Immersion Corporation

Patent Trials and Appeals Board

Mar 4, 2021

2019006619 (P.T.A.B. Mar. 4, 2021)

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.
15/374,171 12/09/2016 Juan Manuel Cruz-Hernandez IMM663
(051851-1017728)
5558
34300 7590 03/04/2021
Immersion / Kilpatrick Townsend and Stockton
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
PITARO, RYAN F
ART UNIT PAPER NUMBER
2198
NOTIFICATION DATE DELIVERY MODE
03/04/2021 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
ipefiling@kilpatricktownsend.com
kts_imm_docketing@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JUAN MANUEL CRUZ-HERNANDEZ,
LIWEN WU, NEIL T. OLIEN, DANNY A. GRANT, and
JAMAL SABOUNE
____________________

Appeal 2019-006619
Application 15/374,171
Technology Center 2100
____________________

Before ERIC S. FRAHM, LARRY J. HUME, and
SCOTT E. BAIN, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1, 3–12, and 14–21, which constitute all pending claims on appeal.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). “The word ‘applicant’ when used in this title refers
to the inventor or all of the joint inventors, or to the person applying for a
patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as Immersion Corporation (Appeal Br. 1).
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Claims 2 and 13 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
DISCLOSED AND CLAIMED INVENTION
According to Appellant, the disclosed invention, entitled “Systems
and Methods for Compliance Illusions with Haptics” (Title), “relates to the
field of user interface devices” (Spec. ¶ 1), and more particularly to touch-
sensitive displays for mobile and other devices (see Spec. ¶ 2). Appellant
recognizes that because “[m]ixed reality and virtual reality have both also
become increasingly popular” (Spec. ¶ 2), “there is a need for haptic effects
in mixed reality or virtual reality environments” (Spec. ¶ 2). Appellant
discloses and claims a system (claim 1), method (claim 12), and non-
transitory computer readable medium configured to perform a method (claim
21), to output or transmit a haptic signal comprising a carrier wave having a
magnitude that is varied in accordance with the pressure of a sensed user
gesture (see Fig. 5; Spec. ¶¶ 64–72; claims 1, 12, 21). Independent claim 1
is illustrative of the claimed subject matter:
1. A system comprising:
a user interface device comprising:
a sensor configured to detect a gesture;
a haptic output device configured to output haptic
effects; and
a processor coupled to the sensor and the haptic output
device, the processor configured to:
receive a sensor signal from the sensor;
determine a user interaction with a virtual object;
determine a haptic effect based in part on the sensor
signal and the user interaction; and
transmit a haptic signal associated with the haptic
effect to the haptic output device, wherein the haptic
signal comprises a carrier wave having a magnitude and
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wherein the processor is configured to vary the magnitude
based in part on a pressure of the gesture.

Appeal Br. 17 (formatting and emphases added).
REJECTIONS
The Examiner made the following rejections:
(1) Claims 1, 3–9, 11, 12, 14–19, 21 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Jiang (US 2015/0309575 A1; published
Oct. 29, 2015) and Morrell et al. (US 2016/0063826 A1; published March 3,
2016) (hereinafter, “Morrell”).2 Final Act.4–13; Ans. 3–5.
(2) Claims 10 and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Jiang, Morrell, and Nakamura et al. (US 2017/0220112
A1; published Aug. 3, 2017) (hereinafter, “Nakamura”). Final Act. 14.
Appellant’s Contentions
With regard to the obviousness rejections of claims 1, 3–9, 11, 12, 14–
19, and 21, Appellant primarily argues the merits of independent claim 1
(see Appeal Br. 13–15; Reply Br. 1–3), and makes similar arguments as to
the patentability of independent claims 12 and 21 (which have similar scope)
(see Appeal Br. 16), as well as dependent claims 3–9, 11, and 14–19 (see
Appeal Br. 16). As to independent claim 1, Appellant contends (Appeal Br.
13–15; Reply Br. 1–3) that the Examiner erred in rejecting claim 1 under

2 The Examiner mistakenly includes claims 2 and 13 in the heading of the
statement of the Final Rejection (see p. 4). We consider this harmless error,
as claims 2 and 13 have been canceled, the cover page of the Final Rejection
states that only claims 1, 3–12, and 14–21 are pending and rejected (p. 1,
boxes 5 and 7), and the body of the rejection does not address claims 2 and
13 on the merits (see e.g., Final Act. 7, 11).
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35 U.S.C. § 103 because Morrell, and thus the combination of Jiang and
Morrell, fails to teach or suggest a haptic signal as recited in claim 1.
With regard to the obviousness rejection of claims 10 and 20,
Appellant relies on the arguments presented as to claims 1 and 12 from
which claims 10 and 20 respectively depend (see Appeal Br. 16).
Based on Appellant’s obviousness arguments, and because claims 1,
3–9, 11, 12, 14–19, and 21 contain commensurate limitations, we select
claim 1 as representative of claims 1, 3–9, 11, 12, 14–19, and 21 rejected
under 35 U.S.C. § 103 for obviousness over the base combination of Jiang
and Morrell. For similar reasons, we decide the outcome of claims 10 and
20 (rejected over the same base combination taken with Nakamura), which
depend from respective ones of claims 1 and 12, on the same basis as
claim 1.
Principal Issue on Appeal
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 13–
16) and the Reply Brief (Reply Br. 1–3), the following principal issue is
presented on appeal:
Did the Examiner err in rejecting claims 1, 3–12, and 14–21 as being
unpatentable, over the base combination of Jiang and Morrell taken with the
knowledge of a person having ordinary skill in the art of haptic signals,
because the resultant combination fails to teach or suggest transmitting a
haptic signal comprising a carrier wave and a magnitude, as recited in
representative claim 1?
ANALYSIS
We have reviewed the Examiner’s obviousness rejections of claims 1,
3–12, and 14–21 (Final Act. 4–14) and response to Appellant’s arguments in
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the Appeal Brief (Ans. 3–5), in light of Appellant’s arguments in the Appeal
Brief (Appeal Br. 13–16) and the Reply Brief (Reply Br. 1–3) that the
Examiner has erred.
With regard to representative independent claim 1, we adopt as our
own (1) the findings and reasons set forth by the Examiner in the Action
from which this appeal is taken (Final Act. 4–7),3 and (2) the reasons set
forth by the Examiner in the Examiner’s Answer (Ans. 3–5) in response to
Appellant’s Appeal Brief. We disagree with Appellant’s arguments
(see Appeal Br. 13–15; Reply Br. 1–3). We concur with the findings and
conclusions reached by the Examiner, and conclude that it would also
have been obvious and predictable to one of ordinary skill in the art of haptic
interfaces and signals to use amplitude modulation to modulate a sinusoidal
carrier wave with an input signal to produce an output signal.4 We provide
the following for emphasis only.

3 We note that Morrell’s input waveform 2210 shown in Figure 22A is used
to modulate a sine and carrier wave to produce an output waveform 2230
varying by amplitude as shown in Figure 22B (see also ¶¶ 227–231; Figs.
6A, 6B; ¶¶ 192–194). Morrell also suggest that “any regular periodic
oscillating wave” may be used, as well as the disclosed sine wave (see
¶ 194). Notably, Morrell teaches that the haptic output signal is preferably
at “a frequency of between approximately 59Hz and 87Hz (see ¶ 192),
which overlaps with Appellant’s disclosed preference “to have frequencies
from 80Hz to 300Hz” (Spec. ¶ 71).
4 “‘[T]he question under 35 USC 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.’” Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545
F.2d 747, 750 (CCPA 1976)) (emphasis added); see also Randall Mfg. v.
Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (“[T]he [KSR] Court required an
analysis that reads the prior art in context, taking account of ‘demands
known to the design community,’ ‘the background knowledge possessed by
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Appellant does not dispute the Examiner’s findings regarding Jiang as
to claim 1, nor does Appellant dispute the Examiner’s motivation for
modifying Jiang with Morrell. The Examiner determines that “Jiang does
not appear to explicitly disclose a limitation wherein the haptic signal
comprises a carrier wave having a magnitude” (Final Act. 6). The Examiner
relies on Morrell for this limitation (see Final Act. 6–7; Ans. 3–5).
Although Morrell does not explicitly describe modifying a sinusoidal
carrier wave of a haptic signal using amplitude modulation, it is strongly
suggested by output waveform 2230 which varies by amplitude as shown in
Figure 22B (see also ¶¶ 227–231 (describing Figs. 22A and 22B); Figs. 6A,
6B; ¶¶ 192–194 (describing Figs. 6A and 6B)). In addition, one of ordinary
skill in the art of haptic signals would understand that a haptic signal could
beneficially be comprised of an input signal modulated using amplitude
modulation with a sinusoidal carrier wave to produce a haptic output signal
that varies by amplitude. Furthermore, we take judicial notice5 of the fact

a person having ordinary skill in the art,’ and ‘the inferences and creative
steps that a person of ordinary skill in the art would employ.’” (quoting KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007))); In re Taylor Made
Golf Company, Inc., 589 F. App’x 967 (Fed. Cir. 2014) (the Board erred in
failing to consider the prior art in the context of the background knowledge
that a person of ordinary skill in the art would have had); Finisar Corp. v.
DirecTV Grp., Inc., 523 F.3d 1323, 1336 (Fed. Cir. 2008) (to determine the
“meaning of a prior art reference,” the Board must incorporate “the
understanding of an artisan of ordinary skill.”); MPEP § 2123.
5 “Judicial notice permits proof by evidence to be dispensed with where
common knowledge supports the truth of a proposition. Judicial notice also
may be taken of facts though they are neither actually notorious nor bound to
be judicially known, yet they would be capable of such instant and
unquestionable demonstration, if desired, that no party would think of
imposing a falsity on the tribunal in the face of an intelligent adversary.” In
re Knapp-Monarch Company, 296 F.2d 230, 232 (C.C.P.A. 1961); see also
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that an ordinarily skilled artisan would have recognized that it would
have been obvious and predictable to one of ordinary skill in the art of haptic
interfaces and signals to use amplitude modulation to modulate a sinusoidal
carrier wave with a haptic input signal to produce a haptic output signal.6
We note our agreement with the Examiner (see Ans. 4–5) that any
argument Appellant presents as to Morrell being relied on as teaching the
final part of claim 1, namely varying a magnitude based on part on a
pressure of a gesture, is unpersuasive inasmuch as the Examiner relies upon
Jiang (as to the pressure of a gesture) in combination with Morrell (varying a
signal by amplitude) for this limitation. We note that each reference cited by
the Examiner must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (finding one cannot show non-obviousness by
attacking references individually where the rejections are based on
combinations of references). In this light, the base combination of Jiang and
Morrell, along with the knowledge of the ordinarily skilled artisan teach or
suggest a haptic signal having the composition recited in claim 1.
We also emphasize that the Examiner’s ultimate legal conclusion of
obviousness is based upon the combined teachings of the cited references.
Moreover, “‘the question under 35 USC 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.’” Merck & Co.

In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (explaining that “the Patent
Office appellate tribunals, where it is found necessary, may take notice of
facts beyond the record which, while not generally notorious, are capable of
such instant and unquestionable demonstration to defy dispute.”).
6 See fn. 9, infra, for evidence of this well-known fact.
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v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)). (Emphasis added); see also
MPEP § 2123. In this light, we agree with the Examiner that the combined
teachings and suggestions of Jiang and Morrell support the legal conclusion
of obviousness as to claim 1.
In addition, it is well settled that, as part of the obviousness analysis,
the prior art must be viewed in the context of what was generally known in
the art at the time of the invention. See Randall Mfg. v. Rea, 733 F.3d at
1362 (“[T]he [KSR] Court required an analysis that reads the prior art in
context, taking account of ‘demands known to the design community,’ ‘the
background knowledge possessed by a person having ordinary skill in the
art,’ and ‘the inferences and creative steps that a person of ordinary skill in
the art would employ.’” (quoting KSR Int’l Co. v. Teleflex, Inc., 550 U.S. at
418)); In re Taylor Made Golf Company, Inc., 589 F. App’x 967 (Fed. Cir.
2014) (the Board erred in failing to consider the prior art in the context of
the background knowledge that a person of ordinary skill in the art would
have had). Art can legitimately serve to document the knowledge that
skilled artisans would bring to bear in reading the prior art identified as
producing obviousness.7 Randall, 733 F.3d at 1362–63.
Here, one of ordinary skill in the art of signals would understand that
a haptic signal could beneficially be comprised of an input signal modulated
using amplitude modulation with a sinusoidal carrier wave to produce a
haptic output signal that varies by amplitude, as evidenced by Morrell.8

7 See e.g., infra fn. 9.
8 See also infra fn. 9 (Rhee et al. and Araki).
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Finally, in view of the above discussion, it is also our alternative view,
that since Jiang reasonably teaches the system for transmitting a haptic
signal set forth in claim 1, including generating a haptic signal based in part
on detected gesture pressure, and it was known in the art of signals to use
amplitude modulation to modulate an input signal with a sinusoidal carrier
wave to produce an output signal varying in amplitude with the input signal,
Morrell is not actually necessary for a proper rejection under 35 U.S.C.
§ 103 of representative claim 1, as Jiang discloses all that is claimed. The
Board may rely on less than all of the references applied by the Examiner in
an obviousness rationale without designating it as a new ground of rejection.
In re Bush, 296 F.2d 491, 496 (CCPA 1961); see also In re Boyer, 363 F.2d
455, 458 n.2 (CCPA 1966). It is also well settled that “a disclosure that
anticipates under § 102 also renders the claim invalid under § 103, for
‘anticipation is the epitome of obviousness.’” Connell v. Sears, Roebuck &
Co., 722 F.2d 1542 (Fed. Cir. 1983) (quoting In re Fracalossi, 681 F.2d 792,
794 (CCPA 1982)); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974).
And, no motivation to combine is required when a first reference discloses
each element of the claims and a second reference is used solely to explain
some aspect of the first reference – as opposed to use of the second reference
to show an additional element or teaching. See Realtime Data, LLC v.
Iancu, Case No. 18-1154 (Fed. Cir. 2019, Jan. 10, 2019).
Summary
Appellant has not persuasively shown the Examiner erred in rejecting
representative claim 1 as being unpatentable under 35 U.S.C. § 103. In view
of the foregoing, we sustain the obviousness rejection of representative
claim 1, as well as claims 3–9, 11, 12, 14–19, and 21 grouped therewith, as
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10
being obvious over the base combination of Jiang and Morrell. For similar
reasons, and because (i) Appellant relies on the arguments presented as to
claims 1 and 12 in arguing dependent claims 10 and 20 (see Appeal Br. 16);
and (ii) claims 10 and 20 directly depend from claims 1 and 12 respectively,
we also sustain the remaining obviousness rejection of claims 10 and 20
over the base combination taken with Nakamura.

CONCLUSION9
For all of the reasons above, we hold as follows:
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–9,
11, 12,
103 Jiang, Morrell 1, 3–9, 11, 12,
14–19, 21

9 Although not before us on Appeal, we leave it to the Examiner to evaluate
whether the independent claims are obvious under 35 U.S.C. § 103 over the
combination of Jiang and/or Morrell in combination with another reference.
Notably, Araki (US 9,007,323 B2; issued April 14, 2015) teaches a
haptic device with a haptic signal comprising “a modulated wave which is a
carrier wave obtained by modulating a sine wave” (col. 10, ll. 56–60), such
that vibration is controlled with the signal’s amplitude (see col. 23, ll. 4–13,
claim 1), to produce haptic output signals preferably in the range of 50Hz to
500Hz so “the user can feel a haptic sensation” (col. 16, ll. 8–11), which
overlaps with Appellant’s disclosed preference “to have frequencies from
80Hz to 300Hz” (Spec. ¶ 71).
Additionally, Rhee et al. (US 10,776,618 B2; issued Sept. 15, 2020)
teaches a mobile haptic device using a haptic signal comprising various
waveforms, including controlling the feedback signal’s intensity or
magnitude (i.e., amplitude) when combined (i.e., modulated) with a sine
wave as shown in Figure 7C(b) (see col. 24, l. 12–col. 25, l. 56).
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02.
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14–19,
21
10, 20 103 Jiang, Morrell,
Nakamura
10, 20
Overall
Outcome
1, 3–12, 14–21

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TIME PERIOD FOR RESPONSE
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b) (2013).

AFFIRMED