12697030 - (R) (P.T.A.B. Aug. 30, 2019)

David M. Birnbaum et al.

Patent Trials and Appeals BoardAug 30, 2019

12697030 - (R) (P.T.A.B. Aug. 30, 2019)

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. 12/697,030 01/29/2010 David M. Birnbaum IMM341 (51851/380230) 1167 34300 7590 08/30/2019 Kilpatrick Townsend and Stockton/Immersion Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER ENGLISH, ALECIA DIANE ART UNIT PAPER NUMBER 2625 NOTIFICATION DATE DELIVERY MODE 08/30/2019 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 DAVID M. BIRNBAUM, CHRIS ULLRICH, PETER RUBIN, PHONG DAVID NGO, and LEO KOPELOW ____________________ Appeal 2018-004933 Application 12/697,0301 Technology Center 2600 ____________________ Before HUNG H. BUI, JON M. JURGOVAN, and NABEEL U. KHAN, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants filed a Request for Rehearing (“Request”) under 37 C.F.R. § 41.52 for reconsideration of our Decision on Appeal, mailed on June 13, 2019 (“Decision”). In that Decision, we affirmed the Examiner’s final rejection of claims 1, 2, 5, 6, 8–12, 14–17, and 19–24 under 35 U.S.C. § 103. In the Request, Appellants acknowledge the Board rejected the Examiner’s broad interpretation of the disputed limitation: “determin[ing] a haptic effect based in part on the virtual weight of the one or more virtual objects and the function,” recited in independent claims 1, 12, 19, and 20, but nevertheless found the cited prior art (Rosenberg) teaches that disputed 1 According to Appellants, the real party in interest is Immersion Corporation. App. Br. 1. Appeal 2018-004933 Application 12/697,030 2 limitation. Dec. 6–10. In doing so, Appellants argue the Board provided new citations (i.e., annotated version of Rosenberg Figure 3 and paragraphs 34, 42, 46, and 50–51) and new analysis to support the affirmance and, because the new citations and analysis, “the Board should have designated its analysis as a new ground of rejection under 37 C.F.R. § 41.50(b).” Appellants have made a sufficient showing in the Request that designation as a new ground is warranted in this case. Because our reasoning relies on new factual findings and analyses, we designate our affirmance as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) to preserve Appellants’ procedural safeguards. In re Stepan Co., 660 F.3d 1341, 1346 (Fed. Cir. 2011) (“Had the Board labeled its rejection as a new ground of rejection, Stepan could have reopened prosecution to address the newly-alleged deficiencies in its Declaration with the examiner.”); In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011) (“Mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner.”). DECISION We have granted Appellants’ Request to the extent that we have reconsidered our Decision. However, the Examiner’s decision rejecting claims 1–7, 9–18, and 20–24 under 35 U.S.C. § 103(a) remains AFFIRMED. Nevertheless, we designate our affirmance as a new ground of rejection pursuant to 37 C.F.R § 41.50(b) to preserve Appellants’ procedural safeguards because we have relied on facts and reasoning not raised by the Examiner. This Decision on Appellants’ “REQUEST FOR Appeal 2018-004933 Application 12/697,030 3 REHEARING” is deemed to incorporate our earlier Decision by reference. See 37 C.F.R. § 41.52(a)(1). Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Further, § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new [e]vidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . 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)(iv). REHEARING GRANTED