Ex Parte Birnbaum et al

Patent Trial and Appeal Board

May 25, 2016

12697030 (P.T.A.B. May. 25, 2016)

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.
12/697,030 01/29/2010 David M. Birnbaum IMM341 (51851/380230) 1167
34300 7590 05/25/2016
Kilpatrick Townsend and Stockton, LLP
1001 W Fourth Street
Winston-Salem, NC 27101
EXAMINER
ENGLISH, ALECIA DIANE
ART UNIT PAPER NUMBER
2625
MAIL DATE DELIVERY MODE
05/25/2016 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 DAVID M. BIRNBAUM, CHRIS ULLRICH, PETER RUBIN,
PHONG DAVID NGO, and LEO KOPELOW
____________________

Appeal 2014-006683
Application 12/697,030
Technology Center 2600
____________________

Before HUNG H. BUI, JON M. JURGOVAN, and NABEEL U. KHAN,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejections of claims 1, 2, 5–12, and 14–20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.2

1 According to Appellants, the real party in interest is Immersion
Corporation.
2 Our Decision refers to Appellants’ Appeal Brief filed Jan. 30, 2014 (“App.
Br.”); Reply Brief filed May 27, 2014 (“Reply Br.”); Examiner’s Answer
mailed Mar. 25, 2014 (“Ans.”); Final Office Action mailed June 3, 2013
(“Final Act.”); and original Specification filed Jan. 29, 2010 (“Spec.”).
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STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention is directed to systems and methods for
interpreting physical interactions with a graphical user interface installed, for
example, in a handheld device, such as a mobile phone, responsive to user
gestures and/or movement of the device. Spec ¶ 4. According to an
example embodiment, the movement of the device (shaking, moving up,
down, forward, back, etc.) is sensed and interpreted as functions in a virtual
space, as shown in Appellants’ Figure 2b, as reproduced below with
additional markings, inserted in red, for illustration.

Appellants’ Figure 2b shows a graphical user interface (GUI) 240
comprising a virtual physical space 232 to allow a user interaction therewith,
via user gestures or movements.

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Claims on Appeal
Claims 1, 12, 18, 19, and 20 are independent. Claim 1 is illustrative
of the invention, as reproduced below with disputed limitations emphasized:

1. A device comprising:
a housing configured to be grasped by a user;
a display disposed in the housing, the display configured
to display a graphical user interface comprising a virtual physical
space comprising one or more virtual physical objects each
comprising an associated virtual weight;
a sensor disposed in the housing, the sensor configured to
detect a movement of the housing in a degree of freedom;
a processor disposed in the housing and in communication
with the display and the sensor, the processor configured to:
receive a sensor signal from the sensor, the sensor signal
comprising a parameter associated with the movement;
determine a command associated with the virtual physical
space based, at least in part, on the parameter;
determine a function to be executed based, at least in part,
on the command,
execute the function; and
modify the one or more virtual physical objects in the
virtual physical space based in part on the function.

App. Br. 34 (Claims App.).

Evidence Considered
Rosenberg US 2001/0045941 A1 Nov. 29, 2001
Shahoian US 2005/0052430 A1 Mar. 10, 2005
Marvit US 7,176,886 B2 Feb. 13, 2007
Ording US 2007/0152984 Al July 5, 2007
Wolinsky US 2008/0020843 A1 Jan. 24, 2008
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Examiner’s Rejections
(1) Claims 8–11 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. Final Act. 2–3.
(2) Claims 1–2, 5–7, and 12 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Marvit and Rosenberg. Final Act. 4–7.
(3) Claims 8–11 and 14–17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Marvit, Rosenberg, and Wolinsky. Final Act. 7–
10.
(4) Claims 18–20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ording and Shahoian. Final Act. 10–16.

ISSUE
Based on Appellants’ arguments, the dispositive issue on appeal is
whether the Examiner’s combination of prior art references teaches or
suggests several limitations of claims 1, 8, 12, 18, 19, and 20. App. Br. 27–
33; Reply Br. 2–4.

ANALYSIS
§ 112, Second Paragraph, Rejection of Claims 8–11
Claim 8 depends from independent claim 1, and further requires the
processor of the device recited in claim 1 to “receive a signal from a second
device indicating a request to connect the second device to the first virtual
physical space” and also “receive a second sensor signal from the sensor . . .
indicating a second movement of the device.”
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The Examiner finds claim 8 indefinite because: (1) there is no
antecedent basis for the term “the sensor”; (2) whether “the sensor” is
“related to the second device”; and (3) whether the term “the device” refers
to the first or second device. Final Act. 2–3.
Appellants contend: (1) the antecedent basis for “the sensor” as a
component of “the device” is found in claim 1 from which claim 8 depends;
(2) “the sensor” is not and needs not be a component of the second device;
and (3) “the device” recited in claim 8 refers to a movement of “the device”
not a movement of “the second device.” App. Br. 25–26; Reply Br. 1.
We agree with Appellants. Whether a claim is indefinite is an issue of
law. Credle v. Bond, 25 F.3d 1566, 1576 (Fed. Cir. 1994). The second
paragraph of 35 U.S.C. § 112, requires that a patent’s claims, viewed in light
of the specification and prosecution history, inform those skilled in the art
about the scope of the invention with reasonable certainty. See Nautilus,
Inc. v. Biosig, Insts., Inc., 134 S. Ct. 2120, 2129–30 (2014). Indefiniteness
is to be evaluated from the perspective of a person with ordinary skill in the
relevant art at the time of the invention—when the patent application was
filed. Id. at 2128. As correctly pointed out by Appellants, claim 8 recites “a
second sensor signal from the sensor” (emphasis added) and, in the context
of claim 8, this sensor can only refer to the “sensor” of the device recited in
claim 1. Moreover, while the Examiner is correct to identify that there are
two devices: a device of claim 1, and a second device of claim 8, there is no
basis to infer that the second sensor must be included in the second device.
We note Appellants’ claims 8–11 could have been amended to
provide proper antecedent basis for several terms at dispute. Nevertheless,
we are persuaded by Appellants’ arguments that when the disputed
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limitations of Appellants’ claims 8–11 are read in light of Appellants’
Specification, a skilled artisan would understand their scope and meaning
with reasonable certainty. Accordingly, we do not sustain the Examiner’s
§ 112, second paragraph, rejection of claim 8 and its dependent claims 9–11.

§ 103(a) Rejection of Claims 1–2, 5–7 and 12
based on Marvit and Rosenberg

With respect to independent claims 1 and 12, the Examiner finds
Marvit teaches Appellants’ device including all limitations, except for the
“graphical user interface comprising a virtual physical space comprising one
or more virtual physical objects each comprising an associated virtual
weight.” Final Act. 4–5 (citing Marvit 3:9–35, 4:42–47, 7:4–30, 13:28–67,
14:20–34; Figs. 1, 4, 8, 10a, 12b). The Examiner relies on Rosenberg as
teaching the missing feature to support the conclusion of obviousness. Id. at
5 (citing Rosenberg ¶ 59).
Appellants do not dispute the Examiner’s rationale for making the
combination. Rather, Appellants argue Rosenberg does not teach or suggest
“one or more virtual physical objects each comprising an associated virtual
weight.” App. Br. 27–29. According to Appellants, “Rosenberg [only]
discloses outputting a haptic effect configured to simulate the feeling of
weight when an object is carried, e.g., when the user is interacting with the
object using a manipulandum such as a mouse or joystick.” Id. at 27–28. In
other words, the haptic effect disclosed by Rosenberg “is used to simulate
that the object has mass” and such a “virtual mass” is different from
Appellants’ claimed “virtual weight.” Id. at 28.
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Appellants also argue that Appellants’ claimed “virtual weight”
(emphasis added) must be interpreted narrowly based on “[the object’s]
interactions with other objects or the user interface.” Id.
We do not find Appellants’ arguments persuasive. Rather, we find the
Examiner has provided a comprehensive response to Appellants’ arguments
supported by a preponderance of evidence. Ans. 17–18. As such, we adopt
the Examiner’s findings and explanations provided therein. Id.
For additional emphasis, we note that claim terms are given their
broadest reasonable interpretation consistent with the specification. In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). “[A]
claim construction analysis must begin and remain centered on the claim
language itself . . . .” Innova/Pure Water, Inc. v. Safari Water Filtration
Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). Appellants’ claims 1 and
12 simply recite “one or more virtual physical objects each comprising an
associated virtual weight” and do not specify how the weight is being
utilized.
The Examiner relies on Rosenberg as teaching the virtual weights that
attach to objects, i.e., simulated mass of weight on virtual objects. Final Act.
5 (citing Rosenberg ¶ 59). The Examiner also refers to Appellants’
Specification to support the interpretation of virtual weight to include a
simulated weight. Ans. 19. However, Appellants provide no evidence or
claim language to support their proposed narrow interpretation.
For the reasons set forth above, Appellants have not persuaded us of
the Examiner’s error. Accordingly, we sustain the Examiner’s rejection of
claims 1–2, 5–7, and 12.

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§ 103(a) Rejection of Claims 8–11 and 14–17
based on Marvit, Rosenberg, and Wolinsky

With respect to claim 8, the Examiner further relies on Wolinsky as
allegedly teaching all limitations of claim 8. Final Act. 8.
Appellants reiterate the same arguments presented against claim 1.
App. Br. 30. However, instead of disputing whether Wolinsky teaches the
limitations of claim 8, Appellants argue that Wolinsky does not teach the
limitations of claim 1. Id. For example, Appellants argue Wolinsky does not
disclose: (1) “a display disposed in the housing, the display configured to
display a graphical user interface comprising a virtual physical space
comprising one or more virtual physical objects each comprising an
associated virtual weight” as recited in claim 1; and (2) “the virtual physical
space based in part on the function” as recited in claim 1. Id.
We disagree with Appellants. Wolinsky is not relied upon as teaching
the features of claim 1. In the absence of Appellants’ arguments against the
use of Wolinsky relative to the limitations of claim 8, Appellants have not
persuaded us of Examiner error. Accordingly, we sustain the Examiner’s
rejection of claim 8 and its dependent claims 9–11 and 14–17, which
Appellants do not argue separately.

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§ 103(a) Rejection of Claims 18–20 based on Ording and Shahoian
Claims 18–20 are independent and recite various distinct
embodiments3 of a user interface shown in Appellants’ Figures 6, 7, and 8,
including, for example, (1) a wheel for navigating a circular user interface,
shown in Figure 6 (see claim 18); (2) a list with a simulated depth for
navigating a linear user interface, shown in Figure 7 (see claim 19); and (3) a
drawing pad for navigating using finger gestures, shown in Figure 8 (see
claim 20).
With respect to claim 18, the Examiner further relies on Ording as
teaching “a graphical user interface comprising a wheel having a plurality of
functions arranged on the wheel.” Final Act. 10 (citing Ording ¶¶ 28, 37;
Fig. 3).
Appellants acknowledge Ording teaches a GUI with a wheel interface.
App. Br. 31. However, Appellants take the position that the wheel of
Ording teaches a single parameter such as “volume control” as opposed to a
plurality of functions as recited in Appellants’ claim 18. Id.
We disagree with Appellants. As correctly recognized by the
Examiner, Ording describes “[t]his embodiment is useful for controlling one
or more parameters in an application, such as volume control . . .”
(emphasis added). Ans. 19 (citing Ording ¶ 36). In addition, Appellants’
Figure 4, step 408 which describes “Adjusting Parameter(s) Based on
Motion,” support the Examiners position that the wheel of Ording teaches

3 Given the distinct and independent nature of the embodiments shown in
Figures 6–8, a Restriction Requirement may have been appropriate for
claims 18, 19, and 20; however, no such Restriction Requirement is on the
record.
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adjusting a plurality of parameters as opposed to a single parameter, as
Appellants argue. App. Br. 31–32.
For the reasons set forth above, Appellants have not persuaded us of
Examiner error. Accordingly, we sustain the Examiner’s obviousness
rejection of claim 18.
With respect to claim 19, the Examiner also relies on Ording as
teaching “display[ing] a graphical user interface comprising a list extending
in a simulated depth dimension.” Final Act. 12 (citing Ording ¶¶ 30, 62).
According to the Examiner, the list and dimensions, including “[a] contact
list” and “dimensions of the graphical object[s]” are disclosed in paragraphs
30 and 62 of Ording.
Appellants dispute the Examiner’s factual findings regarding Ording.
In particular, Appellants argue the cited paragraphs of Ording do not teach
or suggest any “display a graphical user interface comprising a list extending
in a simulated depth dimension” as recited in claim 19. App. Br. 32.
We agree with Appellants. While the cited paragraphs of Ording
include the words list and dimensions, the citations appear in separate
paragraphs. The two paragraphs are un-related with several intervening
paragraphs therebetween and, as such, do not support the Examiner’s
position. Accordingly, we cannot sustain the Examiner’s rejection of claim
19.
With respect to claim 20, the Examiner also relies on Ording as
teaching “display[ing] a graphical user interface . . . comprising a drawing
pad.” Final Act. 14 (citing Ording ¶¶ 62, 68). According to the Examiner, a
hardware touch sensitive display also includes a graphical drawing pad. Id.
at 14 (citing Ording ¶ 68).
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Appellants argue Ording merely suggests drawing functions but does
not actually teach a graphical “drawing pad.” App. Br. 32–33. We agree
with Appellants. The cited paragraph of Ording only describes that a
“touch-sensitive display may be analogous to the multi-touch sensitive
tablets” but does not teach a drawing pad or suggest “through the disclosure
of applications requiring the usage of a writing surface, blank space for text,
alphanumeric, or sketching” as found by the Examiner. Advisory Act. 2.
“[O]bviousness requires a suggestion of all limitations in a claim.”
CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
(citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). In the absence of a
teaching or suggestion of all limitations of claim 20, we do not sustain the
Examiner’s obviousness rejection of claim 20.

CONCLUSION
On the record before us, we conclude that the Examiner has not erred
in rejecting claims 1–2, 5–11, 12, and 14–18 under 35 U.S.C. § 103(a).
However, we also conclude that the Examiner’s rejections of (1) claims 8–
11 under 35 U.S.C. § 112, second paragraph, and (2) claims 19 and 20 under
35 U.S.C. § 103(a) should be reversed.

DECISION
As such, we AFFIRM the Examiner’s final rejection of claims 1–2, 5–
11, 12, and 14–18 under 35 U.S.C. § 103(a) and REVERSE the Examiner’s
final rejection of claims 8–11 under 35 U.S.C. § 112, and the Examiner’s
rejection of claims 19 and 20 under 35 U.S.C. § 103(a).
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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-IN-PART