Ex Parte Gettemy

Board of Patent Appeals and Interferences

Nov 28, 2007

10241157 (B.P.A.I. Nov. 28, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SHAWN R. GETTEMY
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Appeal 2007-1534
Application 10/241,157
Technology Center 2600
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Decided: November 28, 2007
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Before ANITA PELLMAN GROSS, HOWARD B. BLANKENSHIP, and
JOHN A. JEFFERY, Administrative Patent Judges.

GROSS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Gettemy (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's Final Rejection of claims 1 through 40, which are all of the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
Appellant's invention relates to a portable electronic device with a
pliable sensor on the housing for providing input from a user's hand to the
electronic device and for providing tactile feedback to the user's hand. (See,
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Application 10/241,157

for example, Spec., paragraphs [0023] and [0024].) Claim 1 is illustrative of
the claimed invention, and it reads as follows:
1. A portable electronic device, comprising:

a housing;

computing electronics supported by the housing; and

a pliable sensor supported by the housing, the pliable
sensor providing input from a hand of a user by applying
pressure to the pliable sensor and the pliable sensor providing
tactile feedback to the hand of a user.

The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Fishkin US 6,160,540 Dec. 12, 2000
Gitis US 6,324,918 B1 Dec. 04, 2001
Sandbach US 6,333,736 B1 Dec. 25, 2001
Smith US 2002/0158838 A1 Oct. 31, 2002
Magnussen US 6,529,122 B1 Mar. 04, 2003
Kornbluh US 6,586,859 B2 Jul. 01, 2003

Claims 1 through 40 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1 through 4, 11 through 17, 24 through 27, 29, 34, and 36
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Fishkin
in view of Magnussen.
Claims 5 through 7, 18 through 20, 28, 32, 33, 35, 39, and 40 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Fishkin in
view of Magnussen and Smith.
Claims 8, 21, 31, and 38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fishkin in view of Magnussen and Kornbluh.
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Claims 9 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fishkin in view of Magnussen and Gitis.
Claims 10, 23, 30, and 37 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fishkin in view of Magnussen and Sandbach.
We refer to the Examiner's Answer (mailed September 29, 2006) and
to Appellant's Brief (filed December 5, 2005) and Reply Brief (filed
March 24, 2006 and November 27, 2006) for the respective arguments.

SUMMARY OF DECISION
As a consequence of our review, we will reverse the written
description rejection of claims 1 through 40, but affirm the obviousness
rejections of claims 1 through 40.

OPINION
The Examiner asserts (Final Rejection 2) that "the pliable sensor
providing tactile feedback to the hand of a user," in each of independent
claims 1, 15, 25, and 34, "is not supported anywhere in [sic] specification or
the drawings and not described in the paragraph [0023] as stated by the
applicant's [sic]." The Examiner (Ans. 3) asserts that the first issue is
whether claims 1 through 40 are properly rejected under 35 U.S.C. § 112,
first paragraph. Appellant (Br. 9) contends that paragraph [0024] of the
Specification provides support for the above-noted claim language. The first
issue, therefore, is whether Appellant's Specification provides adequate
written description for "the pliable sensor providing tactile feedback to the
hand of a user."
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Application 10/241,157

Paragraph [0024] of the Specification states that the handheld
computer may be configured to sense the location of a user's hand when the
user grasps the device. The handheld computer also "may be configured to
automatically provide appropriate charges to electroactive polymeric sensor
230 to provide protuberances of deformed electroactive polymer at certain
areas on the electroactive polymer, for example below the fingertips of hand
240 in order to provide buttons or bumps." In other words, in response to
sensing the location of the user's hand on the handheld device, the
electroactive polymeric sensor (pliable sensor) forms protuberances to
provide buttons or bumps below the user's fingertips. The protuberances
constitute tactile feedback. Accordingly, paragraph [0024] provides written
description for the claim language at issue. Therefore, we cannot sustain the
written description rejection of claims 1, 15, 25, 34, and their dependents,
claims 2 through 14, 16 through 24, 26 through 33, and 35 through 40.
The Examiner, in rejecting claims 1 through 4, 11 through 17, 24
through 27, 29, 34, and 36, asserted (Final Rejection 3) that Fishkin fails to
disclose the pliable sensor providing tactile feedback, and, therefore, relied
upon Magnussen. The Examiner (Ans. 3) maintains the obviousness
rejection. Appellant contends (Br. 12-19) that the combination of Fishkin
and Magnussen fails to disclose a pliable sensor providing tactile feedback
to the user's hand, as recited in each of the independent claims. Specifically,
Appellant contends that the Examiner admits that Fishkin does not disclose
the above-noted limitation and that Magnussen similarly fails to disclose the
sensor providing tactile feedback. The issue, therefore, is whether the
combination teaches a pliable sensor providing tactile feedback.
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Fishkin (col. 3, ll. 44-48) discloses a handheld portable computer at
least partially surrounded with a deformable material having embedded or
contact pressure/deformation sensors. Fishkin further discloses (col. 3,
ll. 54-57) that "only minute surface deformations are required, being just
sufficient to provide tactile feedback to pressing, pinching, or bending type
manipulations." The handheld portable computer includes a feedback
module to provide tactile feedback to a user, for example a "tactile display to
present Braille or other conventional touch interface." (See col. 3, ll. 61-67.)
Thus, contrary to Appellant's contentions, Fishkin discloses that the pliable
sensors provide tactile feedback to the user's hand. Therefore, the teachings
of Magnussen are considered cumulative. Since Appellant presents no
further arguments, we will sustain the obviousness rejection of claims 1
through 4, 11 through 17, 24 through 27, 29, 34, and 36.
For each of claims 5 through 10, 18 through 23, 28, 30 through 33, 35,
and 37 through 40, the Examiner adds to the primary combination of Fishkin
and Magnussen the teachings of Smith, Kornbluh, Gitis, or Sandbach.
Appellant does not argue any of the additional references. Instead Appellant
relies upon the argument that neither Fishkin nor Magnussen discloses
pliable sensors providing tactile feedback to the user's hand, and none of
Smith, Kornbluh, Gitis, or Sandbach cures the alleged deficiency. However,
as explained supra, Fishkin does disclose the pliable sensors providing
tactile feedback to the user's hand. Accordingly, we will sustain the
obviousness rejections of claims 5 through 10, 18 through 23, 28, 30 through
33, 35, and 37 through 40.

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ORDER
The decision of the Examiner rejecting claims 1 through 40 under
35 U.S.C. § 112, first paragraph, is reversed. The decision of the Examiner
rejecting claims 1 through 40 under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

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AFFIRMED

eld

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