Ex Parte Lacroix

Patent Trial and Appeal Board

Jan 23, 2017

13741826 (P.T.A.B. Jan. 23, 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.
13/741,826 01/15/2013 Robert LACROIX 043508-0412405 7737
7590 01/25/2017
Kilpatrick Townsend and Stockton, LLP
1001 W Fourth Street
Winston-Salem, NC 27101
EXAMINER
ROBINSON, TERRELL M
ART UNIT PAPER NUMBER
2618
NOTIFICATION DATE DELIVERY MODE
01/25/2017 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):
eofficeaction @ appcoll.com
kts_imm_docketing @ kilpatricktownsend. com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT LACROIX
Appeal 2016-005503
Application 13/741,826
Technology Center 2600
Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—24, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest identified by Appellant is Immersion Corporation.
Appeal Br. 2.
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Application 13/741,826
STATEMENT OF THE CASE
Introduction
Appellant’s described and claimed invention relates generally to
“[providing] feedback based on an augmented reality environment.”
Abstract.2
Claim 1 is representative and reads as follows (with the disputed
limitation emphasized)'.
1. A wearable device configured to provide feedback based
on an augmented reality environment, the wearable device
comprising:
a processor configured to:
receive a control signal from an augmented reality device
that generates the augmented reality environment and is remote
from the wearable device, the control signal representative of an
event occurring in the augmented reality environment; and
a feedback device configured to provide a feedback
based on the received control signal.
Appeal Br. 15 (Claims App.).
Rejections on Appeal
Claims 1—3, 5—12, 17—21, and 24 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Pretlove et al.
(US 2004/0189675 Al; published Sept. 30, 2004) (“Pretlove”), in view of
Banerjee et al. (US 2007/0035511 Al; published Feb. 15, 2007)
(“Banerjee”).
2 Our Decision refers to the Final Office Action (mailed Mar. 5, 2015, “Final
Act.”), Appellant’s Appeal Brief (filed Oct. 5, 2015, “Appeal Br.”) and
Reply Brief (filed Apr. 26, 2016, “Reply Br.”), the Examiner’s Answer
(mailed Feb. 26, 2016, “Ans.”), and the original Specification (filed Jan. 15,
2013, “Spec.”).
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Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pretlove, in view of Banerjee, and further in view of
Kipman et al. (US 2011/0279249 Al; published Nov. 17, 2011).
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pretlove, in view of Banerjee, and further in view of
Konertz et al. (US 2011/0310227 Al; published Dec. 22, 2011) (“Konertz”).
Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pretlove, in view of Banerjee, and further in view of
David Merrill and Pattie Maes, Augmenting Looking, Pointing and Reaching
Gestures to Enhance the Searching and Browsing of Physical Objects,
Springer-Verlag, Proceedings of the 5th International Conference on
Pervasive Computing (May 13—16, 2007), available at
http://dl.acm.org/citation.cfm?id= 1758156.1758158 (“Merrill”).
Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pretlove, in view of Banerjee, and further in view of
Hatch et al. (US 2013/0002425 Al; published Jan. 3, 2013) (“Hatch”).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief (see App. Br. 4—14) and the Reply Brief (see
Reply Br. 1 4) and are not persuaded the Examiner has erred. Unless
otherwise noted, we adopt as our own the findings and reasons set forth by
the Examiner in the Office Action from which this appeal is taken (Final
Act. 2—29) and in the Examiner’s Answer (Ans. 2—36), and we concur with
the conclusions reached by the Examiner. For emphasis, we consider and
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highlight specific arguments as presented in the Appeal Brief and Reply
Brief.
Rejection of Claims 1—3, 5—12, 17—21, and 24 under § 103(a)
Appellant argues neither Pretlove nor Banerjee teaches or suggests a
wearable device that includes “a feedback device configured to provide a
feedback based on the received control signal,” as recited in independent
claim 1, and similarly recited in independent claims 17 and 24. See Appeal
Br. 6, 8—10. As argued by Appellant, none of the wearable elements
described in Pretlove (e.g., wearable computer or head-mounted display
device) would be conducive to having the feedback device of Banerjee
incorporated therein, as the force feedback device of Banerjee is not a
wearable device and, instead, is configured to be grasped or otherwise held
by the user. See Appeal Br. 6—10. As further argued by Appellant,
Pretlove’s wearable computer is configured to be worn on a user’s back,
where, in contrast, the haptic touch device described in Banerjee is a device
configured to be grasped or otherwise held as a stylus. See Reply Br. 2—3.
Thus, as argued by Appellant, the combination of Pretlove and Banerjee
does not render the claims obvious. See Reply Br. 3.
We do not find this argument persuasive. The Examiner’s rejection is
not based upon a bodily incorporation of Banerjee’s handheld haptic touch
device into Pretlove’s wearable device (e.g., wearable computer or head-
mounted display device). See In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.”); In re
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Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”).
Instead, the Examiner’s rejection is based on a modification of Pretlove’s
augmented reality system (which includes wearable devices) to incorporate
haptic feedback (e.g., force feedback) as taught by Banerjee. See, e.g.,
Ans. 26—28.
While we do not agree with the Examiner’s finding that the concept of
holding a device and a device being wearable are analogous in the sense of
being the same (see Ans. 28), we agree that the references are analogous in
the sense of being “reasonably pertinent to the particular problem with
which the inventor is involved.” Innovention Toys, LLC v. MCA Entm ’t,
Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (quotation omitted). We agree
with the Examiner’s findings that Pretlove teaches a wearable device,
Banerjee teaches a haptic device configured to provide haptic feedback (e.g.,
force feedback) based on a control signal, and thus, the combination of
Pretlove and Banerjee teaches or suggests a wearable device that includes “a
feedback device configured to provide a feedback based on the received
control signal,” as recited in claim 1, and similarly recited in claims 17 and
24. See, e.g., Final Act. 6—8. Further, Appellant has not asserted the
proposed modification would have been beyond the capabilities of a person
of ordinary skill in the art. Absent such an assertion, we “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ,” and find a person of ordinary skill in the art would overcome those
difficulties if doing so is within their level of skill. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also id. at 421 (“A person of ordinary
skill is also a person of ordinary creativity, not an automaton.”).
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Thus, we are not persuaded the Examiner erred in finding the
combination of Pretlove and Banerjee teaches or suggests all of the elements
of claims 1,17, and 24. Accordingly, we sustain the rejection of claims 1,
17, and 24 under 35 U.S.C. § 103(a), as well as dependent claims 2—3, 5—12,
and 18—21, which are not argued separately.
Rejection of Claim 4 under § 103(a)
Appellant argues there would have been no objective reason, at the
time of Appellant’s invention, to combine Kipman with Pretlove and
Banerjee as asserted in the Final Office Action. See Appeal Br. 10. As
argued by Appellant, one of ordinary skill in the art would not have looked
to the virtual reality system of Kipman to change the force feedback device
of Banerjee’s augmented reality system to be a non-mechanical haptic
output device, as such a change would change the principle operation of
Banerjee’s force feedback device. See id.
We do not find this argument persuasive. Appellant fails to cite any
portion of Banerjee that teaches or suggests a haptic output device is
required to be a mechanical haptic output device. Thus, Appellant has failed
to show why changing Banerjee’s force feedback output device to a non­
mechanical haptic output device, such as Kipman’s ultrasonic haptic output
device, would change the principle operation of Banerjee. Accordingly, we
sustain the rejection of claim 4 under 35 U.S.C. § 103(a).
Rejection of Claims 13 and 14 under § 103(a)
Appellant argues Konertz fails to teach or suggest “an identifier
device configured to generate identifying indicia used by the augmented
reality device to identify the wearable device,” as recited in claim 13, and
“wherein the identifying indicia comprises an optical signature or a non-
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visible signature,” as recited in claim 14. See Appeal Br. 11. As argued by
Appellant, Konertz’s light emitting element, without more, cannot
reasonably be interpreted as an optical signature used by an augmented
reality device to identify a wearable device. See id.
We do not find this argument persuasive. Appellant’s specification
describes the claimed “optical signature” as a “signature that is within
visible wavelengths of light.” See Spec. 145. Thus, we agree with the
Examiner that Konertz’s visual indication presented via a light-emitting
element of a mobile device teaches the claimed “optical signature.” See
Ans. 33—34. Accordingly, we sustain the rejection of claims 13 and 14
under 35 U.S.C. § 103(a).
Rejection of Claims 15 and 16 under § 103(a)
Appellant argues Merrill does not cure the alleged deficiencies of
Pretlove and Banerjee with respect to claim 1. See Appeal Br. 12.
However, as discussed above, we agree with the Examiner’s finding that the
combination of Pretlove and Banerjee teaches or suggests ah the claim
elements of claim 1. See Final Act. 6—8. Thus, we are not persuaded the
Examiner erred in finding the combination of Pretlove, Banerjee, and Merrill
teaches or suggests ah of the claim elements of claims 15 and 16, which
depend from claim 1. See Final Act. 25—27. Accordingly, we sustain the
rejection of claims 15 and 16 under 35 U.S.C. § 103(a).
Rejection of Claims 22 and 23 under § 103(a)
Appellant argues Hatch does not cure the alleged deficiencies of
Pretlove and Banerjee with respect to claim 17. See Appeal Br. 13.
However, as discussed above, we agree with the Examiner’s finding that the
combination of Pretlove and Banerjee teaches or suggests ah the claim
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elements of claim 17. See Final Act. 15—16. Thus, we are not persuaded the
Examiner erred in finding the combination of Pretlove, Banerjee, and Hatch
teaches or suggests all of the limitations of claims 22 and 23, which depend
from claim 17. See Final Act. 27—29. Accordingly, we sustain the rejection
of claims 22 and 23 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejection of claims 1—24 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
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