Ex Parte Birnbaum et al

Patent Trial and Appeal Board

Jan 22, 2018

12502795 (P.T.A.B. Jan. 22, 2018)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/502,795 07/14/2009 David M. Birnbaum IMM314 (51851/366292) 6882
34300 7590 01/24/2018
Kilpatrick Townsend and Stockton/Immersion
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
TRAN, TUYETLIEN T
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
01/24/2018 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
kts_imm_docketing @ kilpatricktownsend. com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte DAVID M. BIRNBAUM, and CHRIS ULLRICH
Appeal 2017-009064
Application 12/502,795
Technology Center 2100
Before ALLEN R. MACDONALD, BETH Z. SHAW, and
NABEEL U. KHAN, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1—3, 5—11, 13—17, and 19-23, which
represent all the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
1 Throughout this Decision we have considered the Appeal Brief filed
January 26, 2016 (“App. Br.”), Reply Brief filed June 8, 2017 (“Reply Br.”),
the Examiner’s Answer mailed April 14, 2017 (“Ans.”), and the Final
Rejection mailed June 7, 2016 (“Final Act.”).
2 Appellants identify Immersion Corporation on as the real party in interest.
App. Br. 1.
Appeal 2017-009064
Application 12/502,795
INVENTION
Appellants’ invention is directed to a method for haptic message
transmission. Spec. 14.
Claim 1 is illustrative of the claims at issue and is reproduced below,
with the disputed limitation emphasized:
1. A method comprising:
receiving a sensor signal from a sensor configured to
sense a physical interaction with a messaging device;
determining a virtual force based at least in part on the
sensor signal;
applying the virtual force to a virtual message object
within a virtual message environment, the virtual force
configured to move the virtual message object toward a virtual
gateway, the virtual gateway and the virtual message object
each comprising graphical elements displayed to a user in the
virtual message environment;
determining a transmission characteristic of the virtual
message object based at least in part on the sensor signal,
wherein the transmission characteristic is associated with the
physical interaction that sent the virtual message object through
the virtual gateway;
determining a haptic effect based in part on the
transmission characteristic; and
transmitting the virtual message object and the
transmission characteristic of the virtual message object.
REJECTIONS
The Examiner rejected claims 1—3, 5—11, 13—17, and 19-21 under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Kotzin (US
2005/0219211 Al, published Oct. 6, 2005 ) and Hinckley (US
2005/0093868 Al, published May 5, 2005). Final Act. 2—7.
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Appeal 2017-009064
Application 12/502,795
The Examiner rejected claims 22 and 23 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Kotzin, Hinckley, and Son
(US 2005/0124412 Al, published June 9, 2005). Final Act. 7—8.
ANALYSIS
Appellants argue the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Kotzin
and Hinckley. In particular, Appellants argue Kotzin does not teach
“determining a haptic effect based in part on the transmission characteristic.”
App. Br. 18—20; Reply Br. 2-4. We agree with Appellants.
The Examiner finds Kotzin teaches “determining a haptic effect based
in part on the transmission characteristic,” as recited in claim 1. Final Act.
3; Ans. 5—6 (citing Kotzin, Fig. 1, || 16—23). The Examiner explains that
the term haptic effect is not defined “[and can be interpreted] to be any
effects including visual effect, sound effect, touch effect, tactile effect.”
Ans. 5—6. Under this interpretation, the Examiner finds Kotzin’s visual
effect of pouring water from a first device to filling water in a second device,
based on the tilting angle during data transferring, teaches the claimed
“haptic effect based in part on the transmission characteristic.” Ans. 6.
First, we agree with Appellants that the Examiner’s proposed
definition of “haptic effect” is overly broad because the proposed definition
includes not only any touch and tactile effects, but also any “visual” and
“sound” effects. Id. at 5—6. We agree with Appellants that under a broad
but reasonable interpretation, a “haptic effect” requires a touch based effect.
Reply Br. 3. This definition is consistent with the plain meaning of the
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Application 12/502,795
claim, the Specification, and dictionary definitions. Id. at 3—\\ Spec. Tflf 16,
63.
Under the more reasonable interpretation requiring a touch based
effect, we agree with Appellants that the first cited portions of Kotzin (i.e.,
16—20) do not teach a haptic effect. Reply Br. 5—6. Rather, these
portions of Kotzin describe an embodiment that does not provide a haptic
effect, but instead merely provides visual representations and data transfer.
Further, although paragraph 22 of Kotzin does disclose providing
haptic feedback, we agree with Appellants that Kotzin does not teach that
the haptic feedback is determined based in part on the transmission
characteristic. Kotzin does not explain how the haptic feedback is
determined, let alone that the haptic feedback is determined based in part on
a transmission characteristic, as recited by claim 1. The Examiner generally
alleges that “it would have been obvious to one of ordinary skill in the art, at
the time the invention was made, to have implemented a haptic effect
determination in addition to the pouring effect to be able to provide haptic
feedback to the user through the haptic means as explicitly suggested by
Kotzin.” Ans. 6. However, this statement does not provide sufficient
explanation or evidence why one ordinarily skilled in the art would have
made this modification to Kotzin. KSR v. Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418—19 (“[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does. This is so because
inventions in most, if not all, instances rely upon building blocks long since
uncovered, and claimed discoveries almost of necessity will be combinations
of what, in some sense, is already known.”).
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Application 12/502,795
Therefore, on this record, the Examiner has not shown sufficiently
how the combination of Kotzin and Hinckley teaches “determining a haptic
effect based in part on the transmission characteristic,” as recited in claim 1.
Thus, we are persuaded of error in the Examiner’s rejection of claim 1 under
35 U.S.C. § 103(a), and we do not sustain the § 103 rejection of claim 1.
For the same reasons, we do not sustain the § 103 rejection of claims 2, 3, 5—
11, 13—17, and 19—21. We also do not sustain the Examiner’s rejection of
claims 22 and 23 because the Examiner does not find that the additional
references cure the deficiencies discussed above.
DECISION
The decision of the Examiner to reject claims 1—3, 5—11, 13—17, and
19-23 is reversed.
REVERSED
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