Ex Parte MacNeille

Patent Trial and Appeal Board

Sep 6, 2016

13306024 (P.T.A.B. Sep. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/306,024 11129/2011 Perry R. MacNeille
28866 7590 09/08/2016
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
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.
83205916 4933
EXAMINER
DA VIS, TONY 0
ART UNIT PAPER NUMBER
2693
NOTIFICATION DATE DELIVERY MODE
09/08/2016 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):
docketing@mstfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PERRY R. MACNEILLE
Appeal2015-003947
Application 13/306,024
Technology Center 2600
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
Opinion Concurring filed by JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-003947
Application 13/306,024
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejections of claims 1, 4--12, and 16-24 (App. Br. 1):
Claims 1, 5-7, 9-11, and 24 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Evans (US 2009/0144622 Al; published June 4, 2009)
and Pryor (US 2008/0122799 Al; published May 29, 2008). Ans. 2-5. 1
Claims 4 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Evans, Pryor, and Moise (US 7,071,844 Bl; published
July 4, 2006). Ans. 11.
Claims 21-23 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Evans, Pryor, and Danilov (US 2006/0161218 Al; published July 20,
2006). Ans. 6-7.
Claims 12 and 16-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Evans and Danilov. Ans. 7-10.
We have jurisdiction under 35 U.S.C. § 6(b). We review the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We affirm-in-part and enter a new ground of rejection.
1 Throughout this opinion, we refer to (1) the Final Rejection mailed May
27, 2014 ("Final Act."); (2) the Advisory Action mailed July 30, 2014
("Adv. Act."); (3) the Appeal Brief filed September 30, 2014 ("App. Br.");
(4) the Examiner's Answer mailed December 17, 2014 ("Ans."); and (5) the
Reply Brief filed January 29, 2015 ("Reply Br.").
2
Appeal2015-003947
Application 13/306,024
SUMMARY OF THE INVENTION
Appellant's invention conveys vehicle information to a driver through
tactile stimulation. Spec. i-fi-f l, 3. Providing information in this way avoids
diverting the driver's attention from the road. Id. In one embodiment, a
mouthpiece delivers pressure impulses or vibrations on the driver's tongue.
Id. i122. The driver's tongue can select the vehicle data source (cameras,
displays, etc.) to be provided to the mouthpiece. Id. i124.
THE OBVIOUSNESS REJECTION OVER EVANS AND PRYOR
Claims 1, 9, 10, and 24
Claim 1 is reproduced below with our emphasis:
1. A device for delivering tactile stimuli to a user of a vehicle
compnsmg:
a data generating device that generates signals
representative of information regarding a vehicle or surroundings
about the vehicle;
a human interface device having a first surface for
positioning in contact with a user of the vehicle and that receives
the signals from the data generating device, the human interface
device providing tactile stimuli to the user of the vehicle from
the first surface; and
a control on the first surface of the human interface device
operable to select the signals from the data generating device for
operating the human interface device to deliver tactile stimuli to
the user of the vehicle.
Contentions
The Examiner finds that Evans teaches every limitation of claim 1
except for the human-interface device providing tactile stimuli and a control,
3
Appeal2015-003947
Application 13/306,024
as recited. Ans. 2--4. The Examiner, however, cites Pryor in concluding that
this feature would have been obvious. Id. at 3--4. In particular, the
Examiner finds that Pryor' s knob provides a tactile sensation. Id. at 13.
According to the Examiner, Pryor's knob is on the surface of a highly tactile
center stack. Id. The Examiner concludes that it would have been obvious
to incorporate Pryor' s highly tactile center stack in Evans' s system. Id.
Appellant contends that the Evans-Pryor combination does not
provide the recited control. App. Br. 4. According to Appellant, Pryor's
control knob protrudes from a surface. Id. This knob, in Appellant's view,
is not a control on a human-interface device's surface, as recited. Id.
Appellant further argues that, although knob sensations are provided through
the panel, Pryor does not provide control on the panel's surface.
Reply Br. 2.
Issue
Has the Examiner established by a preponderance of the evidence that
Pryor would have taught or suggested a control on the first surface to deliver
tactile stimuli to the user, as recited in claim 1?
Analysis
Resolution of this issue turns on the meaning of the phrase "on the
first surface," as recited in claim 1. The Specification explains that the
impulses or vibrations are expressed on the driver's tongue or "other surface
on the driver." Spec. i-f 22. Apart from this example, the Specification does
not use the term "surface" or otherwise express a clear intent to deviate from
the term's plain meaning.
4
Appeal2015-003947
Application 13/306,024
One plain meaning of the term "surface" is "the outer face, or exterior,
of an object." Webster's New Universal Unabridged Dictionary 1834
(2d ed. 1983). Furthermore, one plain meaning of "on" is "forming a
distinctive or marked part of (the surface of something)." New Oxford
American Dictionary (3d ed. 2010). So in the context of claim 1, a broad,
but reasonable, interpretation of the recited "on the first surface" is to form a
part of the outer face or exterior of the human-interface device.
Notably, claim 1 does not require the first surface to be the top,
surface, the bottom surface, or a surface uninterrupted by edges, curves,
recesses, or protrusions. Claim 1 only requires some surface for positioning
in contact of the user.
Given this interpretation, we find no error in the Examiner's finding
that the surface of Pryor' s tactile center stack corresponds to the recited first
surface (Ans. 13). Nor do we find error in the Examiner's finding that
Pryor;s knob is "a control on;; that surface (id.).
Pryor's tactile interface is found in the vehicle's center stack, which
forms a portion of the dashboard. Pryor i-f 204. The interface is canted
toward the driver so the driver can touch it. Id. Pryor's highly tactile center
stack embodiment is reproduced below with our annotations.
5
Appeal2015-003947
Application 13/306,024
111\
'
1161j
11s~.YI··· .... · "l. _.....,. __ ...--___ _
.t
~·
/ ,,.,.. .....
FIG. 1d
'
131 )(fi"' .. 1· !
"'~"'~ ) l
· ........ I JV~ t:' l .. } I
I 120 1 ·
·-~
Pryor's highly tactile center stack embodiment in Figure ld,
annotated with a dashed line.
Pryor, Fig. Id. The above-pictured highly tactile center stack includes knob
115, some other tactile physical selection means 116, screen panel 105, and
acoustic source 125. Id. i-fi-1208, 210, cited in Ans. 13. Acoustic source 125
provides a detent function or other feeling sensation. Pryor i1210.
Annotated Figure 1 d, shown above, includes a dashed line just above
the outer face, or exterior, of the human-interface device. We understand the
6
Appeal2015-003947
Application 13/306,024
portion directly below the dashed line to correspond to the recited surface
under the Examiner's interpretation (see Ans. 13). Notably, this surface
includes the knob's surface, which comes into contact with the user's hand
to provide tactile stimuli. See Pryor if 21 O; see also Pryor if 212 (describing
that the driver determines the knob's setting by feel alone), cited in Ans. 13.
That is, Pryor' s knob is "on the first surface" because the knob forms a
distinctive or marked part of the above-described surface.
Appellant's Specification supports the reasonableness of this
interpretation. Appellant's Specification discusses an embodiment that has
feedback pixel areas (e.g., 90) positioned at areas of pixel array 84, the
feedback pixel area also provides stimulation. Spec. iii! 20, 24, Fig. 5.
These areas also may be used as buttons to allow the user to select data.
Spec. if 24.
Appellant essentially argues against the individual subcomponents of
the above-annotated surface. App. Br. 4; Reply Br. 2. For example,
Appellant argues that Pryor's knob protrudes from the surface (App. Br. 4),
but this argument does not squarely address the Examiner's finding that this
knob forms only a part of a larger surface (see Ans. 13). Likewise,
Appellant argues that Pryor's panel provides sensations, not control,
(Reply Br. 2), but this argument focuses on only the planar portion of the
above-discussed surface.
In the present rejection, though, the Examiner relies on the entire
surface of Pryor's center stack (see Ans. 13), which we agree provides both
control and tactile stimuli to the user. Specifically, Pryor's highly tactile
center stack's surface is positioned in contact with the user's hand for at
least the reason that the user can touch it to make adjustments. See
7
Appeal2015-003947
Application 13/306,024
Pryor i-f 212, cited in Ans. 13; see also Pryor i-f 206. Moreover, the center
stack provides tactile stimuli cues and control over the interface's settings.
Pryor i-fi-1 210, 212. On this record, we are unpersuaded by Appellant's
argument that Pryor does not provide a control on the surface of the panel.
App. Br. 4; Reply Br. 2.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner's obviousness rejection of representative claim 1.
Accordingly, we sustain the Examiner's rejection of that claim, as well as
dependent claims 9, 10, and 24, which are not separately argued with
particularity (see App. Br. 7-8).2
Claim 5
Claim 5 depends from claim 1 and recites in part, "a sensor activates
the human interface device when a presence of the user of the vehicle is
detected.''
The Examiner finds that Evans's sensor detects the user's presence
with a voice-activated interface. Ans. 4 (citing Evans i-fi-124, 29, 35, Fig. 2-
3).
Appellant argues that Evans' s device is voice-activated, which is not
that same as being activated by detecting a user's presence. App. Br. 8.
According to Appellant, Evans' s voice-activated interface no more detects
2 The Concurring Opinion sets forth an alternative rationale for sustaining
the Examiner's rejection of claim 1. We do not necessarily disagree with
this alternative rationale. However, we need not reach any decisions
regarding the alternative rationale because the reasoning set forth above is
dispositive.
8
Appeal2015-003947
Application 13/306,024
the user's presence than other controls that require some activity.
Reply Br. 5.
Claim 5, however, is not limited to a particular presence-detection
method. Rather, claim 5 only recites that the user's presence is detected.
Appellant has not shown how voice activation, or other controls that require
some activity for that matter (see Reply Br. 5), are precluded by the claim.
Nor does the Specification exclude other such activity monitoring. For
example, the Specification only describes that the invention uses data to
detect when a driver is using a human-interface device. Spec. i-f 23.
Given this breadth of scope, we see no error in the Examiner's
reliance on Evans's voice-activated interface. Ans. 4. The sound of a user's
voice is at least some indication that the user is present. Accordingly, the
Examiner's finding that Evans's voice-activated interface detects the user's
presence (id.) is reasonable.
We therefore sustain the Examiner;s obviousness rejection of claim 5.
THE OBVIOUSNESS REJECTION OVER EVANS, PRYOR, AND
MOISE
Claims 4 and 8
Claim 4 depends from claim 1 and recites, in part, "the control is
operable by a tongue of the user of the vehicle."
The Examiner finds that Evans and Pryor lack a control operable by
the user's tongue, but cites Moise in concluding that this feature would have
been obvious. Ans. 11. In particular, the Examiner finds that Moise's
device provides a tongue-operable control, and it would have been obvious
9
Appeal2015-003947
Application 13/306,024
to incorporate this control in the Evans-Pryor combination for "handicap
users." Id. (citing Moise col. 2, 11. 52-56; Figs. 1-2).
Appellant argues that there is no teaching in Evans or Moise to
provide a tactile interface and a control on the same surface. App. Br. 7.
According to Appellant, Moise's input device has a top surface fit to the
user's mouth, providing tactile feedback, and a concave bottom surface with
a touch pad. Id. (citing Moise col. 3, 11. 4--31; Fig. 1 ).
But the recited first surface is not limited to only a top or bottom
surface, as Appellant's argue. Reply Br. 5. Rather, the claim merely recites
a first surface. By the plain meaning of the term "surface," discussed above,
the recited first surface reads on the combination of the top and bottom
outer-surface regions of Moise's device. Accord Ans. 16. Given this
interpretation, we agree with the Examiner's finding that Moise's device has
a first surface-i.e., the outer or exterior surface-that provides both tactile
stimuli and control. Id. That is, even if Moise;s device provides tongue-
operable control on the bottom region of its first surface and tactile
stimulation on the top region of its first surface (see App. Br. 7), both top
and bottom surface regions are part of a first exterior surface. See Ans. 16.
Accordingly, we sustain the Examiner's obviousness rejection of
claim 4, and the rejection of claim 8, which depends from claim 4 and is not
argued separately with particularity (see App. Br. 7-8; Reply Br. 6).
Claims 6, 7, and 11
Claim 6 recites, in part, that "the control is speech-operable."
Similarly, claim 11 recites, in part, that "the control utilizes speech
10
Appeal2015-003947
Application I3/306,024
recognition." Both claims depend from claim 4, which requires a tongue-
operable control.
In the rejection, the Examiner finds that Evans uses a speech-operable
control, as in claim 6 (Ans. 4), and performs speech-recognition, as in claim
I I (id. at 5).
Appellant argues that Evans does not disclose using a speech-operable
control in conjunction with a tongue-operable control. App. Br. 8.
Notably, in the rejection of claim 4, the Examiner finds that the
Evans-Pryor combination lacks a tongue-operable control, but relies upon
Moise in concluding this feature would have been obvious. Ans. I I. In the
rejection of claims 6, 7, and I I-which depend from claim 4 and
incorporate the tongue-operable control by reference-the Examiner,
however, does not rely on Moise. See id. at 4--5; see also id. at 2 (not listing
Moise in the heading of the rejection); see also Final Act. 2, 4--5.
In the Answer; s Response to Arguments section, though, the
Examiner presents a new rationale that is based on the Moise reference.
Ans. I8-I9. In particular, the Examiner finds that Moise, like Evans, uses
voice control. Id. at I8 (citing Moise col. 3, 11. 34--37). According to the
Examiner, it would have been obvious to use Moise's microphone for
speech and voice control in Evans. Ans. I 8-I 9.
We agree with the Examiner's findings that appear in the Response to
Arguments section (id.). The Examiner's rationale uses Moise's microphone
to perform the same function in the combination as it does separately:
receive and interpret voice commands. See id. Moreover, Moise expressly
discloses that the voice control-i.e., "speech-operable control," as in claim
11
Appeal2015-003947
Application 13/306,024
4---uses speech recognition, as recited in claim 11. Moise col. 3, 11. 34--37,
cited in Ans. 18.
Because the Examiner introduces Moise as a basis for rejecting claims
6 and 11 for the first time in the Response to Arguments in the Answer-but
not in a rejection previously presented in the Final Rejection (Final Act. 2,
4--5), Advisory Action, or the Grounds to be Reviewed on Appeal in the
Answer (see Ans. 2, 4--5), we designate our affirmance of the Examiner's
rejection for claims 6 and 11 (id. at 18-19) a new ground under our
discretionary authority pursuant to 37 C.F.R. § 41.50(b).
Alternatively, even under the Evans-Pryor combination without Moise
(Final Act. 4--5), we are unpersuaded by Appellant's argument that Evans
does not disclose using a speech-operable control in conjunction with a
tongue-operable control. App. Br. 8. Although unstated by the Examiner,
we conclude it would have been obvious for a person to use his or her
tongue to speak words for Evan;s voice-activated control (Evans ,-r 35). So
under this rationale, the combination of Evans and Pryor, without Moise,
teaches claim 4's tongue-operable control, claim 6's speech-operable
control, and claim 11 's speech recognition. Accordingly, we affirm the
Examiner's rejection of claims 6 and 11 under Evans and Pryor, but we
designate this affirmance a new ground of rejection.
Moreover, under this rationale, we enter a new ground of rejection for
claim 4 under 35 U.S.C. § 103 as being obvious over Evans and Pryor alone.
In the rejection of claim 7, the Examiner, likewise, omitted the Moise
reference. See Ans. 5. For similar reasons, we affirm the Examiner's
obviousness rejection of claim 7, which depends from claim 4 and is not
argued separately with particularity (see App. Br. 7-8; Reply Br. 6). That is,
12
Appeal2015-003947
Application 13/306,024
we enter a new ground of rejection for claim 7 under 35 U.S.C. § 103 as
being obvious over (1) Evans and Pryor alone, and alternatively, (2) the
combination of Evans, Pryor, and Moise, as described above.
THE OBVIOUSNESS REJECTION OVER EV ANS AND DANILOV
Claims 12 and 16--20
Claim 12 is reproduced below with our emphasis:
12. A combined vehicle and device for delivering tactile stimuli
to a user of the vehicle comprising:
a vehicle;
a data generating device that generates signals
representative of information regarding the vehicle or
surroundings about the vehicle;
a human interface device having a first surface for
positioning in contact with the tongue of a user of the vehicle and
that receives the signals from the data generating device, the
human interface device providing tactile stimuli to the tongue of
the user of the vehicle from the first surface; and
a control on the first surface of the human interface device
operable by the tongue of the user of the vehicle to select the
signals from the data generating device for operating the human
interface device to deliver tactile stimuli to the tongue of the user
of the vehicle.
Contentions
The basis for rejecting claim 12 differs from claim 1. The Examiner
finds that Evans teaches every limitation of claim 12, except for the human-
interface device in contact with the user's tongue. Ans. 7-8. The Examiner
cites Danilov for this limitation in concluding that the claim would have
been obvious. Id. at 8-10. In particular, the Examiner finds that Danilov's
13
Appeal2015-003947
Application 13/306,024
human interface receives signals from Host PC in Figure 3. Id. at 8 (citing
Danilov i-fi-193-94, 114, 239; Figs. 3, 7, 9, 15, 18-19, 22). According to the
Examiner, Danilov's users feel tactile stimuli and provide feedback in a two-
way communication with the system. Ans. 8-9 (citing Danilov i-fi-1 3 7 4-
518); see also Ans. 14 (citing Danilov i-fi-1 507, 509).
The Examiner further finds that Danilov's tongue-operated device has
a first surface that uses a switching device. Ans. 14 (citing Danilov i-fi-1 507,
515). In the Examiner's view, Danilov's device switches into command-
mode to send information. Ans. 14 (citing Danilov i-fi-1 507, 524-25).
According to the Examiner, Danilov uses a transmitter for transmitting a
signal. Ans. 15 (citing Danilov i-f 124 ).
Appellant argues, in part, that Danilov's two-way communication
lacks the recited control. Reply Br. 3. According to Appellant, Danilov's
command mode does transmit information about the user, but this
transmission contains a person;s position or orientation-not the recited
control. Id. (citing Danilov i1521). Danilov, in Appellant's view, lacks any
description of what is being controlled by the commands in command mode.
Reply Br. 2-3 (citing Danilov i-fi-1 507-21 ).
Appellant further contends that the other embodiments cited by the
Examiner lack the recited control. Reply Br. 4-5. According to Appellant,
Danilov's "Simulator Implant" embodiment only uses one-way
communication. Id. (citing Danilov i-fi-1522-39). In Appellant's view, the
Examiner attempts to combine these other embodiments shown in Figures
18 and 19 without providing any rationale for doing so. Reply Br. 4.
14
Appeal2015-003947
Application 13/306,024
Issue
Has the Examiner established by a preponderance of the evidence that
Danilov would have taught or suggested a control operable by the user's
tongue to select the recited signals, as recited in claim 12?
Analysis
In the rejection, the Examiner cites several different embodiments
from Danilov to address the limitation at issue. See Ans. 8-9, 13-15 (citing
Danilov i1i193-94, 114, 124, 239, 374, 507, 509, 511, 515, 518, 524--25;
Figs. 3, 7, 9, 15, 18-19, 22). We are persuaded by Appellant's arguments
(Reply Br. 2--4) that the Examiner has not shown that any of these
embodiments teach or suggest a control operable by the user's tongue to
select the recited signals. Appellant presents additional arguments, but we
find this argument dispositive.
To address the limitation at issue, the Examiner cites Danilov; s
Example 17: "Tongue-Based 2-Way Communication for Command &
Control." Ans. 9 (citing Danilov i1518); Ans. 14--15 (citing Danilov i1i1507,
509, 511, 515, Fig. 19). In this embodiment, Danilov's device is worn in the
roof of the mouth (Danilov i1 518) and presents patterned stimulation on the
tongue (id. i1507). This device switches into command mode for sending
information. Id.; see also id. i1 519. Danilov later explains that this switch
occurs when the tongue-to-device contact area drops below a threshold.
Id.i-f519.
When in command mode, Danilov's system calculates the area of the
tongue in contact with the surface and derives a command from this area.
Id. This command is sent to a central command or other personnel. Id. The
15
Appeal2015-003947
Application 13/306,024
command's recipient can use the signal as explicit position, orientation, or
other information. Id. Furthermore, in command mode, the device can send
out physiological information for monitoring the user, such as salivary
glucose levels, hydration, among other values. Id. if 521.
We agree with Appellant that the Examiner has not shown these
"commands" select signals from a data-generating device. Reply Br. 2-3.
In fact, the Examiner has not explained how these "commands"---e.g.,
position, orientation, salivary glucose levels, hydration, and the like
(Danilov iii! 519-21 }---could be used to select anything in Danilov or Evans.
At most, Danilov calculates a locus of points representing the contact area
with the device's surface. Id. if 519. But Danilov lacks any disclosure of
using this as the recited control to select signals. See id. iii! 507-21; accord
Reply Br. 2-3.
The Examiner further cites Danilov's Example 18: "Stimulator
Implant.'; Ans. 14--15 (citing Danilov ,-r,-r 524----'25; Fig. 15). In this
embodiment, Danilov implants a stimulator in the user's dermis.
Danilov if 523; Fig. 15, cited in Ans. 14--15. The dermis is the layer of skin
below the epidermis (the outermost skin layer), but above the subcutaneous
layer (primarily fat cells above the muscles). Danilov if 523. The
stimulators are formed of magnetic material in an array to receive tactile
stimulation on the user's abdomen, back, thigh, or other area. Id. if 524.
Danilov places transmitters above the skin to send signals that cause the
stimulators to move. Id. iii! 525-24.
Here again, we agree that the Examiner has not explained how
Danilov's stimulator implants are used as a control to select signals, let
alone, how they are operable by the tongue to do so. See Reply Br. 4--5.
16
Appeal2015-003947
Application 13/306,024
The Examiner finds that the stimulator has a transmitter for transmitting a
signal. Ans. 15 (citing Danilov i-f 124). But at most, the cited portions
describe how the implant structure are actuated by the transmitters. See
Danilov i-fi-1 525-24. That is, Danilov transmits a signal from the transmitter
to the stimulator, not the other way around. See id.
Accordingly, we do not sustain the Examiner's rejection of claim 12,
or claims 16-20, which depend from claim 12.
THE OBVIOUSNESS REJECTION OVER EVANS, PRYOR, AND
DANILOV
We do, however, sustain the Examiner's obviousness rejection of
claims 21-23 3 over Evans, Pryor, and Danilov. Appellant has not pointed
out particular errors in the Examiner's reasoning or presented any additional
substantive analysis of the rejection of these claims. See App. Br. 4--9;
Reply Br. 6. Accordingly, we are not persuaded the Examiner erred in
rejecting these claims for the above-discussed reasons.
CONCLUSIONS
Appellant has not shown that the Examiner erred in rejecting claims 1,
4, 5, 7-10, and 21-24 under 35 U.S.C. § 103.
3 Claim 22 recites, in part, "A device as defined in claim 22 .... "
App. Br. 13, Claims App'x (emphasis added). That is, claim 22, as written,
depends from itself. Because the term "body characteristic" in claim 22 is
only recited in claim 21, though, we treat claim 22, for the purposes of this
appeal, as depending from claim 21, which in tum, depends from claim 1.
Similarly, we presume claim 23 depends from claim 21 and recites "the
body characteristic [is] a component of the saliva chemistry of the user of
the vehicle"-a body characteristic different from that recited in claim 22.
17
Appeal2015-003947
Application 13/306,024
Appellant has shown that the Examiner erred in rejecting claims 6, 11,
12, and 16-20 under 35 U.S.C. § 103.
We newly reject claims 4, 6, 7, and 11 as obvious under 35 U.S.C.
§ 103(a).
DECISION
The Examiner's decision rejecting claims 1, 4--11, and 21-24 is
AFFIRMED.
The Examiner's decision rejecting claims 12 and 16-20 is
REVERSED.
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Rule 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Rule 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless an
18
Appeal2015-003947
Application 13/306,024
amendment or new Evidence not previously of Record is
made which, in the opinion of the examiner, overcomes
the new ground of rejection designated in the decision.
Should the examiner reject the claims, appellant may again
appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the same
Record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
19
Appeal2015-003947
Application 13/306,024
JEFFERY, Administrative Patent Judge, CONCURRING:
I concur with majority's decision, but would affirm the Examiner's
obviousness rejection of claim 1 for different reasons.
Claim 1 recites a device for delivering tactile stimuli to a vehicle user
comprising, among other things, (1) a human interface device that provides
tactile stimuli to the user from its first surface; and (2) a control on the first
surface operable to select signals from a data generating device for operating
the human interface device to deliver tactile stimuli to the user.
I emphasize the word "on" here, for the claim recites that the control
is on the first surface-not part of that surface under the Majority's
interpretation, which equates the frontal surface of Pryor's instrument panel
center stack 101 in Figure Id, including control knob 115, to the recited
surface. Maj. Dec. 5-7. With this interpretation, the Majority effectively
finds that something that is part of that surface also can be "on" that surface.
But as explained below, I would affirm the Examiner; s rejection of claim 1
based on a different interpretation of" on."
The term "on" is not defined in the Specification to so limit its
construction. Under its plain meaning, then, the term "on" is "[u]sed to
indicate position above and supported by or in contact with," or
alternatively, "[u]sed to indicate contact with or extent over (a surface)
regardless of position." THE AMERICAN HERITAGE DICTIONARY OF THE
ENGLISH LANGUAGE 1228 (4th ed. 2006). Other dictionaries define the term
"on" similarly. See LITTLE OXFORD ENGLISH DICTIONARY 475-76 (9th ed.
2006) (defining "on" in pertinent part as "in contact with and supported by a
surface"); see also MERRIAM WEBSTER'S COLLEGIATE DICTIONARY 811
(10th ed. 1993) (noting that "on" is "used as a function word to indicate
20
Appeal2015-003947
Application 13/306,024
position in contact with and supported by the top surface of'); THE
WORDSWORTH CONCISE ENGLISH DICTIONARY 675 (G.W. Davidson et al.
eds. 1994) (defining "on" in pertinent part as "in contact with the upper,
supporting, outer, or presented surface of').
A simple example in this regard is illustrative. For example, when
something is placed on the surface of a table, the thing that is placed is
distinct from the table surface: it is on that surface, but not part of that
surface. So to the extent that the majority would interpret this situation
differently, namely that the thing placed on the table and table surface itself
are the same surface, I find such an interpretation problematic given the
plain meaning of "on," noted above.
To be sure, the term "on" is defined alternatively as "forming a
distinctive or marked part of (the surface of something)" as the Majority
indicates. Maj. Dec. 5 (citing Oxford American dictionary). But given the
context of "on'' in connection with the Examiner's articulated position in the
Answer, namely that the knob 115 is disposed on the first surface of the
instrument panel center stack 101 (Ans. 12-13), I respectfully submit that
the other definitions of "on"-namely those that distinguish the thing
disposed on a surface from the surface itself-more reasonably comport
with the Examiner's position.
Although the Examiner does not state clearly what element in Pryor
constitutes the recited "control," the Examiner nevertheless refers repeatedly
to the knob 115 being on the front surface of the stack-language that tracks
claim 1 's limitation that the control is on the first surface of the human
interface device. See Ans. 12-13 (noting that Pryor's knob 115 is "placed
on the front surface of the highly tactile center stack"); see also id. 13
21
Appeal2015-003947
Application I3/306,024
(finding that Pryor's paragraph 20I and Figure Id teach a control, acoustic
source I25, and knob I I 5, on the first surface to deliver tactile stimuli to the
user). Based on these findings, then, it is reasonable to presume that the
knob I I 5 constitutes the recited "control" under the Examiner's position.
As Pryor indicates in paragraph 208, instrument panel center stack
I 0 I is equipped with a large panel I 05, which is primarily a display screen.
Notably, knob I I5 is mounted on this screen panel I05 so as to be rotatable
thereon. Pryor i-f 2 I 0. Given these teachings in light of the structure shown
in Pryor's Figure Id, Pryor strongly suggests that this knob-based "control"
I I 5 is on the screen panel's surface, namely the "first surface" of a human
interface device.
Furthermore, tactile stimuli is provided to the user from the screen
panel's surface by propagating acoustic waves (1) from source I 25;
(2) through the screen panel I05; and (3) to knob I I5. See Pryor i-f 2IO
(noting that acoustic waves can be felt by the user through the screen panel).
Although the acoustic waves do not originate from the screen panel, but
rather the acoustic source, the screen panel essentially functions as a
propagation medium for the acoustic waves so that they can be felt not only
when the user touches the screen with a finger I 4 I as shown in Figure Id,
but also when the user touches the knob I I5. See Pryor i-f 2I5 (noting that
the user can receive a physical sensation as he touches the knob); see also id.
i-f 223 (noting that the user's finger touching screen I05 in Figure Id can
input data, and information can also be communicated via acoustic source
12 5). In short, but for Pryor' s screen panel, acoustic waves would not be
propagated to knob I I 5 in the system of Figure Id, and the user would not
feel the associated sensations. Therefore, given the screen panel's essential
22
Appeal2015-003947
Application 13/306,024
acoustic wave propagation function, tactile stimuli is provided to the user
from the panel's surface.
To be sure, Pryor's stack includes more than the screen panel, and the
Examiner states, somewhat inartfully, that the knob is placed on the front
surface of the highly tactile center stack. Ans. 12-13. Still, I see no harmful
error in the Examiner's findings here, at least to the extent that the Examiner
intends to map the recited "first surface" to that of Pryor' s screen panel,
particular I y given ( 1) the fact that the screen panel is a key element of that
stack, and (2) the Examiner's reliance on paragraph 210 and its explicit
teachings regarding the knob's mounting on the screen panel.
I would, therefore, affirm the Examiner's rejection of claim 1 for
these reasons.
23