Ex Parte Cruz-Hernandez et al

Patent Trial and Appeal Board

Feb 12, 2014

10926644 (P.T.A.B. Feb. 12, 2014)

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.
10/926,644 08/26/2004 Juan Manuel Cruz-Hernandez IMM201 9498
34300 7590 02/13/2014
PATENT DEPARTMENT (51851)
KILPATRICK TOWNSEND & STOCKTON LLP
1001 WEST FOURTH STREET
WINSTON-SALEM, NC 27101
EXAMINER
ZHOU, HONG
ART UNIT PAPER NUMBER
2623
MAIL DATE DELIVERY MODE
02/13/2014 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 JUAN MANUEL CRUZ-HERNANDEZ and
MICHAEL D. LEVIN
____________________

Appeal 2011-008695
Application 10/926,644
Technology Center 2600
____________________

Before ALLEN R. MACDONALD, CARLA M. KRIVAK, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008695
Application 10/926,644

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-30. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse the Examiner’s rejection of these claims and a enter new
ground of rejection.

THE INVENTION
The claims are directed providing haptic feedback in a user interface.
Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An apparatus comprising:
a manipulandum;
a resistive actuator configured to output a force to resist
movement of the manipulandum; and
a biasing element having a first end and a second end, the
biasing element disposed between the manipulandum and the
resistive actuator, wherein either:
the first end is coupled to the manipulandum and
the second end is releasably coupled to the housing or the
resistive actuator, or the first end is coupled to the resistive
actuator, and the second end is releasably coupled to the
housing or the manipulandum, and
wherein the biasing element is configured to be
releasably coupled based on receiving a first signal and to
output a biasing force substantially simultaneously with the
force output by the resistive actuator.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Martin
Levin
US 6,104,382
US 6,154,201
Aug. 15, 2000
Nov. 28, 2000
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Parmater US 2003/0176263 A1 Sep. 18, 2003

REJECTION
The Examiner rejected claims 1-30 under 35 U.S.C. § 103(a) as being
unpatentable over Levin, Parmater, and Martin. Ans. 3-12.

APPELLANTS’ CONTENTION1
Levin and Parmater are from non-analogous arts such that one of skill
in the art would not look to the releasable springs in adjustable resistance
home exercise equipment of Parmater for potential enhancements to
haptically-enabled control knobs of Levin. App. Br. 8-9.

ISSUE ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 8-9)
the issue presented on appeal is whether the Examiner erred in combining
the teachings of Levin and Parmater in rejecting claims 1, 10, and 19.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred in rejecting the claims under 35
U.S.C. § 103(a) over Levin, Parmater, and Martin. We agree with
Appellants’ conclusions that Parmater is non-analogous art (App. Br. 8-9.)
Appellants’ invention is directed toward providing haptic feedback in
a user interface. Abstract. For example, movement of a manipulandum, such

1 We note Appellants present an additional contention of error (App. Br. 6-8)
but we do not reach it as our resolution of this contention is dispositive of
the appealed rejections under 35 U.S.C. § 103(a).
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Application 10/926,644

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as a button, control knob, or slider, is moderated by (i) a resistive actuator
which resists movement of the manipulandum (e.g., rotation of a control
knob), and (ii) a releasable biasing element, such as a spring, which applies a
biasing force to the manipulandum (e.g., control knob.) App. Br. 2-3. Levin
is directed to knob control devices including providing force feedback and
additional input functionality. Levin col. 1, ll. 19-21. Parmater, however, is
directed to a home exercise device with a head portion including a torsion
spring which can be engaged or disengaged from the frame to allow the user
to provide spring tension to resist movement of the head portion. Parmater
Abstract.
Finding that Levin fails to disclose a releasable coupling between
spring member 64 and actuator 70 of control knob 18, the Examiner relies
on Parmater’s releasable coupling between spring member 58 and frame 54
of exercise device 10 for teaching or suggesting a biasing element
configured to be releasably coupled as recited by claim 1. Ans. 5. The
Examiner finds
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to combine the apparatus of
Levin with the teachings of Parmater to releasably coupling[sic]
the spring member 64 to the actuator for allowing the spring to
provide spring tension to resist movement of the knob.
Id.
Appellants contend “there is nothing in Palmater[sic] that indicates
that the incorporation of releasable springs would have any value in the
Levin device because the purpose of the Levin device, providing tactile
feedback, is wholly unrelated to that of Palmater[sic], providing resistance-
based exercise.” App. Br. 9. Appellants argue “there is no relation between
the subject matter of Levin and Palmater[sic], and one of skill in the art
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would not look to adjustable resistance home exercise equipment for
potential enhancements to haptically-enabled control knobs.” Id. The
Examiner responds that the “Parmater reference is cited to teach that a
biasing element can be coupled to or decoupled from an element as required
by the claimed invention.” Ans. 15. We find the reasoning provided by the
Examiner inadequate to support the modification of Levin according to
Parmater.
To be considered in an obviousness analysis the art must be analogous
“prior art” which means the prior art must be in either the same field of
Appellants’ endeavor or reasonably pertinent to Appellants’ problem. In re
Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Whether a prior art reference is
“analogous” is a question of fact. Id. at 658. The Examiner has not explained
why one of ordinary skill in the art would have considered Parmater’s
exercise device providing adjustable head resistance as being in the same
field of endeavor as Appellants’ apparatus. Instead we find that one of
ordinary skill in the art would not have considered Parmater’s exercise
equipment to be in the same field of endeavor as Appellants’ user interface
including haptic feedback. The Examiner has also not explained why
Parmater’s disclosure of a releasable coupling between spring member 58
and frame 54 of exercise device 10 would have been reasonably pertinent to
Appellants’ problem. Appellants disclose that their invention seeks to
provide haptic feedback in a user interface device (Spec. ¶ 5.) The Examiner
has not articulated or explained why Parmater’s arrangement for allowing a
user to provide spring tension to resist movement of the head portion of an
exercise device would have logically commended itself to the attention of
one seeking to make a user interface device with haptic feedback of the type
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to which Appellants and Levin were directed. Accordingly, we find
Parmater’s exercise device including adjustable head resistance is not
reasonably pertinent to Appellants’ problem.
On these bases, we find Parmater is non-analogous art and thus fails
to pass the threshold issue of availability as prior art in the obviousness
analysis. Because the Examiner solely relies on Parmater to teach the
releasable coupling feature of the claims, we find that all the claim features
are not present and the Examiner has not presented a prima facie case of
obviousness.
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments. It
follows that Appellants have shown the Examiner erred in finding the
combined teachings of Levin, Parmater, and Martin render independent
claim 1, and for the same reasons, independent claims 10 and 19 together
with dependent claims 2-9, 11-18, and 20-30, unpatentable. Therefore we do
not sustain the rejection of claims 1-30 under 35 U.S.C. § 103(a) as being
unpatentable over Levin, Parmater, and Martin.

NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 19-28 are rejected under 35 U.S.C. § 101 as
being directed toward non-statutory subject matter.
Claims 19-28 recite a computer readable medium. Appellants’
Specification describes that “computer-readable medium may include an
electronic, optical, magnetic, or other storage transmission device capable of
providing a processor, such as the processor in a web server, with computer-
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readable instructions. . . . including a router, private or public network, or
other transmission device or channel.” Spec. ¶ 53 (emphasis added). A
channel “can consist of some electromagnetic transmission on one of more
frequencies within a bandwidth in the electrometric spectrum, as in radio
and television, or in optical, microwave, or voice-grade communication.”
MICROSOFT COMPUTER DICTIONARY Microsoft Press 5th ed., p. 94
(2002).Therefore we find Appellants’ invention encompasses transitory
propagating signals, which are unpatentable under 35 U.S.C. § 101. See In re
Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007) (transitory embodiments are
not directed to statutory subject matter); Interim Examination Instructions
for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, p. 2 (Aug.
24, 2009), available at
http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-25_interim_101_
instructions.pdf. See also David J. Kappos, Subject Matter Eligibility of
Computer Readable Media, 1351 OFF. GAZ. PAT. OFFICE 212 (Feb. 23,
2010).2

CONCLUSION
The Examiner erred in rejecting claims 1-30 under 35 U.S.C. § 103(a)
as being unpatentable over Levin, Parmater, and Martin.
A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b)
and claims 19-28 are rejected under 35 U.S.C. § 101 as being directed
toward non-statutory subject matter.

2 A claim drawn to such a computer readable medium that covers both
transitory and non-transitory embodiments may be amended to narrow the
claim to cover only statutory embodiments to avoid a rejection under 35
U.S.C. § 101 by adding the limitation “non-transitory” to the claim.
Appeal 2011-008695
Application 10/926,644

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DECISION
The decision of the Examiner rejecting claims 1-30 is reversed. We
enter a new ground of rejection of claims 19-28.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50 (b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner ….
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ….
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).

REVERSED
37 CFR § 41.50(b)

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