Ex Parte Gregorio et alDownload PDFPatent Trial and Appeal BoardJun 15, 201611735096 (P.T.A.B. Jun. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111735,096 04/13/2007 95000 7590 06/17/2016 MILES & STOCKBRIDGE P,C Immersion Corporation 17 51 Pinnacle Drive Suite 1500 Tysons Corner, VA 22102-3833 FIRST NAMED INVENTOR Pedro Gregorio 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. T9047-19322USOl;IMM249 1284 EXAMINER MATTHEWS, ANDRE L ART UNIT PAPER NUMBER 2621 NOTIFICATION DATE DELIVERY MODE 06/17/2016 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): Ipdocketing@MilesStockbridge.com bgoldsmith@milesstockbridge.com smcvean@milesstockbridge.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PEDRO GREGORIO, DANNY A. GRANT, and JUAN MANUEL CRUZ-HERNANDEZ Appeal2014-007558 Application 11/735,096 Technology Center 2600 Before JOHN P. PINKERTON, MELISSA A. RAAP ALA, and MATTHEW J. McNEILL, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-8, 10, 12-15, 17, 19-26, 28, 30, and 31, which constitute all the claims pending in this application. 2 Claims 9, 11, 16, 18, 27, and 29 are canceled. See App. Br. 10, 12, and 14. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify Immersion Corp. as the real party in interest. App. Br. 2. 2 Although Appellants argue claims 32-35, these claims are not before us because Appellants' proposed amendment to add these claims was not entered by the Examiner. See Advisory Action mailed Sept. 24, 2013. Thus, these claims will not be mentioned again in our decision. Appeal2014-007558 Application 11/735,096 STATEivIENT OF THE CASE Introduction Appellants' disclosed and claimed invention generally relates to a multiple mode haptic feedback system. Spec. i-f 1. 3 Claim 1 is representative of the claims on appeal and reads as follows: 1. A haptic device comprising: a housing; a touchscreen coupled to said housing through a suspension; and an actuator directly coupled to said touchscreen and not directly coupled to said housing; wherein said suspension is adapted so that when said actuator generates first vibrations at a first frequency, said first vibrations are substantially isolated from said housing causing a first type of haptic effect to be sensed through contact with the touchscreen, and when said actuator generates second vibrations at a second frequency, said second vibrations are substantially passed through to said housing causing a second type of haptic effect to be sensed through contact with the housing; wherein the first frequency is greater than the second frequency and greater than a resonant frequency of the actuator. App. Br. 9 (Claims App.). 3 Our Decision refers to the Final Office Action mailed June 20, 2013 ("Final Act."); Appellants' Appeal Brief filed Dec. 20, 2013 ("App. Br."); the Examiner's Answer mailed Apr. 30, 2014 ("Ans."); Appellants' Reply Brief filed June 24, 2014 ("Reply Br."); and, the Specification filed Apr. 13, 2007 ("Spec."). 2 Appeal2014-007558 Application 11/735,096 References Allen us 5,942,733 Shahoian '795 US 2002/0033795 Al Hamaguchi US 6,404,085 B2 Shahoian '729 US 6,680,729 Bl Schroeder US 2007 /0024593 Al Rejections on Appeal Aug. 24, 1999 Mar. 21, 2002 June 11, 2002 Jan.20,2004 Feb. 1, 2007 Claims 1,2,4---6,8, 10, 12, 14, 15, 17, 19,20,22-24,26,28,30,and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Schroeder, Shahoian '795, and Shahoian '729. Claims 3, 13, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Schroeder, Shahoian '795, Shahoian '729, and Hamaguchi. Claims 7 and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Schroeder, Shahoian '795, Shahoian '729, and Allen. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments in the Briefs and are not persuaded the Examiner erred. Unless otherwise noted, we agree with, and adopt as our own, the findings and reasons set forth by the Examiner in the Final Action from which this appeal is taken (Final Act. 3-12), and in the Answer in response to Appellants' Appeal Brief (Ans. 12-14), and we concur with the conclusions reached by 3 Appeal2014-007558 Application 11/735,096 the Examiner. For emphasis, we consider and highlight specific arguments as presented in the Briefs. Appellants contend the prior art fails to teach or suggest using a single actuator directly coupled to a touchscreen and not directly coupled to a housing to generate a first type ofhaptic effect on a housing at a second frequency and a second type of haptic effect on the touchscreen at a first frequency that is greater than the second frequency and greater than a resonant frequency of the actuator. App. Br. 3. In particular, Appellants argue Schroeder teaches a single actuator coupled to the housing, rather than the touchscreen, and "fails to recognize the problem that the frequency of the haptic effect needs to be greater than the resonant frequency to, for example, effectively simulate a mechanical button." Id. at 4--5. Appellants also argue Shahoian '795 teaches "using MULTIPLE actuators coupled to different portions of the device to generate different haptic effects, rather than a single actuator." Id. at 5---6. Appellants further argue the Examiner fails to provide any motivation to combine Schroeder and Shahoian '795 and the combination would result in multiple actuators generating different types ofhaptic effects, rather than a single actuator coupled to the touchscreen generating multiple haptic effects. Id. at 7; Reply Br. 4--5. In the Reply Brief, Appellants argue that the description of Shahoian '795 on page 4 of the Examiner's Answer disclosing "said second vibrations are substantially passed through the housing" is misleading and that Shahoian '795 fails to teach vibrations being "passed through" as that phrase is used in the claims. Reply Br. 2-3. We are not persuaded by Appellants' arguments that the Examiner has erred. We agree with the Examiner that Appellants' arguments are directed 4 Appeal2014-007558 Application 11/735,096 to the references individually, whereas the rejection is based on the combined teachings of Schroeder, Shahoian '795, and Shahoian '729. See Ans. 13; Final Act 3-5. Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., Inc., 800 F .2d 1091, 1097 (Fed. Cir. 1986). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of the references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, the Examiner relies on Schroeder to teach a single vibration device 50 coupled to the housing 30 of touch panel 10, and not directly coupled to touchscreen 20, that is used to generate two tactile feedbacks- from the housing and the touchscreen-where the vibration device can operate at resonant frequency or any frequency other than resonant. See Ans. 13 (citing Schroeder Figures 1, 2, i-fi-122-24). The Examiner relies on Shahoian '795 as teaching an actuator directly connected to the touchscreen to produce a haptic effect on the touchscreen and other actuators to produce a haptic effect in the housing. Id. at 13-14 (citing Shahoian '795, i-fi-147, 158). The Examiner relies on Shahoian '729 to teach that "a single actuator can be used to generate multiple haptic effects by operating below, at, or above resonant frequency." Id. at 14 (citing Shahoian '729, col. 11, 11. 7-9). Appellants have not provided persuasive evidence or arguments to rebut these findings. Thus, we agree with these findings and adopt them as our own. Regarding the combination of the prior art, the Examiner further finds as follows: 5 Appeal2014-007558 Application 11/735,096 [A]lthough Shahoian ['759] teaches the use of multiple actuators it would be obvious to one of ordinary skill that a designer could take a single vibrating device and mount/couple it to the housing or the touchscreen. Therefore it would be obvious that a device such as Schroeder could take the single vibrating/ actuator and mount/couple it to the housing or the touchscreen and allow the device to operate at resonant frequency or any frequency other than resonant. Therefore the combination would be obvious to anyone of ordinary skill in the art would recognize that the single vibrating device of Schroeder with an actuator that operates at a plurality of frequencies and is capable of being mounted anywhere in the device housing including a touchscreen. Ans. 14. Thus, contrary to Appellants' argument, based on these findings, the combination of references would not result in multiple actuators generating different types of haptic effects, but rather a single actuator coupled to the touchscreen. Regarding Appellants' argument that the Examiner has not provided any motivation to combine Schroeder and Shahoian '759, the Supreme Court has rejected the rigid requirement of demonstrating a teaching, suggestion, or motivation to combine references to show obviousness. KSR Int'! Co. v. Teleflex Co., 550 U.S. 398, 419 (2007). Instead, a rejection based on obviousness only needs to be supported by "some articulated reasoning with some rational underpinning" to combine known elements in the manner required by the claim. Id. at 418. We conclude the Examiner's findings quoted above satisfy this requirement. In other words, the combination is no more than a combination of familiar 6 Appeal2014-007558 Application 11/735,096 elements according to known methods that does no more than yield predictable results, i.e., a predictable variation. Id. at 416. Regarding Appellants' argument that Schroeder fails to recognize the frequency of the haptic effect needs to be greater than the resonant frequency to effectively simulate a mechanical button, we are not persuaded of Examiner error because the claims on appeal do not recite a haptic effect that simulates a mechanical button. See In re Self, 671 F.2d 1344, 1348 ( CCP A 1982) ("[A ]ppellant' s arguments fail from the outset because ... they are not based on limitations appearing in the claims."). Finally, in regard to Appellants' argument that Shahoian '795 fails to teach vibrations being "passed through" as that phrase is used in the claims (see Reply Br. 2-3), we note the Examiner's findings that are quoted, and argued to be misleading, were made in the Final Action. See Final Act. 3--4. Appellants did not, however, make this argument in the Appeal Brief, but raised it for the first time in the Reply Brief. Accordingly, this argument is waived as it was raised for the first time in the Reply Brief without a showing of good cause. See 37 C.F.R. § 41.41(b)(2) (2012); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not."). Thus, based on this record, we do not find error (1) in the Examiner's findings that the combination of Schroeder, Shahoian '795, and Shahoian '729 teaches or suggests the disputed limitations of claim 1 or (2) in the Examiner's conclusion that the combination of these references renders claim 1 obvious under 35 U.S.C. § 103(a). Accordingly, we sustain the 7 Appeal2014-007558 Application 11/735,096 Examiner's rejection of claim 1, as well as claims 12, 20, and 31, which are argued together with claim 1. We also sustain the Examiner's rejection of claims 2-8, 10, 13-15, 17, 19, 21-26, 28, and 30, which variously depend from claims 1, 12, and 20, and are not argued separately. See 37 C.F.R. § 41.37(c)(l)(iv). DECISION We affirm the Examiner's decision rejecting claims 1-8, 10, 12-15, 17, 19-26, 28, 30, and 31 under 35 U.S.C. § 103(a). 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 8 Copy with citationCopy as parenthetical citation