Ex Parte Anastas et alDownload PDFPatent Trial and Appeal BoardMay 8, 201512272547 (P.T.A.B. May. 8, 2015) 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. 12/272,547 11/17/2008 George Anastas IMM156.D1 6513 34300 7590 05/08/2015 PATENT DEPARTMENT (51851) KILPATRICK TOWNSEND & STOCKTON LLP 1001 WEST FOURTH STREET WINSTON-SALEM, NC 27101 EXAMINER SASINOWSKI, ANDREW ART UNIT PAPER NUMBER 2622 MAIL DATE DELIVERY MODE 05/08/2015 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 GEORGE ANASTAS, DAVID W. BAILEY, GEORGE TASHIJIAN, and RAYMOND YU ____________________ Appeal 2013-002527 Application 12/272,547 Technology Center 2600 ____________________ Before CARL W. WHITEHEAD JR., JOHNNY A. KUMAR, and JAMES W. DEJMEK, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-002527 Application 12/272,547 2 Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1–5, 7–21, and 23–32. Claims 6 and 22 are canceled. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Introduction Appellants’ invention is directed to providing haptic feedback. Spec. ¶ 2. In particular, the disclosed invention relates to providing a haptic manipulandum. Id. Haptic feedback can include such kinesthetic and/or vibrotactile feedback such as resistive force feedback, vibration, texture, and heat. Spec. ¶ 3. In one embodiment, a substantially-spherical manipulandum incorporating haptic feedback is disclosed. Spec. ¶¶ 10–15. An example of a substantially-spherical manipulandum is a trackball. Spec. ¶ 5. Representative claim 1 is illustrative of the subject matter on appeal and is reproduced below with the disputed limitation emphasized in italics: 1. A method comprising: pivotably applying a first processor-controlled force to a substantially spherical manipulandum to provide a haptic effect; and applying a second processor-controlled force to the substantially-spherical manipulandum to provide the haptic effect by rotating a roller in a direction opposing a rotation of the substantially-spherical manipulandum, wherein the first processor-controlled force comprises a first component normal to a surface of the substantially-spherical manipulandum and a second component tangential to the surface of the substantially- spherical manipulandum. Appeal 2013-002527 Application 12/272,547 3 The Examiner’s Rejections Claims 1–5, 7–21, and 23–32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Piot et al. (US 2003/0038774 A1, Feb. 27, 2003) (“Piot”) and Serpa (US 2002/0154094 A1, Oct. 24, 2002). Ans. 4–9. Issue on Appeal Did the Examiner err in finding the combination of Piot and Serpa teaches or suggests “applying a second processor-controlled force to the substantially-spherical manipulandum to provide the haptic effect by rotating a roller in a direction opposing a rotation of the substantially- spherical manipulandum,” as recited in claim 1? ANALYSIS 1 Appellants argue the Examiner erred in finding the combination of Piot and Serpa teaches or suggests providing a haptic effect by rotating a roller in a direction opposing a rotation of the substantially-spherical manipulandum. App. Br. 7–9. In particular, Appellants contend Serpa is directed to providing “vibrational effects, not resistive effects” and is therefore “unrelated” to the claimed invention. App. Br. 8. Additionally, Appellants argue Serpa teaches away from using an opposing rotational force to provide haptic feedback. App. Br. 8–9. We address Appellants’ arguments seriatim. 1 Throughout this opinion we refer to the Appeal Brief (“App. Br.”) dated June 5, 2012, Reply Brief (“Reply Br.”) dated December 3, 2012, and the Examiner’s Answer (“Ans.”) mailed on October 1, 2012. Appeal 2013-002527 Application 12/272,547 4 We disagree with Appellants’ conclusion that because Serpa provides a vibrational feedback effect rather than a resistive effect, Serpa is unrelated to the claimed invention. App Br. 8. As an initial matter, we note the claim language recites a broader, more generic method “to provide a haptic effect.” Claim 1 (emphasis added). Appellants’ argument is not commensurate with the scope of claim 1, and thus, for that reason, does not demonstrate error in the Examiner’s rejection. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). Additionally, as set forth in the Specification, haptic feedback may include “kinesthetic and/or vibrotactile feedback (such as, without limitation, active and resistive force feedback, vibration, texture, heat, etc.).” Spec. 3. Accordingly, we find Serpa to be relevant and related to the claimed invention. Appellants also argue Serpa teaches away from providing resistive feedback. App. Br. 7–9. In support of their position, Appellants turn to paragraph 10 of Serpa (also relied upon by the Examiner) which states that use of a motor or actuator to reverse directions of a manipulandum “might cause excessive wear (or even break the device under some circumstances).” Serpa ¶ 10 (emphasis added); App. Br. 9. Therefore, Appellants conclude Serpa teaches a vibrational effect to avoid the functionality associated with generating resistive haptic effects, thereby leading one of skill in the art away from using resistive haptic effects. App. Br. 9 As relied upon by the Examiner, Serpa teaches or suggests in the Background of the Invention it was known in the art to provide resistive haptic feedback by using a motor or actuator to reverse the directions of a manipulandum. Ans. 11. We agree with the Examiner’s conclusion that Appeal 2013-002527 Application 12/272,547 5 Serpa does not teach away from haptic resistive effects, but rather acknowledges some users may prefer an alternate design choice. Id.; Serpa ¶ 10 (“Though the combination of a cursor positioning control wheel with force feedback capability might appeal to some users, a simpler and more reliable design could be preferable for many applications.”). “[I]n a section 103 inquiry, the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)(internal quotation omitted). Additionally, nonobviousness cannot be established by attacking references individually where, as here, the ground of unpatentability is based upon the teachings of a combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981). Rather, the test for obviousness is whether the combination of references, taken as a whole, would have suggested the patentee’s invention to a person having ordinary skill in the art. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner finds, and we agree, Piot teaches or suggests all of the limitations recited in claim 1 except for providing the haptic effect by rotating a roller in a direction opposing the rotation of the substantially- spherical manipulandum. Ans. 5. For this limitation the Examiner relies on the teaching of Serpa regarding the actuated force can be opposite to manipulandum rotation. Ans. 6. The Examiner concludes “[i]t would have been obvious to one with ordinary skill in the art at the time of the invention to combine the apparatus taught by Piot with the opposite rotation force taught by Serpa because . . . ‘force feedback capability might appeal to some Appeal 2013-002527 Application 12/272,547 6 users.’” Ans. 6 (quoting Serpa ¶ 10). We agree with the Examiner’s findings and conclusions. For the reasons discussed supra, we find Appellants’ arguments unpersuasive of Examiner error. Accordingly, we sustain the rejection of independent claim 1 under 35 U.S.C. § 103(a) over Piot and Serpa. For similar reasons, we sustain the rejection of independent claims 9, 17, and 25 together with the rejection of dependent claims 2–5, 7, 8, 10–16, 18–21, 23, 24, and 26–32 which were not separately argued. DECISION The rejection of claims 1–5, 7–21, and 23–32 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED msc Copy with citationCopy as parenthetical citation