Ex Parte Birnbaum et alDownload PDFPatent Trial and Appeal BoardDec 22, 201613495235 (P.T.A.B. Dec. 22, 2016) 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. 13/495,235 06/13/2012 David M. Birnbaum T9047-22148US01; IMM384 2183 95000 7590 12/27/2016 MTT FS fr .STOFKRRTDfTF, P C EXAMINER Immersion Corporation 1751 Pinnacle Drive BUTTRAM, ALAN T Suite 1500 ART UNIT PAPER NUMBER iysons Corner, VAZZ1UZ-5855 2613 NOTIFICATION DATE DELIVERY MODE 12/27/2016 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): Ipdocketing @ Miles S tockbridge. com bgoldsmith @ miles stockbridge .com eofficeaction @ appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID M. BIRNBAUM, LI JIANG, JUAN MANUEL CRUZ- HERNANDEZ, ALI MODARRES, CHRISTOPHE RAMSTEIN, and DANNY A. GRANT Appeal 2016-001156 Application 13/495,235 Technology Center 2600 Before JAMES R. HUGHES, JOHN A. EVANS, and NORMAN H. BEAMER, Administrative Patent Judges. BEAMER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 3—7, 9—12, 14—18, and 20-24.1 Claims 2, 8, 13, and 19 are cancelled. We have jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify Immersion Corporation as the real party in interest. (App. Br. 2.) Appeal 2016-001156 Application 13/495,235 THE INVENTION Appellants’ disclosed and claimed invention is directed to an electronic device having a user interface that has a flexible surface, a haptic output device operatively coupled to the flexible surface and configured to cause a deformation of the flexible surface, and a controller in signal communication with the haptic output device. (Abstract.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An electronic device, comprising: a user interface comprising a flexible surface; a haptic output device operatively coupled to the flexible surface and configured to cause a deformation of the flexible surface; a screen configured to visually represent movement of a virtual element from one portion of the screen to another portion of the screen; and a controller in signal communication with the haptic output device and configured to trigger the haptic output device to cause the deformation of the flexible surface based on a simulated physical interaction of the virtual element represented on the screen with the flexible surface, the deformation of the flexible surface corresponding to movement of the virtual element. REJECTIONS The Examiner rejected claims 1,3,9, 11—12, 14, 20, and 22 under 35 U.S.C. § 103(a) as being unpatentable over Grant et al. (US 2010/0283731 Al, pub. Nov. 11, 2010) and Myers et al. (US 2013/0076649 Al, pub. Mar. 28,2013). (Final Act. 2-7.) 2 Appeal 2016-001156 Application 13/495,235 The Examiner rejected claims 4—5, 10, 15—16, and 21 under 35 U.S.C. § 103(a) as being unpatentable over Grant, Myers, and Cooper et al. (US 6,535,201 Bl, iss. Mar. 18, 2003). (Final Act. 7-9.) The Examiner rejected claims 6 and 17 under 35 U.S.C. § 103(a) as being unpatentable over Grant, Myers, and Salmela (US 2013/0009882 Al, pub. Jan. 10, 2013). (Final Act. 9—11.) The Examiner rejected claims 7 and 18 under 35 U.S.C. § 103(a) as being unpatentable over Grant, Myers, Salmela, and Cooper. (Final Act. 11-12.) The Examiner rejected claim 23 under 35 U.S.C. § 103(a) as being unpatentable over Grant, Myers, and Johnson et al. (US 2013/0215079 Al, pub. Aug. 22, 2013). (Final Act. 12—14.) The Examiner rejected claim 24 under 35 U.S.C. § 103(a) as being unpatentable over Grant, Myers, and Lee et al. (US 2013/0314341 Al, pub. Nov. 28, 2013). (Final Act. 1^U16.) ISSUE ON APPEAL Appellants’ arguments in the Appeal Brief present the following dispositive issue:2 Whether the Examiner erred in finding the combination of Grant and Myers teaches or suggests the independent claim 1 limitations, “a screen configured to visually represent movement of a virtual element from one 2 Rather than reiterate the arguments of Appellants and the findings of the Examiner, we refer to the Appeal Brief (filed May 21, 2015); the Reply Brief (filed Oct. 30, 2015); the Final Office Action (mailed Oct. 31, 2014); and the Examiner’s Answer (mailed Sept. 1, 2015) for the respective details. 3 Appeal 2016-001156 Application 13/495,235 portion of the screen to another portion of the screen; and ... a simulated physical interaction of the virtual element represented on the screen with the flexible surface, the deformation of the flexible surface corresponding to movement of the virtual element,” and the similar limitations recited in independent claims 12 and 22. (App. Br. 5—7.) ANALYSIS For the limitations of the independent claims at issue, the Examiner relies on the disclosure in Grant of a haptic device with a deformable portion that changes shape to provide haptic feedback associated with interaction of a player with the objects in a computer game. (Final Act. 3; Grant Abstract, Fig. 1, || 25. 28, 29, 38, 39, 45.) The Examiner also relies on the disclosure in Myers of a flexible display including touch sensitive portions with haptic feedback components which can be used as virtual buttons with associated tactile feedback. (Final Act. 4; Myers Fig. 7, | 63.) Appellants argue neither Grant nor Myers, whether alone or in combination, teach or suggest causing deformation of a flexible surface based on simulated physical interaction of the virtual element and corresponding to movement of that element on a display screen. (App. Br. 5—7.) In response, the Examiner cites a device described in Grant emulating a tennis racket which displays the strings of the racket and which includes haptic elements in the handle to simulate the tennis ball striking the racket. (Ans. 16—17; Grant Fig. 5, || 42-45.) The Examiner states “Fig. 5 does not explicitly show the tennis ball, however, Para. 42 does imply the tennis ball is displayed on the racket when it makes contact with the face of the racket, thus triggering the haptic feedback in the handle . . . .” (Ans. 17.) 4 Appeal 2016-001156 Application 13/495,235 We are persuaded by Appellants’ arguments. The combination of Grant and Myers do not teach or suggest the required haptic simulation of movement of virtual elements on a display screen. In regard to the Examiner’s reliance on the tennis racket embodiment in Grant, we agree with the reasoning in Appellants’ reply: [Grant] does not imply that the tennis ball is ever displayed on the racket. Instead, paragraph [0042] explicitly states that the “display 502 displays an image of a frame 512 with a tightly interlace[d] network of strings.” The reference to the location of a tennis ball hitting the racket is with respect to the activation or deactivation of haptic mechanisms 506, 508 that may be associated with the location of the tennis ball hitting the racket to simulate the quality of the stroke and/or location of the contact of the ball with the face of the racket. . . . Moreover, a person hitting a real tennis ball does not look at the racket with the same perspective that would be displayed by the display 502, i.e. the face of the racket, and therefore there would be no need for the simulated racket of Grant to display the virtual tennis ball as it makes “contact” with the simulated racket. (Reply Br. 3—4.) Therefore, on the record before us, we are constrained to find the Examiner errs in rejecting independent claims 1, 12, and 22. CONCLUSIONS For the reasons stated above, we do not sustain the obviousness rejections of independent claims 1,12, and 22 over Grant and Myers. We also do not sustain the obviousness rejections of claims 3,9, 11, 14, and 20 over Grant and Myers, and of claims 4—5, 10, 15—16, and 21 over Grant, Myers, and Cooper, of claims 6 and 17 over Grant, Myers, and Salmela, of claims 7 and 18 over Grant, Myers, Salmela, and Cooper, of claim 23 over 5 Appeal 2016-001156 Application 13/495,235 Grant, Myers, and Johnson, and of claim 24 over Grant, Myers, and Lee, which claims are dependent from claims 1, 12, or 22. DECISION We reverse the Examiner’s rejections of claims 1, 3—7, 9—12, 14—18, and 20-24. REVERSED 6 Copy with citationCopy as parenthetical citation