Ex Parte Israr et al

Patent Trial and Appeal Board

Feb 28, 2017

13603833 (P.T.A.B. Feb. 28, 2017)

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.
13/603,833 09/05/2012 Ali Israr DISN/0062USP (055414) 6343
77754 7590 03/02/2017
DISNEY ENTERPRISES, INC.
c/o Patterson & Sheridan, LLP
24 Greenway Plaza
Suite 1600
Houston, TX 77046-2472
EXAMINER
HARRIS, DOROTHY H
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
PAIR_eOfficeAction@pattersonsheridan.com
PS Docketing @ pattersonsheridan .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ISRAR ALI, CHENG XU, IVAN POUPYREV,
OLIVIER BAU, and SEUNG-CHAN KIM
Appeal 2016-007582
Application 13/603,833
Technology Center 2600
Before THU A. DANG, TERRENCE W, McMILLIN, and JOYCE CRAIG,
Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—4, 6, and 8—21, which constitute all the claims
pending in this application. Claims 5 and 7 have been previously canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
A. INVENTION
According to Appellants, embodiments of the invention “relate to
touch surfaces, and, in particular, to electrovibration for touch surfaces based
on a captured image” (Spec. 12).
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Application 13/603,833
B. CONTESTED CLAIM
Dependent claim 21 is reproduced below:
21. The touch device of claim 10, wherein the images captured by the
image capturing device are not displayed.
C. REFERENCES AND REJECTION
Claims 1—4, 6, and 9-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bloebaum (US 2009/0251421, pub. Oct. 8, 2009),
Ronkainen (US 2009/0167701, pub. July 2, 2009), and Makinen et al. (US
2009/0079550; pub. March 26, 2009) (“Makinen”).
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bloebaum, Ronkainen, Makinen, and Jones (US
2007/0296692, pub. Dec. 27, 2007).
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bloebaum, Ronkainen, Makinen, and Norman (US
5,942,970, iss. Aug. 24, 1999).
II. ISSUE
The principal issue before us is whether the Examiner erred in finding
that the combination of Bloebaum and Norman teaches or suggests a touch
device “wherein the images captured by the image capturing device are not
displayed” (claim 21).
III. ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
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Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
With respect to dependent claim 21, Appellants contends “Bloebaum
teaches displaying images in order to provide tactile feedback.” Ans. 11.
That is, in Bloebaum, “it is necessary for screen images to be displayed so
that users can manipulate the location of the reference object 54 within the
displayed image to create the desired haptic feedback.” Id. at 13. Although
Appellants concede “Norman does teach ‘an auxiliary output 52 for allowing
the connection of a conventional video input device thereto so that a person
may visually monitor the images received’” {id. at 15), Appellants contend
“an image from the image capturing device still must be displayed” in
Bloebaum, even if combined with Norman. Id.
Based on the record before us, we disagree with Appellants’
contentions regarding the Examiner’s rejections of claim 21. Instead, we
agree with the Examiner’s findings, and find no error with the Examiner’s
conclusion that claim 21 would have been obvious over Bloebaum and
Norman (as well as Ronkainen and Makinen).
As an initial matter of claim construction, we give claim 21 its
broadest reasonable interpretation consistent with the Specification. See In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). However, “limitations are
not to be read into the claims from the specification.” In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).
We note that the Specification provides no clear definition for the
term “wherein the images captured by the image capturing device are not
displayed” (claim 21). Although Appellants’ “Summary of Claimed Subject
Matter” identifies 1 [154] of the Specification as providing support for “[t]he
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image captured by the image capturing device is not displayed” (App. Br. 5),
1 [154] of the Specification merely states:
In other embodiments, the image processing module may use the
tactile feedback map or the captured image to display an image
on a device. For example, the touch screen may be integrated
with a display system (e.g., a LCD display) that permits the
image processing module to use the tactile feedback map to
display an image on the touch screen. Doing so may enhance the
experience of the user by permitting her to see the objects as well
as sense tactile feedback from contacting the objects on the touch
screen. Referring to Figure 13, both the triangle object 1340A
and circle object 1340B may be displayed on the touch screen
1325 rather than only being sensed by tactile feedback as shown.
In particular, this paragraph of the Specification merely describes that
the “display system . . . permits the imaging processing module to use the
tactile feedback map to display an image on the touch screen” wherein
feedback objects “may be displayed on the touch screen 1325 rather than
only being sensed by tactile feedback as shown” (Spec. 1 [154]). That is,
this paragraph merely describes that the images captured may (and thus also
may not) be displayed. Id.
Here, we agree with the Examiner’s finding that Norman teaches “an
auxiliary output 52 which may allow connection to a conventional video
output device so that a person may visually monitor received images.” Final
Act. 31. Given the broadest reasonable interpretation consistent with
Specification (Spec. 1 [154]), we agree with the Examiner’s reliance on
Norman for teaching and suggesting “wherein the images captured by the
image capturing device are not displayed,” as recited in claim 21. In fact,
Appellants seem to concede Norman discloses and suggests the contested
limitation. App. Br. 15.
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We also find no error with the Examiner’s conclusion that one of
ordinary skill in the art “would have been motivated to have modified
Bloebaum to have a tactile display and to optionally display captured images
when the user desires to visually monitor received images as suggested by
Norman.” Final Act. 31.
Although Appellants contend “an image from the image capturing
device still must be displayed” in Bloebaum, even if combined with Norman
(App. Br. 15), as the Examiner finds, Bloebaum’s “tactile sensory feedback
does not require visual confirmation in order to provide the function of
tactile representation of image texture . . . .” Ans. 3. We find no error with
the Examiner’s reasoning that “visual representation would not be necessary
in order for a user to explore an image representation using their finger to
adjust location of Bloebaum’s ‘virtual finger.’” Id.
We are not persuaded by Appellants’ contention that “it is necessary
for screen images to be displayed so that users can manipulate the location
of the reference object 54 within the displayed image to create the desired
haptic feedback” (App. Br. 13, emphasis omitted and added). The issue here
is whether the ordinarily skilled artisan, upon reading Bloebaum and
Norman, would have found it obvious to modify Bloebaum’s system to
include Norman’s optionally displaying of captured images to provide tactile
presentation of image texture. Final Act. 31, emphasis added. Based on the
record before us, we agree with the Examiner that “Bloebaum does not
criticize, discredit, or otherwise providing tactile feedback without visual
display of an image” (Ans. 3). See In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004). Thus, we find no error with the Examiner’s conclusion that one
of ordinary skill in the art “would have been motivated to have modified
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Bloebaum to have a tactile display and to optionally display captured images
when the user desires to visually monitor received images as suggested by
Norman.” Final Act. 31.
The Supreme Court has clearly stated the “combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007). The skilled artisan is “a person of ordinary creativity,
not an automaton.” Id. at 421. We conclude that it would have been well
within the skill of one skilled in the art to combine the references. Id. at 417.
That is, we find that Appellants’ invention is simply a modification of
familiar prior art teachings (as taught or suggested by the cited references)
that would have realized a predictable result. Id. at 421.
On this record, we are unconvinced of Examiner error in the rejection
of claim 21 over Bloebaum, Ronkainen, Makinen, and Norman.
Appellants do not provide separate arguments for the other pending
claims. Instead, Appellants merely contend “if the amendments were
entered by the Office,” the claims “would be allowable for similar reasons
stated above” (App. Br. 16, emphasis added). Arguments not made are
waived. See 37 C.F.R. § 41.37(c)(l)(iv). Therefore, we summarily sustain
the Examiner’s uncontested rejections of claims 1—4, 6, and 9—20 over
Bloebaum, Ronkainen, and Makinen; and of claim 8 over Bloebaum,
Ronkainen, Makinen, and Jones.
V. CONCLUSION AND DECISION
We affirm the Examiner’s rejection of claims 1—4, 6, and 8—21 under
35U.S.C. § 103(a).
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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
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