provide a 6-
DOF control device which ... permits the user to communicate discrete
button-pressing type information to the computer regardless of the position
of the device within the user's fingers."). We note that the teachings of
Vaananen are combinable with the teachings of Zhai, as Vaananen also
teaches the known concept of placing a pressure sensor inside a spherical
user interface device in order to detect user interaction. See Vaananen Figs.
7-8, col. 4, 11. 7-25. Lastly, we note the teachings of Zhai are combinable
with the teachings ofNmngani for the same reasons discussed above in the
new grounds of rejection for claim 1. See discussion supra, regarding claim
1. As our analysis deviates from the Examiner's rejection, we designate our
findings and conclusion to be a new ground of rejection for claim 14 under
35 U.S.C. § 103(a) over Vaananen, Zhai, Walker, and Nmngani.
We have entered a new ground of rejection for claim 14. We leave it
to the Examiner to consider the patentability of dependent claims 15-17, in
light of our findings and conclusions supra. The fact that we did not enter
new grounds of rejection for claims 15-17 should not be construed to mean
that we consider those claims to be directed to patentable subject matter or to
be patentable over the prior art of record.
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Application 13/328, 112
DECISION
The decision of the Examiner to reject claim 14 under 35 U.S.C.
§ 112, second paragraph, is summarily affirmed.
The decision of the Examiner to reject claims 1-17 under 35 U.S.C.
§ 103(a) is reversed.
We enter new grounds of rejection for claims 1 and 14 under
35 U.S.C. § 103(a) over Vaananen, Zhai, Walker, and Nmngani.
Section 41.50(b) provides that "[a] new ground of rejection ... shall
not be considered final for judicial review."
Section 41. 50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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