Ex Parte Cruz-Hernandez

Patent Trial and Appeal Board

Jun 20, 2016

12947532 (P.T.A.B. Jun. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/947,532 11/16/2010
34300 7590 06/22/2016
Kilpatrick Townsend and Stockton, LLP
1001 W Fourth Street
Winston-Salem, NC 27101
FIRST NAMED INVENTOR
Juan Manuel Cruz-Hernandez
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.
IMM332 (518511395420) 2109
EXAMINER
PATEL, SANJIV D
ART UNIT PAPER NUMBER
2697
NOTIFICATION DATE DELIVERY MODE
06/22/2016 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):
deej ones@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUAN MANUEL CRUZ-HERNANDEZ
Appeal2015-002189
Application 12/947,532
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-002189
Application 12/947,532
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 2, 4, and 6-26. Appellant has previously canceled claims 3
and 5. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
A. THE INVENTION
According to Appellant, the claimed invention relates to a rotary
device for haptic feedback. Spec. i-f 2.
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A haptic device comprising:
a passive actuator comprising:
a rotatable plate;
a fixed plate configured to apply friction to the
rotatable plate;
a piezoelectric material mounted between the fixed
plate and the rotatable plate, the piezoelectric material
configured to receive a first haptic signal and vibrate,
wherein the vibration is configured to reduce the friction
applied to the rotatable plate; and
a rotatable object configured to be connected to the
rotatable plate.
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Application 12/947,532
C. REJECTIONS
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal:
Morimoto
Culp
us 5, 198, 732
us 5,939,816
Shahoian et al. US 2004/0178989 Al
Kobayashi ' 162 US 2 004/023 3162 A 1
Kobayashi '929 US 7,214,929 B2
Colgate US 2007 /0236450 Al
Mar. 30, 1993
Aug. 17, 1999
Sept. 16, 2004
Nov. 25, 2004
May 8, 2007
Oct. 11, 2007
Claims 1, 4, 6-9, 11-13, and 15-25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kobayashi '162 and
Culp.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kobayashi '162, Culp and Morimoto.
Claims 10 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kobayashi '162, Culp, and Shahoian.
Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kobayashi '929, Culp and Colgate.
II. ISSUE
The principal issue before us is whether the Examiner erred in finding
the combination of Kobayashi '162 and Culp teaches or would have
suggested "a piezoelectric material mounted between the fixed plate and the
rotatable plate, the piezoelectric material configured to receive a first haptic
signal and vibrate, wherein the vibration is configured to reduce the friction
applied to the rotatable plate" (claim 1, emphasis added).
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Appeal2015-002189
Application 12/947,532
III. FfNDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Kobayashi '162
1. The code disk 4 is layered on a transparent body 7, where the
transparent body 7 includes a piezoelectric element. External force is
applied to the code disk 4 from the transparent body 7. (i-f 29, Figs 1, 2).
The external force applier is a transparent body including a piezoelectric
element and a transparent electrode. (i-f l 0).
2. The piezoelectric element's vibration increases or decreases the
friction between the code disk 4 and the transparent body 7. (i-f 32,
Figs 1, 2).
Culp
3. Culp teaches a piezoelectric actuators 32 are affixed to the external
surfaces 7 4 where the piezoelectric actuators act on friction support
surface 78. (Fig. 14, col. 9, 11. 24--36, col. 10, 11. 41--45).
IV. ANALYSIS
Appellant contends "Culp teaches away from the claimed invention."
(App. Br. 9). In particular, Appellant contends "Culp teaches away from
using vibration to change friction." (App. Br. 10).
According to Appellant,
... one would not be motivated to combine the system of Culp,
for which vibration is an interference, with the system disclosed
by Kobayashi, which uses vibration to vary friction. The
vibrations of Kobayashi would "render the prior art invention
[disclosed by Culp] unsatisfactory for its intended purpose"
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Appeal2015-002189
Application 12/947,532
because the vibrations output by the device described by
Kobayashi would be counterproductive to Culp's system for
using shear forces to move an object. ... [T]he proposed
modification would improperly modify the principle of operation
of Culp.
(App. Br. 10).
We consider all of Appellant's arguments and evidence presented, and
disagree with Appellant's arguments regarding the Examiner's rejections of
the claims. We adopt as our own: (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken, and (2) the
reasons and rebuttals set forth in the Examiner's Answer in response to
Appellant's arguments. However, we highlight and address specific findings
and arguments below.
We agree with the Examiner's finding that Kobayashi '162 teaches
and suggests a piezoelectric element included in the transparent body 7,
layered on a code disk 4. (Ans. 2-3, FF 1). We also agree with the
Examiner's finding Kobayashi' 162 teaches and suggests a fixed plate
(transparent body 7) configured to apply friction to the rotatable plate (code
disk 4 ). (Final Act. 2, FF 3 ). In Kobayashi '162, the piezoelectric element's
vibration increases/ decreases the friction between the code disk 4 and the
transparent body 7 (FF 2). Thus, we find no error with the Examiner's
finding (uncontested by Appellant) that Kobayashi '162 teaches or suggests
a piezoelectric material "configured to receive a first haptic signal and
vibrate, wherein the vibration is configured to reduce the friction applied to
the rotatable plate" as recited in claim 1.
Although the Examiner finds Kobayashi '162 does not explicitly
disclose that the piezoelectric element is mounted "between" the transparent
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Appeal2015-002189
Application 12/947,532
body 7 (fixed plate) and the code disk 4 (rotatable plate), we agree with the
Examiner that Kobayashi's piezoelectric element is on one of two possible
locations with respect to the transparent body 7, wherein it would have been
"obvious to try" and position the piezoelectric element on the transparent
body 7 such that is situated in between the transparent body 7 and code
disk 4. (Ans. 3). Thus, we find no error with the Examiner's reliance on
Culp's well-known teaching of placing a piezoelectric actuator between
fixed and rotatable plates (Ans. 3--4; Final Act. 3--4; FF 3).
The Supreme Court has determined the conclusion of obviousness can
be based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art. KSR Intl Co. v. Telejlex Inc., 550 U.S. 398, 418 (2007). \Ne agree
that it would have been obvious to try to place Kobayashi's piezoelectric
element in between the transparent body 7 and code disk 4; because there are
only two possible locations for the piezoelectric element. (Id. at 421) (if
there are a finite number of identified, predictable solutions to solve a
problern, a person of ordinary skill in the art has good reason to pursue the
known options within his or her technical grasp). 1
1 Where "the problem is known, the possible approaches to solving the
problem are known and finite, and the solution is predictable through use of
a known option," a solution that is obvious to try may indeed be obvious.
Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008), citing
KSR, 550 U.S. at 421. See also Ortho-McNeil Pharm., Inc. v. Mylan Labs.,
Inc., 520 F.3d 1358, 1364 (stating the number of options must be "small or
easily traversed").
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Appeal2015-002189
Application 12/947,532
Appellant has presented no persuasive evidence that placing a
piezoelectric element in between Kobayashi's transparent body 7 and code
disk 4 as suggested by Culp is "uniquely challenging or difficult for one of
ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Instead, we
find the ski11ed artisan would have found it obvious to apply the known
teaching of placing the piezoelectric element between the fixed and rotatable
plates, since the skilled artisan is "a person of ordinary creativity, not an
automaton." KSR, 550 U.S. at 421. Thus, we not persuaded that modifying
Kobayashi's device to place the piezoelectric element as suggested by Culp
yielded more than expected results.
We also find that Kobayashi '162 and Culp are directed to the same
field of endeavor of piezoelectric activators and that neither criticize nor
discredit or otherwise discourage the placing of a piezoelectric activator in
between a fixed and rotatable plate. Irz re Fulton; 391F.3d1195; 1201 (Fed.
Cir. 2004) (explaining that "[t]he prior art's mere disclosure of more than
one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed").
We are also not persuaded by Appellant's argument that Culp is
improperly modified (App. Br. 10), because the Examiner modifies the
primary reference Kobayashi '162, not Culp, by specifically placing the
piezoelectric material of Kobayashi between Kobayashi's fixed and rotatable
plates. (Ans. 4).
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Application 12/947,532
Accordingly, we find Appellant has not shown the Examiner erred in
finding Kobayashi '162, as modified (as suggested by Culp), would at least
have suggested the contested limitations to render claim 1 obvious.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's rejection of claim 1 over Kobayashi
'162 and Culp.
As Appellant has not provided substantive separate arguments with
respect to independent claims 19 and 26, or dependent claims 2, 4, 6-18, 20-
25, we similarly sustain the Examiner's rejection of these claims under 35
U.S.C. § 103(a).
V CONCLUSION AND DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4, and 6-26.
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 )(iv).
AFFIRMED
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