Ex Parte Schaaf et al

Patent Trial and Appeal Board

Oct 31, 2012

10942715 (P.T.A.B. Oct. 31, 2012)

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.
10/942,715 09/16/2004 Klaus Schaaf 11150/81A 2393
26646 7590 10/31/2012
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
SHAPIRO, LEONID
ART UNIT PAPER NUMBER
2699
MAIL DATE DELIVERY MODE
10/31/2012 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 KLAUS SCHAAF ARNE STOSCHEK, BRIAN MICHAEL FINN,
and MICHAEL PRADOS
____________________

Appeal 2010-004471
Application 10/942,715
Technology Center 2600
____________________

Before JOSEPH L. DIXON, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE

Appellants appeal under 35 U.S.C. § 134 (a) from a final rejection of
claims 1-16, 18-28, 31-39, and 41-45. Claims 17, 29, 30, 40 and 46 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

A. INVENTION
According to Appellants, the invention generally relates to a display
device, e.g., for a motor vehicle, having a touch screen for the visual display
of information and for the input of commands, and having an actuator for
moving the touch screen in a direction essentially perpendicular to the touch
screen (Spec. 1, ll. 8-12).

B. ILLUSTRATIVE CLAIMS
Claims 1 and 16 are exemplary and are reproduced below:
1. A display device, comprising:

a touch screen configured to visually display information and to
input commands; and

an actuator configured to move the touch screen in a direction
substantially perpendicular to the touch screen, the touch screen
movable by the actuator by more than 2 mm in the direction
substantially perpendicular to the touch screen.

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16. A display device, comprising:

a touch screen configured to visually display information and to
input commands;

an actuator configured to move the touch screen in a direction
substantially perpendicular to the touch screen; and

a control configured to trigger the actuator to move the touch
screen in the direction substantially perpendicular to the touch screen
to confirm a command input by the touch screen.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rosenberg US Pat. 6,429,846 B2 Aug. 6, 2002
Goldenberg US Pat. 6,636,197 B1 Oct. 21, 2003

Claims 16 and 39 stand rejected under 35 U.S.C. § 102(b) over
Rosenberg.
Claims 1-8, 12-15, 18-22, 27, 28, 31-38, and 41-45 stand rejected
under 35 U.S.C. § 103(a) over Rosenberg.
Claims 9-11 and 23-26 stand rejected under 35 U.S.C. § 103(a) over
Rosenberg and Goldenberg.
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II. ISSUE
Did the Examiner err in finding that Rosenberg would have taught or
suggested “an actuator configured to move the touch screen in a direction
substantially perpendicular to the touch screen” (claim 1 and 16), “the touch
screen movable by the actuator by more than 2 mm” (claim 1)?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Rosenberg
Rosenberg discloses a haptic feedback planar touch control, wherein
at least one actuator is coupled to a touch input device and outputs a force to
provide a haptic sensation to the user contacting the touch surface
(Abstract).

IV. ANALYSIS
Claims 16 and 39
As for claims 16 and 39, Appellants contend that Rosenberg does not
disclose moving a touch screen “to confirm a command input by the touch
screen” and is “silent as to an amount of movement of a touch screen” (App.
Br. 5).
We note that although Appellants argue that Rosenberg is silent as to
the amount of movement, such argument is not commensurate in scope with
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the language of claim 16 or claim 39 on appeal. That is, claims16 and 39 as
appealed do not require movement by any “amount” but rather merely
requires that the touch screen be moved “in a direction substantially
perpendicular to the touch screen.” Appellants appear to be arguing
language in a proposed Amendment After Final dated December 18, 2008,
however, as indicated in the Advisory Action dated December 23, 2008, the
proposed Amendment has not been entered upon appeal.
Rosenberg discloses an actuator coupled to a touch input device and
outputs a force to provide a haptic sensation to the user (FF). We find
Rosenberg to disclose “an actuator configured to move the touch screen in a
direction substantially perpendicular to the touch screen” as claimed.
Furthermore, we find the haptic sensation provided by the movement to be a
confirmation of the input command. Thus, we find Rosenberg to also
disclose moving a touch screen “to confirm a command input by the touch
screen” as claimed.
We also note that claims 16 and 39 merely require that the movement
is provided “to confirm” the input rather than positively reciting a step of
confirming the input. Similarly, claim 16 merely requires an actuator
“configured to move the touch screen” rather than an actuator moving a
touch screen. We find such “to confirm” or “to move” language to merely
represent a statement of intended purpose of the movement and the intended
use of the actuator which does not limit the claims. That is, such intended
purpose or use will not limit the scope of the claim because it merely defines
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a context in which the invention operates. Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
Accordingly, we find that the Examiner did not err in rejecting claims
16 and 39 over Rosenberg.
Claims 1-8, 12-15, 18-22, 27, 28, 31-38, and 41-45
As to claims 1 and 31, Appellants repeat that “Rosenberg is absolutely
silent as to an amount of movement of a touch screen” (App. Br. 7).
However, the Examiner concludes that “[i]t generally [is] considered to be
within the ordinary skill in the art to adjust, vary, select or optimize the
numerical parameters or values of any system absent of showing criticality
of… a particular recite value” (Ans. 4). According to the Examiner, it
would have been obvious “to implement the touch screen movable by the
actuator by more than 2mm” because “[s]uch a limitation would have been
considered as [an] obvious variation” (id.).
As discussed above, we find that Rosenberg discloses “an actuator
configured to move the touch screen in a direction substantially
perpendicular to the touch screen” (claim 1, emphasis added). Further, we
find that the touch screen is movable by an amount that is substantial enough
to provide a confirming haptic sensation to the user. That is, we find that
one of ordinary skill in the art would have found it obvious that the touch
screen of Rosenberg is capable of being moved by the actuator by more than
2 mm. Thus, we find that Rosenberg at the least suggests a touch screen
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“movable” by the actuator “by more than 2 mm” as required by claim 1 and
similarly required by claim 31.
Our reviewing court has found that obviousness does not require
absolute predictability, only a reasonable expectation of success, i.e., a
reasonable expectation of obtaining similar properties. See, e.g., In re
O'Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988). Appellants have identified
no support in the record and submitted no extrinsic evidence in the record
for surprising and unexpected benefits to the particular range of “more than
2mm.” Since Appellants bear the burden of persuasion at this point in the
prosecution and have not presented any evidence of criticality of the range,
we are not persuaded by the Appellants’ mere unsupported arguments.
Appellants can rebut a prima facie case of obviousness by showing
the criticality of the claimed range. “The law is replete with cases in which
the difference between the claimed invention and the prior art is some range
or other variable within the claims. . . . [I]n such a situation, the applicant
must show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range.” In
re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). As stated above,
Appellants have not met the burden by providing any evidence of criticality.
When there is motivation to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). The fact that an
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option was obvious to try might show that it was obvious under § 103. Id.
This reasoning is applicable here.
We find no error in the Examiner’s conclusion that “[i]t generally [is]
considered to be within the ordinary skill in the art to adjust, vary, select or
optimize the numerical parameters or values of any system absent of
showing criticality of… a particular recite value” (Ans. 4), and that it would
have been obvious “to implement the touch screen movable by the actuator
by more than 2mm.” Appellants have presented no evidence that providing
haptic movement “more than 2mm” (claim 1) was “uniquely challenging or
difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-419).
Accordingly, we find that the Examiner did not err in rejecting claims
1 and 31 over Rosenberg. Appellants do not provide arguments with respect
to the rejection of claims 2-8, 12-15, 18-22, 27, 28, 32-38, and 41-45
separate from those of claims 1 and 31 from which they respectively depend
(App. Br. 7). Therefore, we find that the Examiner also did not err in
rejecting claims 2-8, 12-15, 18-22, 27, 28, 32-38, and 41-45 over Rosenberg.
Claims 9-11 and 23-26
As for claims 9-11 and 23-26, Appellants contend that “Goldenberg
does not cure the critical deficiencies of Rosenberg” (App. Br. 8). However,
as discussed above, we find no deficiencies with respect to Rosenberg.
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Further, with respect to claims 10 and 24, Appellants merely repeat
the claim language and add that “Goldenberg does not disclose, or even
suggest” the claim language (id.). However, a statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii). See
also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693,
2009 WL 2477843, at *3-4 (BPAI Aug. 10, 2009) (informative). We find no
error in the Examiner’s finding that Goldenberg teaches and at the least
suggests the claim language (Ans. 6).
Accordingly, we also find that the Examiner also did not err in
rejecting claims 9-11 and 23-26 over Rosenberg in further view of
Goldenberg.

V. CONCLUSIONS AND DECISION
We affirm the Examiner’s rejection of claims 16 and 39 under 35
U.S.C. § 102(b), and of claims 1-15, 18-28, 31-38, and 41-45 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).

AFFIRMED

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