Ex Parte Endo et al

Patent Trial and Appeal Board

Oct 31, 2013

10864108 (P.T.A.B. Oct. 31, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/864,108 06/09/2004 Shoichi Endo IMM157 (51851/297096) 6808
34300 7590 11/01/2013
PATENT DEPARTMENT (51851)
KILPATRICK TOWNSEND & STOCKTON LLP
1001 WEST FOURTH STREET
WINSTON-SALEM, NC 27101
EXAMINER
LIM, SENG HENG
ART UNIT PAPER NUMBER
3717
MAIL DATE DELIVERY MODE
11/01/2013 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 SHOICHI ENDO and ALEXANDER JASSO
____________

Appeal 2011-011251
Application 10/864,108
Technology Center 3700
____________

Before LYNNE H. BROWNE, ANNETTE R. REIMERS and
CARL M. DeFRANCO, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011251
Application 10/864,108

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STATEMENT OF THE CASE
Shoichi Endo and Alexander Jasso (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C.
§ 103(a): (1) claims 1-13, 16-21, 23, 24, 26-34, 36-40 and 42-48 as
unpatentable over Woolston (US 6,162,123; iss. Dec. 19, 2000) and
Shahoian (US 6,693,622 B1; iss. Feb. 17, 2004); and (2) claims 14, 15, 25
and 41 as unpatentable over Woolston, Shahoian and DeMenthon (US
5,388,059; iss. Feb. 7, 1995). Claims 22, 35 and 49-53 have been canceled.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants’ invention “relate[s] to interactive gaming systems with
haptic feedback.” Spec.1, para. [0002]; fig. 2. Claims 1, 23 and 36 are
independent.
Claim 1 is illustrative of the claimed invention and is reproduced
below:
1. An apparatus, comprising:
a portable manipulandum configured to simulate
an element associated with a physical activity;
an actuator disposed in the portable
manipulandum, wherein the actuator comprises one of a
pager motor, an eccentric mass actuator, a harmonic
eccentric mass actuator, an inertial mass harmonic
actuator, a voice coil, a moving magnet actuator, a
piezoelectric actuator, or an electro-active polymer
actuator;
a sensor in communication with the portable
manipulandum and configured to detect a movement of
the portable manipulandum; and
a processor in communication with the sensor and
the actuator, the processor configured to receive a sensor
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Application 10/864,108

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signal from the sensor associated with the movement of
the portable manipulandum and to output a control signal
to the actuator based at least in part on the sensor signal,
the control signal configured to cause the actuator to
output a haptic feedback associated with the movement
of the portable manipulandum, the haptic feedback
comprising a vibrotactile effect.

ANALYSIS
Obviousness over Woolston and Shahoian - Claims 1-13, 16-21, 23, 24,
26-34, 36-40 and 42-48
Appellants do not present separate arguments for independent claims
1, 23 and 36. Br. 8-9. Appellants do not present additional arguments for
dependent claims 2-13, 16-21, 24, 26-34, 37-40 and 42-48 separate from
those directed against the rejection of independent claims 1, 23 and 36. Id.
at 9. Accordingly, Appellants have argued claims 1-13, 16-21, 23, 24, 26-
34, 36-40 and 42-48 as a group for purposes of the rejection of those claims
under § 103(a). Claim 1 is representative of the group and is selected for
review, with claims 2-13, 16-21, 23, 24, 26-34, 36-40 and 42-48 standing or
falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2011).
Independent claim 1 recites “the control signal configured to cause the
actuator to output a haptic feedback associated with the movement of the
portable manipulandum, the haptic feedback comprising a vibrotactile
effect.” Br., Claims Appendix. The Examiner finds that “[a]lthough
Woolston discloses the actuator comprising a gyroscope to output a ‘topple’
haptic or force feedback, it is known in the art that gyroscopes can also be
used to create reaction torques which are felt by the user as vibrations (i.e.
vibrotactile effect) as evidenced by Shahoian.” Ans. 4 (citing Shahoian, col.
19, ll. 20-30). The Examiner further finds that “although Woolston focused
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on providing a toppling effect as the haptic feedback, it does not mean all
other types of haptic feedbacks [cannot] be used. When a sword is [struck]
against another object, it can alternatively cause the sword to vibrate.” Final
Rej. 2. The Examiner concludes that “providing a vibrotactile effect as
taught by Shahoian to Woolston’s sword would be obvious in order to make
the haptic [touch] feedback feel more realistic.” Id.
Appellants contend that “[t]he types of forces disclosed in Woolston
are very different from the types of forces that may be output by the
actuators disclosed in Shahoian, and thus, simple substitution of Shahoian's
actuators would render the Woolston device unsuitable for its intended
purpose of outputting torsional ‘toppling forces.’” Br. 7. According to
Appellants, one of skill in the art reading Woolston in view of Shahoian
would not attempt to generate vibrotactile effects
in the Woolston device, because the Woolston
device is intended to output torsional forces on the
user and Woolston does not suggest that other
types of forces would be desirable. Further,
Shahoian’s actuators are not disclosed to output
the torsional forces in Woolston, and thus there is
no need to include such unsuitable actuators. As
such, even though both applications are related to
haptics, one of skill in the art would not combine
Woolston with Shahoian because the effects and
actuators of Shahoian are unsuitable for the
Woolston device.

Id. at 8. Appellants’ arguments are not persuasive. First, we fail to see, and
Appellants have failed to explain, how the Examiner’s proposed
modification to Woolston’s sword to include the vibrotactile effect as taught
by Shahoian would render Woolston unsatisfactory for its intended purpose
of outputting torsional “toppling forces.” Further, Appellants’ arguments do
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not address the Examiner’s proposed combination of Woolston and
Shahoian. Ans. 4-5, 10; Final Rej. 2. The Examiner is not proposing to
substitute Shahoian’s actuators for Woolston’s actuators, as Appellants
contend. Rather, the Examiner is proposing to modify Woolston’s actuator
to include the vibrotactile effects disclosed in Shahoian. In other words, the
Examiner is proposing to modify Woolston’s sword by incorporating
vibrations, as taught by Shahoian, “in order to make the haptic [touch]
feedback feel more realistic.” Final Rej. 2. Appellants acknowledge that
both Woolston and Shahoian disclose haptic (touch) feedback devices. Br.
8. Woolston discloses that (1) “[t]he new player interface apparatus may be
a hand held apparatus that may use sensors to determine the position of the
apparatus and the gyrostatic effect to provide tactile [touch] feedback to the
user” (Woolston, col 2, ll. 38-41); and (2) “[c]ontained within the sword
housing is a gyrostatic propulsion device from which the gyrostatic toppling
effect is utilized to create a torque and/or the feel of sword blows on the
sword handle and, thus, on the player holding the sword apparatus
(Woolston, col. 2, ll. 50-54) (emphasis added); see also Ans. 4. Woolston
further discloses that
[b]y applying the appropriate voltage to the high
torque motors, the propulsion gyrostat may be
“toppled” in such a way as to create a calibrated
torque on the whole sword apparatus, e.g., the
sword housing. This calibrated torque may be used
to simulate, inter alia, a sword blow as felt at a
sword’s handle. Through the interaction of
successive sword blows, e.g., torque provided by
the propulsion gyrostat to provide the “feel” of
sword blows, and interactions with virtual
swordsman opponents, the present invention
provides a novel and exciting interactive sword
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game that physically involves the player
interactivity with the game.

Woolston, col. 2, l. 64 - col. 3, l. 8 (emphasis added); see also Ans. 4.
Similarly, Shahoian discloses that (1) “[t]he present invention relates
generally to producing forces in haptic [touch] feedback interface devices
and more particularly to the output and control of vibrations and similar
force sensations from actuators in a haptic [touch] feedback interface
device” (Shahoian, col. 1, ll. 23-27); and (2) “[i]n another embodiment, a
gyroscope can be provided in a housing. Disturbing the gyroscope generates
forces . . . Small actuators can be used to disturb the frame and create
reaction torques which are felt by the user as vibrations” (Shahoian, col. 19,
ll. 21-27) (emphasis added); see also Ans. 4.
Because Woolston and Shahoian disclose similar haptic (touch)
feedback devices including gyroscopes that generate torsional forces
(torque) felt by the user, we agree with the Examiner that it would have been
obvious to modify Woolston’s sword to include a vibrotactile effect
(vibration), as taught by Shahoian, “in order to make the haptic [touch]
feedback feel more realistic.” Final Rej. 2. In other words, in the modified
Woolston sword, the sword blow would include a vibrotactile effect
(vibration) “felt” by the user at the sword’s handle, which would make the
haptic (touch) feedback feel more realistic. This is merely the application of
an improvement (i.e., vibration) known from the teachings of Shahoian to
the similar haptic feedback device disclosed by Woolston. Appellants have
not provided any evidence or argument sufficient to show that such an
improvement would have been beyond the level of ordinary skill in the art.
Neither have Appellants provided any persuasive evidence or argument
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sufficient to show that the proposed improvement would have been more
than a predictable use of the prior art elements according to their established
functions.
Appellants’ assertions that “Woolston does not disclose that any of the
forces disclosed in Shahoian would be desirable in the Woolston apparatus,
nor does Shahoian disclose a toppling effect produced by other types of
actuators that might be incorporated into the Woolston device” (Br. 8) are
not persuasive for two reasons. First, Appellants’ arguments are individual
attacks on the references rather than a challenge to the Examiner’s
combination of the teachings of the two references. See In re Merck & Co.,
Inc., 800 F.2d 1091 (Fed. Cir. 1986); In re Keller, 642 F.2d 413 (CCPA
1981) (one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references).
Second, to the extent Appellants are arguing the references must be capable
of bodily incorporation in order to combine their teachings, the test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of a primary reference. In re Keller,
642 F.2d 413, 425 (CCPA 1981). “Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” Id. (citations omitted).
Accordingly, for the foregoing reasons, the rejection of claim 1 and
claims 2-13, 16-21, 23, 24, 26-34, 36-40 and 42-48, which fall with claim 1,
as unpatentable over Woolston and Shahoian is sustained.
Obviousness over Woolston, Shahoian and DeMenthon - Claims 14, 15, 25
and 41
Appellants contend that
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Claims 14, 15, 25, and 41 depend from one of
independent claims 1, 23, or 36. For the reasons
given above, claims 1, 23, and 36 are each
patentable over Woolston in view of Shahoian.
DeMenthon does not cure this deficiency.
DeMenthon discloses a sensor comprising a video
camera, but does not add any disclosure relevant to
the arguments presented above.

Br. 9. As discussed above, we are not persuaded by these arguments.
Accordingly, we also sustain the Examiner’s rejection of claims 14, 15, 25,
and 41 as unpatentable over Woolston, Shahoian and DeMenthon.

DECISION
We AFFIRM the decision of the Examiner to reject claims 1-21,
23-34 and 36-48.
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

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