Ex Parte Ramsay et al

Patent Trial and Appeal Board

Feb 28, 2017

13046263 (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.
13/046,263 03/11/2011 Erin Ramsay IMM344 (51851/371384) 4516
7590
Kilpatrick Townsend and Stockton, LLP
1001 W Fourth Street
Winston-Salem, NC 27101
EXAMINER
MATTHEWS, ANDRE L
ART UNIT PAPER NUMBER
2621
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):
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 ERIN RAMSAY and PEDRO GREGORIO
Appeal 2016-004682
Application 13/046,2631
Technology Center 2600
Before ROBERT E. NAPPI, JOHN P. PINKERTON, and
MATTHEW J. McNEILL, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 5—18, 20, 22, and 23, which are the only
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm and designate our decision as a new ground of rejection
under 37 C.F.R § 41.50(b).
1 Appellants identify Immersion Corporation as the real party in interest.
App. Br. 1.
Appeal 2016-004682
Application 13/046,263
STATEMENT OF THE CASE
Introduction
Appellants’ disclosed and claimed invention generally relates “to
haptic feedback and systems and methods for pre-touch and true touch.
Spec. 12.2
Claim 1 is representative and reproduced below (with the disputed
limitations emphasized)'.
1. A system comprising:
a touch-sensitive interface configured to detect a user
interaction and transmit a first interface signal based at least in
part on the user interaction, wherein the touch-sensitive
interface is configured to detect the user interaction before a
physical contact and transmit the first interface signal based at
least in part on the user interaction before the physical contact,
and wherein the touch-sensitive interface is configured to detect
the physical contact and transmit a second interface signal
based at least in part on the physical contact',
a processor in communication with the touch-sensitive
interface and configured to receive the first interface signal and
determine a haptic effect based at least in part on the first
interface signal, the processor further configured to preload a
haptic signal associated with the haptic effect',
a cache in communication with the processor and
configured to store the preloaded haptic signal for a time
period, then transmit the haptic signal; and
a haptic effect generator in communication with the
cache and configured to receive the haptic signal from the cache
2 Our Decision refers to the Final Action mailed Feb. 12, 2015 (“Final
Act.”); Appellants’ Appeal Brief filed Aug. 20, 2015 (“App. Br.”) and Reply
Brief filed Apr. 4, 2016 (“Reply Br.”); the Examiner’s Answer mailed Feb.
3, 2016 (“Ans.”); and the original Specification filed Mar. 11, 2011
(“Spec.”).
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Application 13/046,263
and output a haptic effect based at least in part on the haptic
signal.
App. Br. 19 (Claims App’x).
Rejection on Appeal
Claims 1, 2, 5—18, 20, 22, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Waldman (US 5,311,175; issued May
10, 1994), Braun et al. (US 2004/0104924 Al; published June 3, 2004)
(“Braun”), and Hoellwarth (US 2010/0079264 Al; published Apr. 1, 2010).
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Briefs 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—8) and in the Examiner’s Answer (Ans. 2—5), and we concur
with the conclusions reached by the Examiner. For emphasis, we consider
and highlight specific arguments as presented in the Briefs.
Rejection of Claims 1, 2, 5—18, 20, 22, and 23 under § 103(a)3
Appellants’ First, Second, and Third Arguments
Appellants argue the combination of references fails to teach or
suggest “the processor further configured to preload a haptic signal
associated with the haptic effect,” as recited in claim 1. App. Br. 14. In
particular, Appellants argue the portions of Waldman cited by the Examiner,
3 Claim 1 is the only claim separately argued by Appellants. See App. Br.
14—18. Thus, we decide the rejection of these claims on the basis of
representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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col. 6,11. 25—38 and col. 6,11. 19—23, are related to buffering a digit for
dialing a telephone instead of providing a haptic effect. Id. 14—16; Reply Br.
1—2. Appellants also argue, while Waldman mentions using “dynamic
tactile feedback” for the blind or deaf, “it does not discuss storing this
feedback in elements 2—6 and 2—7, as the Examiner proposes.” App. Br.
15—16 (citing Waldman 10:29—33, 11:54—68). Appellants further argue,
although the Examiner cites Braun as teaching a memory and force output
management system for a force feedback system, it would not be obvious to
replace elements 2—6 and 2—7 of Waldman because they are used for
buffering a digit for dialing a telephone and “[replacing these components
with the memory of Braun would render them inoperable for their intended
purpose.” Id. at 16—17. Appellants also argue the Examiner has not
established a motivation to combine Waldman and Braun in the Answer.
Reply Br. 2.
We do not find Appellants’ arguments persuasive. The Examiner
finds, and we agree, Waldman teaches a store and forward method in which
a user touches a button to store a number in the buffer memory and the
number is identified or provided to the user through audio feedback or the
feedback could be tactile. Ans. 2 (citing Waldman 6:25—38, 10:24—36); see
also Waldman 6:17—23. The Examiner also finds, and we agree, Waldman
teaches “a contact and press method where the system will recognize contact
with a button [and] then execute a function one the button is pressed.” Id.
(citing Waldman 12:60-66, 13:1—20); see also Waldman 6:29-36 (“responds
to a Press by . . . also decoding the [Pressed] key . . . buffering the
appropriate digit for dialing (2—6) . . . [and] [u]pon decoding a SND (2—16)
Press, the system forwards the contents of the dialing means to the line
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interface (2—7)”). The Examiner further finds Waldman teaches “the
contacted button is stored in the buffer until the SND is pressed and is fully
identified before completing the dial function [and] it would be understood
that the signal associated with each numeric key is pre-loaded then it is
provided as (tactile) feedback to the user once the user presses the SND
key.” Ans. 2—3 (citing Waldman 6:35—49). In that regard, we note that
column 6, lines 39-43 of Waldman state “the system could be configured to
identity the entire telephone number currently held in the dialing buffer on a
SND Touch, thereby confirming the number before it is sent to the line
interface by a SND Press”). Thus, we agree with the Examiner’s finding
that Waldman teaches or at least suggests the tactile signal associated with
each numeric key is pre-loaded and, therefore, we find Waldman teaches or
at least suggests “the processor further configured to preload a haptic signal
associated with the haptic effect,” as recited in claim 1. See Merck & Co.,
Inc. v. Biocraft Labs, Inc., 874 F. 2d 804, 807—808 (Fed. Cir. 1989) (“the
question under 35 U.S.C. 103 is not merely what the references expressly
teach but what they would have suggested to one of ordinary skill in the art
at the time the invention was made”).
We also do not find Appellants’ arguments concerning Braun
persuasive. First, we are not persuaded by Appellants’ argument that
replacing elements 2—6 and 2—7 of Waldman with the memory of Braun
would render them inoperable for their intended purpose because this
argument is premised on the physical or bodily incorporation of Braun with
Waldman. See App. Br. 16—17. In that regard, we agree with the Examiner
that a determination of obviousness based on teachings from multiple
references does not require an actual, physical substitution of elements. In
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Application 13/046,263
re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). “The test for obviousness
is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it that the
claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.” In re Keller, 642
F.2d 413, 425 (CCPA 1981). We also agree with the Examiner that Braun
teaches “being able to store/pre-load a haptic effect into cache memory and
then access the memory when the haptic effect is ready to be used” and that
storing haptic signals in cache memory and later accessing the signal for use,
as taught by Braun, can be incorporated into the phone dialing system as
taught by Waldman without rendering the phone dialing method inoperable.
Ans. 3^4; see also Final Act. 3 (citing Braun H 11, 12).
Second, we are not persuaded by Appellants’ argument the Examiner
has not established a motivation to combine Waldman and Braun. See Reply
Br. 2. The Examiner finds it would have been obvious to a person of
ordinary skill in the art to combine the idea of storing and forwarding haptic
effects, as taught by Waldman, with the method of storing a force effect in
cache memory until it is needed, as taught by Braun, because “[t]his
combination would yield a device that provides a user with haptic feedback
when needed to avoid erroneous use of the device.” See Final Act. 3^4. We
agree with the Examiner’s stated rationale for combining Waldman and
Braun and find it constitutes articulated reasoning with some rational
underpinning in accordance with KSR Int’l Co. v. Teleflex Co., 550 U.S. 398,
418 (2007).
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Appellants’ Fourth and Fifth Arguments
Appellants argue the combination of references fails to teach or
suggest “a processor in communication with the touch-sensitive interface
and configured to receive the first interface signal and determine a haptic
effect based at least in part on the first interface signal,” as recited in claim
1. App. Br. 17. In particular, Appellants argue this limitation requires a
haptic effect generated based in part on user interaction before physical
contact, which is not taught or suggested by Waldman’s teaching of tactile
feedback based on touch/press key information. Id.; Reply Br. 2.
Appellants also argue Hoellwarth does not teach or suggest “wherein the
touch-sensitive interface is configured to detect the physical contact and
transmit a second interface signal based at least in part on the physical
contact” because Hoellwarth “does not discuss ‘a second interface signal
based at least in part on the physical contact.’” App. Br. 17; Reply Br. 3.
Although we agree with Appellants’ argument that Waldman does not
teach the first interface signal based in part on user interaction before
physical contact, the Examiner finds, and we agree, “Hoellwarth teaches a
haptic feedback system wherein the touch-sensitive interface is configured to
detect the user interaction before a physical contact and transmit the first
interface signal based at least in part on the user interaction before the
physical contact.” Final Act. 4 (citing Hoellwarth | 6). In that regard,
paragraph 6 of Hoellwarth explains the system includes “a sensor
arrangement configured to detect a location of an object in close proximity
to the surface . . . [and] includes a haptic signal generator configured to
produce a haptic signal when an object is detected.” We interpret this
portion of Hoellwarth to teach that a haptic signal is produced when an
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object is detected in close proximity to the surface, i.e., before physical
contact. Thus, we find Hoellwarth teaches “a processor in communication
with the touch-sensitive interface and configured to receive the first interface
signal and determine a haptic effect based at least in part on the first
interface signal,” as recited in claim 1.
Although the Examiner finds paragraphs 5 and 6 of Hoellwarth teach
“wherein the touch-sensitive interface is configured to detect the physical
contact and transmit a second interface signal based at least in part on the
physical contact” (see Final Act. 4; Ans. 5), we do not agree with this
finding, but instead are persuaded by Appellants’ argument that Hoellwarth
does not teach a second interface signal based at least in part on the physical
contact. App. Br. 17; Reply Br. 3. However, we find Waldman teaches “a
second interface signal based at least in part on the physical contact”
because, as discussed supra, the touch/press system of Waldman teaches an
audio or tactile signal is transmitted based on physical contact by touching
or pressing a key or button. See Waldman 6:17-49; 10:24—36. Thus, we
find Waldman teaches or suggests “wherein the touch-sensitive interface is
configured to detect the physical contact and transmit a second interface
signal based at least in part on the physical contact,” as recited in claim 1.
DECISION
We affirm the Examiner’s rejection of claims 1, 2, 5—18, 20, 22, and
23 under 35 U.S.C. § 103(a). Because our analysis above differs from
the Examiner’s rejection, we designate this a new ground of rejection.
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).
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Application 13/046,263
37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
AFFIRMED
37 C.F.R, $ 41.50(b)
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