Ex Parte Cruz-Hernandez

Patent Trial and Appeal Board

Nov 30, 2018

12947532 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/947,532 11/16/2010
34300 7590 12/04/2018
Kilpatrick Townsend and Stockton/Immersion
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
FIRST NAMED INVENTOR
Juan Manuel Cruz-Hernandez
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.
IMM332 (51851/395420) 2109
EXAMINER
PATEL, SANJIV D
ART UNIT PAPER NUMBER
2697
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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 JUAN MANUEL CRUZ-HERNANDEZ
Appeal2018-005147
Application 12/947,532 1
Technology Center 2600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 4, and 7-29. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Immersion Corp. App.
Br. 1.
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Application 12/947,532
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed and claimed inventions relate "generally to
haptic feedback devices and in particular to an improved rotary device for
haptic feedback." Spec. ,r 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitation):
1. A haptic device comprising:
a passive actuator comprising:
a rotatable plate;
a fixed plate configured to apply friction to the
rotatable plate;
a piezoelectric material mounted between the
fixed plate and the rotatable plate, the piezoelectric
material configured to receive a first haptic signal and
vibrate, wherein the vibration is configured to reduce
the friction applied to the rotatable plate, wherein the
first haptic signal is an ultrasonic signal;
a linear member coupled to a user interface device, the
linear member comprising a rotatable object; and
an extension member coupled to the linear member such
that moving the linear member in a degree of freedom rotates
the extension member, wherein the passive actuator is coupled
2 Our Decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Feb. 1, 2018); Reply Brief ("Reply Br.," filed April 20, 2018); Examiner's
Answer ("Ans.," mailed Feb. 27, 2018); Final Office Action ("Final Act.,"
mailed Sept. 8, 2017); and the original Specification ("Spec.," filed
Nov. 16, 2010).
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to the extension member such that the passive actuator is
configured to restrict rotation of the extension member.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Culp us 5,939,816 Aug. 17, 1999
Shahoian et al. ("Shahoian") US 2004/0178989 Al Sept. 16, 2004
Kobayashi US 2004/0233162 Al Nov. 25, 2004
Goodson US 2004/0251780 Al Dec. 16, 2004
Rosenberg US 6,850,222 Bl Feb. 1,2005
Rejections on Appeal
RI. Claims 1, 4, 6-9, 11-13, 15-29 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Rosenberg,
Kobayashi, and Culp. Final Act. 2. 3
R2. Claims 10 and 14 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Rosenberg, Kobayashi, Culp,
and Shahoian. Final Act. 21.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 11-13), we decide the
appeal of obviousness Rejection RI of claims 1, 4, 7-9, 11-13, and 15-29
3 The Examiner relies upon Official Notice as evidence that operation of
piezoelectric actuators at ultrasonic frequencies is notoriously well-known in
the art, and cites various references in support of this finding. Final Act. 5,
24--28.
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on the basis of representative claim 1; and we decide the appeal of
obviousness Rejection R2 of claims 10 and 14, separately argued, infra.
ISSUES AND ANALYSIS
In reaching this Decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
which Appellant could have made but chose not to make in the Briefs so that
we deem any such arguments as waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claims 1, 10,
and 14, and we incorporate herein and adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellant's arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claims 1,
10, and 14 for emphasis as follows.
1. § 103 Rejection RI of Claims 1, 4, 7-9, 11-13, 15-29
Issue 1
Appellant argues (App. Br. 11-13; Reply Br. 1-2) the Examiner's
rejection of claim 1 under 35 U.S.C. § I03(a) as being obvious over the
combination of Rosenberg, Kobayashi, and Culp is in error. These
contentions present us with the following issues:
(a) Did the Examiner err in finding the cited prior art combination,
in view of the Examiner's taking of Official Notice, teaches or suggests " [a]
haptic device" that includes "a piezoelectric material mounted between the
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fixed plate and the rotatable plate ... configured to receive a first haptic
signal" that is "an ultrasonic signal," as recited in claim 1?
(b) Did the Examiner err in rejecting claim 1 under § 103 by not
providing proper motivation to combine the references in the manner
suggested?
Analysis
Issue 1 (a)-All Limitations are Taught or Suggested
Appellant generally contends the "[t]he Office Action does not
establish that the cited references disclose each claim element." App. Br. 11.
Specifically, Appellant alleges the Examiner's taking of Official Notice that
piezoelectric actuators could be operated at an ultrasonic frequency is legally
insufficient. App. Br. 12.
With respect to the evidence provided by the Examiner in support of
the taking of Official Notice, Appellant further argues:
[T]he Examiner simply identifies references that allegedly
disclose ultrasonic frequencies. Regardless of whether this is
correct, the Examiner must still articulate some reasoning that
the combination of references would be made .... The
Examiner does not provide a rational to combine the references.
Instead the Examiner simply states that the missing claim
element was known in view of other art. This is legally
insufficient to establish obviousness.
Reply Br. 2.
We disagree with Appellant's argument concerning the taking of
Official Notice, because Appellant did not properly traverse or otherwise
rebut the Examiner taking Official Notice in the Briefs.
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In support of the Examiner's position, we note that Official notice
unsupported by documentary evidence should only be taken by the
Examiner where the facts asserted to be well-known, or to be common
knowledge in the art are capable of instant and unquestionable
demonstration as being well-known. As noted by the court in In re Ahlert,
424 F.2d 1088, 1091 (CCPA 1970), the notice of facts beyond the record
which may be taken by the Examiner must be "capable of such instant and
unquestionable demonstration as to defy dispute" ( citing In re Knapp
Monarch Co., 296 F.2d 230 (CCPA 1961)). InAhlert, the court held that the
Board properly took judicial notice that "it is old to adjust intensity of a
flame in accordance with the heat requirement." Id. at 1090. See also In re
Fox, 471 F.2d 1405, 1407 (CCPA 1973) (the court took "judicial notice of
the fact that tape recorders commonly erase tape automatically when new
'audio information' is recorded on a tape which already has a recording on
it").
To traverse the Examiner's taking of Official Notice, Appellant "must
specifically point out the supposed errors in the examiner's action, which
would include stating why the noticed fact is not considered to be common
knowledge or well-known in the art." See MPEP § 2144.03 (emphasis
added). Here, Appellant has not stated why the noticed fact is not
considered to be common knowledge or well-known in the art.
An adequate rebuttal of the Examiner's taking of Official Notice must
contain sufficient information or argument to create on its face a reasonable
doubt regarding the circumstances justifying the Examiner's notice of what
is well known to one of ordinary skill in the art. In re Boon, 439 F.2d 724,
728 (CCPA 1971).
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Appellant's arguments have not created reasonable doubt here.
Moreover, we find the teachings of the Examiner's cited references, showing
that a haptic signal may be an ultrasonic signal, provide sufficient evidence
to support the Examiner's reliance on Official Notice. In this appeal, we find
that the fact that piezoelectric actuators may operate at ultrasonic
frequencies is capable of instant and unquestionable demonstration as being
well-known.
Issue 1 (b )-Motivation to Combine is Proper
We also disagree with Appellant's argument that the Examiner's
motivation to combine is improper, and agree with the Examiner's findings
in this regard.
The presence or absence of a reason "to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000) (citing In re Dembiczak, 175 F.3d 994,
1000 (Fed. Cir. 1999) ). A reason to combine teachings from the prior art
"may be found in explicit or implicit teachings within the references
themselves, from the ordinary knowledge of those skilled in the art, or from
the nature of the problem to be solved." WMS Gaming Inc. v. Int'! Game
Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998)).
The Examiner finds an artisan would have been motivated "to add the
teachings of Culp to that of Kobayashi for the predictable result of providing
precise rotation (Culp at col. 10, 11. 41--45)." Final Act. 4. The Examiner
also finds an artisan would have been motivated to substitute the haptic
feedback device in Rosenberg with the haptic feedback device of the
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combination of Kobayashi and Culp to that of Rosenberg for the predictable
result of providing force feedback (Kobayashi at Title; ,r [0009])." Final
Act. 4--5.
We find the Examiner provided sufficient articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.
See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007).
Furthermore, the Examiner takes Official Notice that stimulating a
piezoelectric body at ultrasonic frequencies is notoriously well-known in the
art for the purpose of providing an ultrasonic vibration. Final Act. 5.
We note Appellant's argument (App. Br. 12-13; Reply Br. 2)
incorrectly focuses on whether the references cited by the Examiner as
evidence in support of the taking of Official Notice, i.e., evidence supporting
the finding that piezoelectric actuators operating at ultrasonic frequencies is
well-known in the art, are properly combinable with the references actually
cited in the rejection. Final Act. 24--28; Ans. 3-8. Appellants do not
provide sufficient persuasive argument rebutting the Examiner's articulated
reasoning with a rational underpinning to combine the cited Rosenberg,
Kobayashi, and Culp references in the manner suggested. We conclude the
question of whether or not the references cited in support of the taking of
Official Notice are separately combinable under§ 103 with the cited
references, i.e., Rosenberg, Kobayashi, and Culp, is not the proper legal
mqmry.
Moreover, Appellant has not demonstrated the Examiner's proffered
combination of references would have been "uniquely challenging or
difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
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Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor has Appellant provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art, or in the resulting legal
conclusion of obviousness. Therefore, we sustain the Examiner's
obviousness Rejection RI of representative claim 1 and grouped claims 4,
7-9, 11-13, 15-29 which fall therewith. See Claim Grouping, supra.
2. § 103 Rejection R2 of Claims 10 and 14
In view of the lack of any substantive arguments directed to
obviousness Rejection R2 of dependent claims 10 and 14 under § 103 (see
App. Br. 13), we sustain the Examiner's rejection of these claims, as they fall
with independent claim 1. 4 Arguments not made are waived.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1-3) not in response to a shift in the Examiner's position in
4 Appellant merely argues, "[t]he Office Action introduces Shahoian as
disclosing that the coupling comprises a flexible coupling and an eccentric
rotation mass motor. Regardless of whether this is correct, the cited section
of Shahoian does not cure Rosenberg, Kobayashi, and Culp's deficiency.
Thus, Rosenberg, Kobayashi, and Culp in view of Shahoian do not disclose
each and every limitation of claim 1, and therefore cannot disclose each and
every limitation of claims 10 and 14." App. Br. 13. We find this is not a
separate, substantive argument.
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the Answer, we note arguments raised in a reply brief that were not raised in
the appeal brief or are not responsive to arguments raised in the Examiner's
Answer will not be considered except for good cause, which Appellant has
not shown. See 37 C.F.R. § 41.4I(b)(2).
CONCLUSION
The Examiner did not err with respect to obviousness Rejections RI
and R2 of claims 1, 4 and 7-29 under 35 U.S.C. § 103(a) over the cited prior
art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1, 4, and 7-29.
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). See 37
C.F.R. § 4I.50(f).
AFFIRMED
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