Ex Parte Olien

Patent Trial and Appeal Board

Sep 10, 2015

12334189 (P.T.A.B. Sep. 10, 2015)

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.
12/334,189 12/12/2008 Neil T. Olien 51851-353776 7758
34300 7590 09/11/2015
Kilpatrick Townsend and Stockton, LLP
1001 W Fourth Street
Winston-Salem, NC 27101
EXAMINER
TUNG, DAVID
ART UNIT PAPER NUMBER
2694
MAIL DATE DELIVERY MODE
09/11/2015 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 NEIL T. OLIEN1
________________

Appeal 2013-008158
Application 12/334,189
Technology Center 2600
________________

Before JOHN G. NEW, DANIEL N. FISHMAN, and
CATHERINE SHIANG, Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellant states the real party-in-interest is Immersion Corporation. App.
Br. 1.
Appeal 2013-008158
Application 12/334,189

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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–9, 12, and 13 as unpatentable under
35 U.S.C. § 103(a) as being anticipated by Hayward et al. (US
2004/0164971 A1, August 26, 2004) (“Hayward”) and Duarte (US
6,636,419 B2, October 21, 2003) (“Duarte”).2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellant’s invention is directed to systems and methods for
stabilizing haptic touch panels or touch surfaces. One disclosed system
includes a housing having a base; and a touch sensitive input device. The
apparatus further includes a first support member coupled to the base via a
first hinge and coupled to the touch sensitive input device via a second
hinge; a second support member coupled to the base via a third hinge and
coupled to the touch sensitive input device via a fourth hinge; wherein the
first support member and the second support member are configured to
facilitate movement of the touch sensitive input device in a first degree of
freedom. Abstract.

REPRESENTATIVE CLAIM

2 Claims 10 and 11 are canceled. See App. Br. 2.
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Appellant argues all of the claims together. App. Br. 14. Claim 1 is
representative and recites:
1. A system, comprising:

a housing having a base;

a touch sensitive input device;

a first support member coupled to the base via a first
hinge and coupled to the touch sensitive input device via a
second hinge;

a second support member coupled to the base via a third
hinge and coupled to the touch sensitive input device via a
fourth hinge; and

wherein the first support member and the second support
member are configured to facilitate movement of the touch
sensitive input device in a first degree of freedom, and wherein
the touch sensitive input device is substantially fixed in a
vertical degree of freedom.

App. Br. 16.

ISSUE
Appellant argues the Examiner erred in finding the combined cited
prior art references teach or suggest the limitations of claim 1 reciting:
“wherein the touch sensitive input device is substantially fixed in a vertical
degree of freedom.” App. Br. 12.

ANALYSIS
Appellant asserts the Final Office Action combines support members
140 and 142 of Hayward to the system disclosed by Duarte. App. Br. 12.
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Appellant argues that such a combination would not be a device “wherein
the touch sensitive input device is substantially fixed in a vertical degree of
freedom,” as required by claim 1. Id. According to Appellant, replacing
Duarte's support members 150–153 with Hayward’s compliant elements 140
and 142 would not render display 102 immobile in a vertical direction. Id. at
12–13 (citing Duarte Fig. 4A). Rather, argues Appellant, the movement of
Duarte’s display 102 is made possible by pivots 154–157, which enable the
display to move from the position shown in Duarte’s Figure 4 both
horizontally and vertically into the positions shown in Figures 4A and 4B.
Duarte’s Figures 4A and 4B are reproduced below:

Figures 4A and 4B of Duarte depicts an embodiment of a
handheld keyboard and display device in different positions.

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Appellant further argues that, if the combination of Hayward and
Duarte would prevent vertical movements of display 102, such a
combination would render the system disclosed by Duarte non-functional for
its intended purpose. App. Br. 14. Appellant asserts that Duarte describes
that the display moves both horizontally and vertically out of its position
covering the keyboard. Id. (citing Duarte, cols. 3– 4, ll. 58–20. Appellant
contends that if the display disclosed by Duarte could not move both
horizontally and vertically, it could not be moved to the open position to
uncover the keyboard and, therefore, a person of ordinary skill in the art
would not be motivated to make such a combination. Id.
We are not persuaded by Appellant’s arguments. As an initial matter,
it is necessary for the panel to construe the claim term “vertical degree of
freedom,” as recited in claim 1.3 Claim terms are construed in light of
Appellant’s Specification. See SanDisk Corp. v. Kingston Technology Co.,
Inc., 695 F.3d 1348, 1353 (Fed. Cir. 2012). Figure 2 of Appellant’s
Specification is reproduced below:

3 The panel suggests in passing that, should prosecution continue with
respect to this Application, the Examiner may also wish to determine if
claim 1 is unpatentable under 35 U.S.C. § 112, second paragraph, because
the claim term “vertical degree of freedom,” as recited in claim 1, is likely
indefinite.
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Figure 2 of Appellant’s Specification depicts is an illustration
of an embodiment of a system to stabilize a haptic touch panel
or touch surface

Appellant’s Specification recites: “[a]s illustrated in Figure 2, the first
hinge 111 and the second hinge 112 are aligned such that axis 121 is parallel
to axis 122. By aligning each axis 121, 122, the first support member 103
may pivot about each hinge 111, 112, and move in a lateral direction 115.”
Spec. ¶ 29. Furthermore, such movement would necessarily move screen
101 closer to base 102 (i.e., along axis 116). See also Spec. Figs. 1A, 1B.
Consequently, the only axis of freedom along which screen 101 cannot
move is axis 117, which is parallel to the axes of the hinges 111–114.
Because claim 1 explicitly recites “the touch sensitive input device is
substantially fixed in a vertical degree of freedom,” we conclude that the
claim term “vertical degree of freedom” must necessarily correspond to axis
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117, i.e., an axis located in the plane of screen 101 and orthogonal to lateral
axis 115.
However, Appellant argues, with respect to Figure 4 of Duarte, that
movement corresponding to axis 116 of Figure 2, that is, moving the screen
closer to the base, defines the “vertical degree of freedom.” See App. Br.
12–13. This argument is not persuasive because it is directly at odds with
the disclosures of Appellant’s own Specification, which require that the
vertical degree of freedom corresponds to axis 117. Consequently, we agree
with the Examiner that the combination of Hayward and Duarte teaches the
limitation of claim 1 reciting “wherein the touch sensitive input device is
substantially fixed in a vertical degree of freedom.” See Ans. 11.
Moreover, because we agree with the Examiner that the combination
of Hayward and Duarte in fact teaches the screen is “substantially fixed in a
vertical degree of freedom,” we are not persuaded by Appellants’ argument
that the combination of the references would render Duarte unsuitable for its
intended purpose. As we have explained, the claim term “vertical degree of
freedom” as used in claim 1, and explained in Appellants’ Specification,
does not refer to movement along the same axis that Appellants argue is the
“vertical” axis in Duarte but in fact along an axis orthogonal to it. We agree
with the Examiner that Duarte teaches no movement along the vertical axis
as defined by Appellants’ Specification. Consequently Appellants’ argument
that the combination would render Duarte unfit for its intended purpose is
without merit.
We further agree with the Examiner it would have been obvious to a person
having ordinary skill in the art at the time of the invention to simply
substitute the support members of the system of Hayward, with the support
members as taught by Duarte, for the purposes of achieving the predictable
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result of connecting the upper portion and base of the electronic device and
allowing for a lateral degree of freedom between the upper portion and base.
See Ans. 11. We consequently affirm the Examiner’s rejection of the
claims.
DECISION
The Examiner’s rejection of claims 1–9, 12, and 13 as unpatentable
under 35 U.S.C. § 103(a) is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010).

AFFIRMED
kis