Ex Parte Goldenberg et al

Patent Trial and Appeal Board

May 12, 2016

12264166 (P.T.A.B. May. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/264,166 11103/2008
34300 7590 05/13/2016
Kilpatrick Townsend and Stockton, LLP
1001 W Fourth Street
Winston-Salem, NC 27101
FIRST NAMED INVENTOR
Alex S. Goldenberg
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.
IMM091Dl
(51851-374420)
EXAMINER
9636
MOON, SEOKYUN
ART UNIT PAPER NUMBER
2694
MAILDATE DELIVERY MODE
05/13/2016 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 ALEX S. GOLDENBERG and RAMON ALARCON1
Appeal2014-006951
Application 12/264,166
Technology Center 2600
Before BRUCE R. WINSOR, DANIEL N. FISHMAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-37, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify Immersion Corporation as the real party in interest.
App. Br. 1.
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Application 12/264, 166
Introduction
Appellants state "[t]he present invention is directed to mapping
kinesthetic force sensations to vibrotactile sensations output by a vibrotactile
feedback device" and "[ s ]ophisticated vibrations can be output from a haptic
feedback device that includes driver electronics driving a rotating mass in
one direction." Spec. i-f 3 ("Summary"). Claims 1 and 18 are illustrative
(each shown with a disputed claim requirement highlighted):
1. An apparatus, comprising:
a housing manipulatable by a user;
an actuator coupled to the housing and including an
eccentric mass coupled to a rotatable shaft of the actuator
defining an axis of rotation;
a circuit coupled to the actuator, the circuit configured to
produce a control signal such that, when the control signal is
received by the actuator, the actuator produces a force effect
having a magnitude and a frequency by rotating the mass about
the axis of rotation in a first direction, the magnitude of the
vibration being based on a duty cycle of the control signal and
being independent of the frequency; and
an obstacle member configured to be contacted with the
mass when the mass is rotated, wherein the obstacle member is
a spring member including a compliance portion configured
to increase energy in the movement of the mass in a second
direction opposite to the first direction when the mass comes
into contact with the obstacle member.
18. A device, comprising:
a housing;
an actuator coupled to the housing, the actuator having a
rotary shaft coupled to an eccentric mass, the eccentric mass
configured to rotate around an axis of rotation of the rotary
shaft in a first direction; and
a stop member coupled to the housing, the stop member
being positioned at least partially in a path of rotation of the
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Application 12/264, 166
eccentric mass, the stop member configured to produce a tactile
sensation when the eccentric mass comes in contact with the
stop member, wherein the stop member comprises a spring
member including a compliance portion configured to
increase energy in the movement of the eccentric mass in a
second direction opposite the first direction when the
eccentric mass comes into contact with the stop member.
App. Br. 30, 34 (Claims App'x).
Rejections
Claims 23, 28-35, and 37 stand rejected under 35 U.S.C. § 112, i-f 1.
Final Act. 5---6; Adv. Act. 2-3.
Claims 1--4, 6, 8-12, 14, 16, and 17 stand rejected under 35 U.S.C.
§ 103(a) over Ogata et al. (US 6,001,014; Dec. 14, 1999) ("Ogata"). Final
Act. 6-12.
Claims 5 and 13 stand rejected under 35 U.S.C. § 103(a) over Ogata
and Goto et al. (US 6,231,444 Bl; May 15, 2001) ("Goto"). Final Act. 12-
13.
Claims 7 and 15 stand rejected under 35 U.S.C. § 103(a) over Ogata
and Rosenberg et al. (US 5,739,811; Apr. 14, 1998) ("Rosenberg"). Final
Act. 13.
Claims 18, 23-26, 28, 33, 34, 36, and 37 stand rejected under 35
U.S.C. § 103(a) over You et al. (US 5,668,423; Sept. 16, 1997) ("You") and
Furuki (US 6,268,671 Bl; July 31, 2001). Final Act. 14--19.
Claims 19-22, 27, 29-32, and 35 stand rejected under 35 U.S.C.
§ 103(a) over You, Furuki, and Ogata. Final Act. 19-24.
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Application 12/264, 166
35U.S.C.§112, fl Rejections
ANALYSIS
The Examiner rejects claims 23, 28-35, and 37 because they "contain
subject matter which was not described in the specification in such a way as
to reasonably convey to one skilled in the relevant art that the inventor ...
had possession of the claimed invention." Final Act. 5.2
Claim 23 recites a "first stop member and a second stop member ...
configured to define a range of rotation .... " The Examiner finds the first
and second stop members disclosed in the Specification do not define a
range of rotation because there is no disclosure of the second stop member
being in the path of rotation and that, even if it were, such an arrangement
does not inherently define a range of rotation. Ans. 21-22 (citing Spec.
i-f 39). Appellants contend there is no disclosure of a stop member being not
in the path of rotation, and that two stops in a path of rotation necessarily
define a range of rotation. Reply Br. 2. We agree with Appellants. One of
ordinary skill, reading Appellants' Specification, would understand that the
disclosed and claimed stop members stop rotation with some structure in the
path of rotation, and that two stop members necessarily define a range of
rotation.
The Examiner also finds claim 28, which recites "a first stop member
... at a first position in a path of rotation ... and a second stop member ...
at a second position in the path of rotation," lacks written description support
2 The Examiner also issued a§ 112, i-f 1 rejection of claim 25 (Final Act. 5),
but then withdrew that rejection in the pre-appeal Advisory Action (Oct. 10,
2013, p. 3). The Examiner's Answer addresses the merits of that rejection as
if it were pending (p. 23). We find this to be an oversight by the Examiner
and conclude that the § 112, i-f 1 rejection of claim 25 remains withdrawn.
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Application 12/264, 166
for the same reason as claim 23. Ans. 23-24. Appellants similarly reference
their argument for claim 23, noting "two stop members would not be located
in exactly the same location. Otherwise there would be no reason for
including two stop members." Reply Br. 3. We agree; the Specification
demonstrates Appellants were "in possession of' the subject matter of claim
23.
The Examiner rejects claims 29-35 based on their dependency from
claim 28 and rejects claim 37 for the same reasons as for claim 23. Final
Act. 6. We do not sustain those rejections for the reasons just discussed.
35 U.S.C. § 103 Rejections
Claim 1
Claim 1 recites, inter alia, "rotating the mass about the axis of rotation
in a first direction." The disputed requirement requires the obstacle member
"to increase energy in the movement of the mass in a second direction
opposite to the first direction." The Examiner relies on Ogata's resilient
member 42 of Figure 15 to show the disputed requirement. Final Act. 7-8.
Appellants argue the Examiner errs because Ogata's resilient member
is not configured to stop rotation of the rotating mass and, therefore, it
cannot increase energy in the movement in the second direction as claimed.
App. Br. 22-23. We agree. Ogata's teaching of transferring energy from a
rotating mass without changing its direction of movement, notwithstanding
Newton's Third Law,3 does not teach or suggest claim 1 's requirement to
increase energy in the movement of the mass in an opposite direction.
3 See, e.g., en.wikipedia.org/wiki/Newton%27s_laws_of_motion ("[t]o every
action there is always opposed an equal reaction").
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We accordingly do not sustain the Examiner's rejection of claim 1.
For the same reasons we do not sustain the rejection of independent claims 9
and 17, which also include requirements similar to the disputed limitation
and which the Examiner also rejects over Ogata. Nor do we sustain the
rejection of claims 2-8 and 10-16, which depend, directly or indirectly,
from either claim 1 or 9.
Claim 18
Appellants argue the Examiner errs because Furuki, which the
Examiner cites for the disputed limitation of claim 18, discloses a linear
vibrator and teaches away from using the recited rotary actuator. App. Br.
26.
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference's disclosure is unlikely to be
productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed.Cir.1994). "[W]hen the prior art teaches
away from combining certain known elements, discovery of a successful
means of combining them is more likely to be nonobvious." KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007).
Although Furuki criticizes a prior art rotary actuator design, it does
not criticize the claimed invention. Furuki' s Figure 10 shows the criticized
prior art rotary actuator design, which does not include a stop. Stops are a
key element of Appellants' claims. Appellants do not persuade us that
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Furuki discourages or otherwise teaches one of ordinary skill away from
combining its teaching of a spring-based stop with You's teaching of a
rotary actuator with stops. The relevant inquiry is whether the claimed
subject matter would have been obvious to one of ordinary skill in the art in
light of the combined teachings of the references. In re Keller, 642 F.2d
413, 425 (CCPA 1981). The Examiner finds that "by applying the concept
of Furuki to the device of You, You as modified by Furuki would teach two
spring members formed on '19 A' and '19B', which provide a returning
force to the moving portion, '16A', in a direction opposite to the direction of
the movement of the element '16A'." Ans. 30. Appellants provide no
persuasive argument or evidence that the Examiner's combination of
teachings from You and Furuki was "uniquely challenging or difficult for
one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419); see
also KSR, 550 at 421 ("A person of ordinary skill is also a person of
ordinary creativity, not an automaton.").
Appellants further contend there would be no motivation to combine
Furuki with You because "modifying the linear vibrator taught by Furuki to
the rotary actuator taught by You would render Furuki unsatisfactory for its
intended purpose, because, as explained by Furuki, such a design cannot
control frequency and amplitude independently. See Furuki, col. 1 :23-28."
App. Br. 27. The Examiner answers, and we agree, "the basis of the
combination of You and Furuki is not modifying the device of Furuki to
include a rotary actuator, but is modifying the device of You to have a spring
member to provide an additional returning force to the rotary actuator of
Furuki." Ans. 29.
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We accordingly sustain the Examiner's rejection of claim 18. We also
sustain the rejection of claims 23-26, 28, 33, 34, 36, and 37, which
Appellants argue on the basis of claim 18. See App. Br. 26-27.
Remaining Claims
Appellants argue the Examiner errs in rejecting claims 19-22, 27, 29-
32, and 35 over the combination of You, Furuki, and Ogata for the same
reasons argued for claim 18, additionally contending that Ogata's lack of
disclosure of "a compliance portion" does not cure the deficiency of the
combination of You and Furuki. App. Br. 28. None of these claims recite a
"compliance portion" (any requirement for a "compliance portion" is by
reference to a parent claim, discussed supra). Appellants do not persuade us
of Examiner error, and we accordingly sustain the rejection of claims 19-22,
27, 29-32, and 35.
uECISION
For the reasons above, we reverse the Examiner's rejection of claims
1-17 and affirm the rejection of claims 18-37.
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-IN-PART
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