Ex Parte Roberts et al

Board of Patent Appeals and Interferences

Jul 23, 2007

10317930 (B.P.A.I. Jul. 23, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN W. ROBERTS and NICHOLAS GUTTENBERG
____________

Appeal 2007-0802
Application 10/317,930
Technology Center 2600
____________

Decided: July 23, 2007
____________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
MAHSHID D. SAADAT, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, which are all of the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).

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Application 10/317,930

Appellants have invented a tactile graphic display apparatus including
a display array having pressure responsive stimulus points capable of
delivering different pressure variable stimulus at a selected body location of
a user for simulating a virtual tactile display (Specification 9). The stimulus
points are activated to make up a particular pattern which, in turn, is caused
to move across the surface of the skin by selective activation and
deactivation of the specific stimulus points in the array (Specification 16).
Claims 1 and 14, which are representative of the claims on appeal,
read as follows:
1. A refreshable scanning tactile graphic display apparatus for
localized sensory stimulation comprising:

a high density array of fluid activated stimulus points each capable of
delivering different pressure variable stimulus at a selected body location of
a user;

means for applying activation energy from an energy source to said
stimulus points;

a microvalve array for selective activation including pressure variation
of said stimulus points utilizing said means for applying activation energy;
and
a control unit for controlling operation of said microvalve array.

14. A method for localized sensory stimulation to tactilely simulate a
virtual display comprising the steps of:

providing for delivery of stimulus at a high density set of points at a
selected body location of a user;
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modulating said stimulus delivery at different said points for selective
actuation including applying variable differential pressure stimulus at said
points; and

controlling said modulation responsive to selected input to control
which portion of the virtual display should be tactilely simulated at said
points to simulate sensation of lateral motion across the selected body
location thereby to communicate to the user a detailed impression of either
movement of a patterned surface across the selected body location or
movement of the selected body location across the patterned surface without
relative movement between said set of points and the selected body location
of the user.

The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Lake US 2002/0080111 A1 Jun. 27, 2002
Kravtsov US 6,462,840 B1 Oct. 8, 2002
Sharder US 6,639,582 B1 Oct. 23, 2003
(filed Aug. 10, 2000)
The Examiner rejected claims 1-3 and 5-19 under 35 U.S.C. § 103(a)
based upon the teachings of Sharder and Lake.
The Examiner rejected claims 4 and 20 under 35 U.S.C. § 103(a)
based upon the teachings of Sharder, Lake, and Kravtsov.
Rather than reiterate the opposing arguments, reference is made to the
Briefs and the Answer for the respective positions of Appellants and the
Examiner.
We affirm-in-part.

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ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). Appellants focus on
Sharder’s combination of haptic effects developed at different locations in a
network and allege that the Examiner has not shown that such display
mechanism relates to a virtual display or a scanning tactile display
simulating sensation of lateral motion across a selected body location over a
tactile display (Br. 15). The issue turns on whether the combination of
Sharder with Lake teaches or suggests the claimed subject matter related to a
tactile display, as recited in claim 1.

FINDINGS OF FACT
1. Sharder describes a system for transmitting data related to haptic
sensory-motor effects wherein a matrix of moveable rods interact
with a user as the user touches the rods and moves them (col. 2, ll.
37-42).
2. Sharder describes the computer system for selective activation of
the matrix elements (col. 3, ll. 51-66) while the elements for
monitoring the haptic sensory effect are described as a touchpad of
matrix rods that are moveable within a substrate (col. 4, ll. 12-23).
3. Sharder includes a feedback mechanism for transmitting the haptic
effect from one terminal to another which, in effect, uses the
information from the user input from one terminal as the data
values to be transmitted to the other terminal and to be applied to
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the matrix elements in the haptic sensory display device of that
terminal (col. 5, ll. 11-29).
4. Lake discloses various haptic elements to be used in a matrix for
inputting or outputting sensory data (¶ 0016).
5. Lake describes different mechanisms for each element such as a
piston activated by a fluid or an element activated by hydraulics or
magnetic field (¶¶ 0018 and 0019). The fluid applied to the
stimulus is further defined as any material that exhibits a change of
volume or sensitivity to temperature (id.).
6. Lake teaches that the haptic element may further be configured as
a pad that is sensitive to pressure
7. Lake further discloses that the haptic sensory matrix may have any
two- or three-dimensional form such as a glove or a ball that the
user may hold or wear to input or read the haptic sensory data
(¶0027).

PRINCIPLES OF LAW
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), In
re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and
In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
Moreover, in evaluating such references it is proper to take into account not
only the specific teachings of the references but also the inferences which
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one skilled in the art would reasonably be expected to draw therefrom. In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
In identifying a reason that would have prompted a person of ordinary
skill in the relevant field to combine the prior art teachings, the Examiner
must show some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. KSR Int’l. v. Teleflex Inc., 127
S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).

ANALYSIS
A. Claim rejection based on Sharder and Lake
The Examiner correctly characterizes Sharder’s system as the claimed
display apparatus since the sensory data generated at one device is
transmitted to the other device for activating the matrix elements to represent
the haptic sensory effect contained in the data (Answer 3-4). We disagree
with Appellants’ argument that the Examiner erred in rejecting the claims
since Sharder fails to teach a scanning tactile apparatus which has the ability
to recreate the sensory perception of passage of a user’s body part over a
tactile display (Br. 14-15; Reply Br. 4-5). The Examiner’s failure to point to
any teachings in the applied references related to such “scanning”
notwithstanding, the term “scanning” merely appears in the preamble of
claims 1 and 8 without relating to any specific limitations in the claims.
“[A] claim preamble has the import that the claim as a whole suggests for
it.” Bell Communications Research, Inc. v. Vitalink Communications Corp.,
55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995). Where a
patentee uses the claim preamble to recite structural limitations of his
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claimed invention, the PTO and courts give effect to that usage. See id.;
Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9
USPQ2d 1962, 1966 (Fed. Cir. 1989). Conversely, where a patentee defines
a structurally complete invention in the claim body and uses the preamble
only to state a purpose or intended use for the invention, the preamble is not
a claim limitation. See Bell Communications, 55 F.3d at 620; Kropa v.
Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Here, claims 1
and 8 define structurally complete inventions that require no “scanning” or
movement of the displayed pattern for creating the sensory perception of
passage of a user’s body part over a tactile display.
Additionally, we find the Examiner’s position with respect to reading
the recited microvalves on the matrix elements of Lake to be reasonable
since each element is actuated by the flow of a fluid in response to pressure,
temperature or electric field through an opening or valve. In particular, the
touchpad that is sensitive to pressure directs the pressure to the pad through
an opening for each matrix element.
We further agree with the Examiner’s rationale for combining Sharder
with Lake to apply the fluid activated stimulus of Lake to the haptic sensory-
motor effect display of Sharder. As such, any of the actuation methods of
Lake may be used for converting the received haptic data and creating a
sensory effect display, as taught by Sharder.
Therefore, to the extent claimed, the combination of Sharder and Lake
suggests the subject matter recited in claims 1 and 8. Claim 14, on the other
hand, recites controlling the activation of the stimulus points to simulate
sensation of lateral motion across the user’s body without the actual
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movement of the display in relation to the body, which is absent in Sharder’s
disclosure.
With respect to claim 10, we note that the Examiner relies on each of
the stimulus points as the membrane that contacts the localized area of the
user’s body (Answer 7 & 12). Although the claim does not specify whether
a single membrane covers all the stimulus points or each point may have a
separate membrane, the claim does not exclude an environment wherein a
plurality of membranes are each held over a fluid opening at each stimulus
point, as argued by the Examiner. The great breadth of the claim
notwithstanding, the prior art does describe the haptic display as a touchpad
sensitive to pressure wherein the matrix elements convert the received
sensory data to produce a tactile graphic display.
B. Claim rejection based on Sharder, Lake and Kravtsov
With respect to the rejection of claims 4 and 20, we also disagree with
Appellants that Kravtsov lacks a teaching related to the claimed density of
the stimulus points. Kravtsov describes the spacing in terms of the
separation of each point in relationship with the resolution of the generated
display signal (col. 7, ll. 39-44) which reasonably defines a resolution of one
rod per 0.5 mm.
Thus, based on our analysis above, we find that one of ordinary skill
in the art would have found the Examiner’s reliance on the combination of
Sharder, Lake and Kravtsov to be reasonable in rendering the subject matter
of claim 4 obvious.

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CONCLUSION
On the record before us, Appellants have failed to show that the
Examiner erred in rejecting the claims or the rejections are not supported by
a legally sufficient basis for holding that the combined teachings of the
references would have suggested to the skilled artisan all of the claimed
limitations. Accordingly, based on the teachings of the prior art outlined
supra, we agree with the Examiner’s position that the claimed tactile graphic
display is taught by the combination of the references and sustain the
rejection of claims 1-3 and 5-13 under § 103(a) over the combination of
Sharder and Lake and of claim 4 over the combination of Sharder, Lake and
Kravtsov. However, we reach the opposite conclusion with respect to the
rejection of claims 14-20.

DECISION
The decision of the Examiner rejecting claims 1-13 under 35 U.S.C.
§ 103 is affirmed but is reversed with respect to claims 14-20.

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

AFFIRMED-IN-PART

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