Louis B. Rosenberg

Patent Trials and Appeals Board

Jan 2, 2020

14071701 - (D) (P.T.A.B. Jan. 2, 2020)

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.
14/071,701 11/05/2013 Louis B. Rosenberg IMM144.C1
(51851/891011)
9659
34300 7590 01/02/2020
Kilpatrick Townsend and Stockton/Immersion
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
NGUYEN, KEVIN M
ART UNIT PAPER NUMBER
2628
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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 LOUIS B. ROSENBERG
Appeal 2018-007326
Application 14/071,701
Technology Center 2600
BEFORE DEBRA K. STEPHENS, TREVOR M. JEFFERSON, and
PHILLIP A. BENNETT, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Immersion Corporation,
appeals from the Examiner’s decision to reject claims 1–25 (Final Act. 1).
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Immersion
Corporation (Appeal Br. 1).
Appeal 2018-007326
Application 14/071,701

2
CLAIMED SUBJECT MATTER
According to Appellant, the claims are directed to a device using
tactile feedback to deliver silent status information. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1 A handheld device comprising:
a haptic feedback assembly;
a fingerprint sensor configured to detect a fingerprint;
a processor coupled to the fingerprint sensor, the processor
configured to:
receive a signal associated with the fingerprint;
determine whether a user is a known user based in
part on the fingerprint;
determine a haptic effect based on the fingerprint
and whether the user is a known user; and
control the haptic feedback assembly to output the
haptic effect, wherein the haptic feedback assembly
comprises an actuator and an added mass to reduce a
natural frequency of the actuator
(Appeal Br. 16 (Claims Appendix)).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Merjanian
Rollins
Edgren
US 5,546,471
US 6,078,126
US 6,420,965 B1
Aug. 13, 1996
June 20, 2000
July 16, 2002

REJECTIONS
Claims 1–25 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Merjanian and Rollins (Final Act. 3–9).
Appeal 2018-007326
Application 14/071,701

3
Claims 1–25 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Merjanian and Edgren (id. at 9–15).
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived
(see 37 C.F.R. § 41.37(c)(1)(iv)).
OPINION
Obviousness – Merjanian and Rollins: Claims 1–25
Appellant contends their invention as recited in claims 1–25, is not
obvious over Merjanian and Rollins (Appeal Br. 12–41). The issue
presented by the arguments is, does the combination of Merjanian and
Rollins teach, suggest, or otherwise render obvious “determin[ing] a haptic
effect based on the fingerprint and whether the user is a known user,” as
recited in claim 1?
ANALYSIS
Appellant argues the Examiner “does not address how the haptic
effect is determined” (Appeal Br. 12). According to Appellant, the
Examiner does not show “Merjanian discloses ‘determin[ing] a haptic effect
based on the fingerprint and whether the user is a known user,’” as recited
in claim 1 (id.). Appellant contends “each of . . . [the] three passages [of
Merjanian cited by the Examiner,] plainly discusses feedback that identifies
location” (id. at 13). Appellant argues “[d]etermining a haptic effect based
on the location of the digit does not, by itself, disclose ‘determin[ing] a
haptic effect based on the fingerprint and whether the user is a known
user,’” as recited by claim 1.
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Application 14/071,701

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Lastly, Appellant argues the Examiner “appears to be citing to edge
50 as outputting tactile feedback[; however, edge] 50 is nothing more than a
mechanical guide” (Appeal Br. 13). More specifically, Appellant points to
Figures 2 and 3 of Merjanian that illustrate, according to Appellant, “the
edge 50 acts as a guide for the user’s finger, to ensure the finger is
appropriately positioned on top of platen 30” (id.). Thus, Appellant argues
“no basis [exists] to assert that a mechanical guide, such as edge 50, outputs
a haptic effect ‘determine[d] . . . based on the fingerprint and whether the
user is a known user,’” as recited in claim 1 (id. at 14).
We agree with Appellant that the Examiner has failed to show the
combination of Merjanian and Rollins teaches or suggests “determin[ing] a
haptic effect based on the fingerprint and whether the user is a known user,”
as recited in independent claim 1 and as commensurately recited in
independent claims 10 and 18. Specifically, as noted by Appellant, the cited
portions of Merjanian teach providing “tactile feedback to the person whose
print is being acquired of the location of the digit on the platen” (Merjanian,
2:36–38; see also Merjanian, 5:19–21 (“Between the platen top surface 31
and the planar surface 46 is an edge 50 that provides tactile feedback to the
operator as to the location of the digit 32 on the platen 30”), Merjanian,
13:50–53 (“The housing of claim 1, further including tactile feedback means
for providing tactile feedback to the person whose print is being acquired, of
the location of the digit on the platen”)). The Examiner further relied on
Merjanian’s claims 1–5 (Ans. 3); however, claims 1 and 2 discuss the
housing for a fingerprint acquisition device and particularly, the shape of the
housing to acquire “even pressure to the patent and a broad print of the
chosen, fifth digit” and ramp means “such that the digit presses on the patent
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Application 14/071,701

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at an increased number of locations . . . and a digit guiding means for fuiding
the person’s digits onto the paten” (Merjanian claims 1–2). Claim 3 recites
“tactile feedback means for providing tactile feedback to the person whose
print is being acquired, of the location of the digit on the platen” and claims
4 and 5 recite the tactile feedback means location and structure (id. claims
3–5). The Examiner has not, however, identified where Merjanian teaches
providing tactile feedback based on the fingerprint and whether the user is a
known user.
Accordingly, we are persuaded the Examiner has failed to show the
combination of Merjanian and Rollins teaches or suggests the limitations as
recited in independent claim 1 and commensurately recited in independent
claims 10 and 18. Dependent claims 2–9, 11–17, and 19–25 thus stand with
their respective independent claims. Therefore, we cannot sustain the
rejection of claims 1–25 under 35 U.S.C. § 103(a) for obviousness over
Merjanian and Rollins.

Obviousness –– Merjanian and Edgren: Claims 1–25
The Examiner once again relies on Merjanian to teach “determine a
haptic effect based on the fingerprint and whether the user is a known user,”
as recited in independent claim 1 and commensurately recited in
independent claims 10 and 18. Appellant, however, does not contend
explicitly that their invention as recited in claims 1–25, is not obvious over
Merjanian and Edgren (see generally Appeal Br.). Nonetheless, in light of
our finding and conclusion that Merjanian fails to teach determin[ing] a
haptic effect based on the fingerprint and whether the user is a known user,”
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Application 14/071,701

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discussed above, we cannot sustain the rejection of claims 1–25 under
35 U.S.C. § 103(a) for obviousness over Merjanian and Edgren.

DECISION
The Examiner’s rejections are REVERSED.
More specifically,
The rejection of claims 1–25 under 35 U.S.C. § 103(a) as being
unpatentable over Merjanian and Rollins is reversed.
The rejection of claims 1–25 under 35 U.S.C. § 103(a) as being
unpatentable over Merjanian and Edgren is reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–25 103 Merjanian, Rollins 1–25
1–25 103 Merjanian, Edgren 1–25
Overall
Outcome
1–25
REVERSED