Ex Parte Albano et alDownload PDFPatent Trial and Appeal BoardSep 28, 201613415293 (P.T.A.B. Sep. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/415,293 03/08/2012 Gherardo Albano 87048 7590 09/30/2016 Jordan IP Law (IBM - SVL) 12501 Prosperity Dr., Suite 401 Silver Spring, MD 20904 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. FR920100054US2 2707 EXAMINER MATTHEWS, ANDRE L ART UNIT PAPER NUMBER 2621 NOTIFICATION DATE DELIVERY MODE 09/30/2016 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): admin@jordaniplaw.com info@jordaniplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GHERARDO ALBANO, FRANCESCO M. DE COLLIBUS, LUCA LANDI, and CLAUDIO PRUDENZI Appeal2015-007090 Application 13/415,293 Technology Center 2600 Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and NATHAN A. ENGELS, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of claims 18-29. We have jurisdiction under 35 U.S.C. § 6(b ). Claims 1-17 are canceled. See Br. 11 (Claims App 'x). We reverse and enter a new ground of rejection within the provisions of 37 C.F.R. § 41.50(b) (2013). 1 According to Appellants, the real party in interest is International Business Machines Corporation. Br. 3. Appeal2015-007090 Application 13/415,293 STATEMENT OF THE CASE The Invention Appellants' invention relates to "human interface devices, and in particular to a sphere shaped human interface device." Spec. i-f 2. Claim 18 is independent and illustrative of the subject matter on appeal: 18. A method comprising: receiving time dependent pressure sensor data from a plurality of pressure sensors distributed between an inner sphere and an outer sphere for detecting localized compression of the outer sphere; receiving time dependent accelerometer data from a first three-axis-accelerometer and a second three-axis-accelerometer located within the inner sphere; and determining a control gesture in accordance with the time dependent pressure sensor data and the time dependent accelerometer data. See Br. 11 (Claims App 'x). Rejections on Appeal Claims 18, 19, and 21-29 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Vaananen et al. (US 2009/0225030 Al; published Sept. 10, 2009) ("Vaananen"), Zhai et al. (US 5,923,318; issued July 13, 1999) ("Zhai"), and Walker (US 6,072,467; issued June 6, 2000). See Final Act. 2---6. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Vaananen, Zhai, Walker, and Fe Dahlin (US 2008/0291165 Al; published Nov. 27, 2008). See Final Act. 6-7. 2 Appeal2015-007090 Application 13/415,293 RELATED PROCEEDINGS Application 13/415,293 is the subject of the present appeal, in which Appellants filed a Notice of Appeal on July 25, 2014 and an Appeal Brief on October 17, 2014. Application 13/415,293 claims priority to Application 13/328,112, which is the subject of Appeal 2015-007077, and in which Appellants filed a Notice of Appeal on August 5, 2014 and an Appeal Brief on November 26, 2014. Accordingly, although Appellants did not identify it as a related proceeding, Appeal 2015-007077 is related to the present appeal. 2 ISSUE The issue presented by Appellants' contentions is as follows: Did the Examiner err in finding that Zhai' s plurality of piezoelectric switches incorporated into the surface of the housing of an input device would have taught or suggested "a plurality of pressure sensors distributed between an inner sphere and an outer sphere for detecting localized compression of the outer sphere," as recited in claim 18? ANALYSIS The Examiner mapped claim 18' s "plurality of pressure sensors distributed between an inner sphere and an outer sphere for detecting localized compression of the outer sphere" to Figure 5 of Zhai, which shows 2 Appellants disavow knowledge of any related appeals. Br. 3. Appellants and the registered practitioner representing Appellants are reminded of the obligation to identify related appeals, interferences, and trials in the Appeal Brief. See 37 C.F.R. § 41.37(c)(ii) (2012). 3 Appeal2015-007090 Application 13/415,293 a plurality of piezoelectric switches incorporated into the surface of the housing of an input device. See Final Act. 3 (citing Zhai, Fig. 5, items 22, 30, 64); Ans. 9-10. The Examiner explained that because Figure 5 of Zhai shows switches disposed beneath the surface of housing 22, those switches are "between" the outer surface ("outer sphere") and inner surface ("inner sphere") of housing 22. See Ans. 10; Final Act. 3; Zhai, Fig. 5. Appellants contend Zhai' s switches, which are incorporated into the surface of the housing (outer sphere), are not arranged "between an inner sphere and an outer sphere" as recited in claim 18. See Br. 8. According to Appellants, interpreting a first structure as "between" a second and third structure when the first structure is located at or within the second or third structure "completely tears away at the conventional notion of what constitutes being spatially located 'between' objects/structures." See Br. 8. We agree with Appellants for the reasons stated by Appellants. Appellants' Specification discloses that "[t]he inner sphere may be made of a rigid material or it may be semi-rigid ... that is ... to a certain degree compressible" and "[t]he outer sphere is compressible .... [and] may be made of a material that is deformable." Spec. i-f 14; see also Spec. i-f 5. In other words, consistent with Appellants' Specification, the "inner sphere" and "outer sphere" recited in claim 18 are physical elements made of material, i.e., structures. See Spec. i-fi-1 5, 14. Furthermore, a pertinent definition of "between," consistent with the term's usage in Appellants' Specification and the plain and ordinary meaning, is "[i]n the interval or position separating .... [or] [c]onnecting spatially." WEBSTER'S II DICTIONARY 69 (3d ed. 2005); see Spec. ,-r,-r 14, 33, 47; Figs. 1, 2. Accordingly, we interpret claim 18 as requiring a plurality of pressure 4 Appeal2015-007090 Application 13/415,293 sensors distributed in a position separating or connecting spatially two structures each comprising a physical sphere. Applying this interpretation, we find the Examiner erred in relying on Figure 5 of Zhai to teach or suggest claim 18' s "plurality of pressure sensors" limitation. See Final Act. 3; Ans. 9-10; Zhai, Fig. 5. We agree with the Examiner that Figure 5 of Zhai shows a plurality of piezoelectric switches 64 incorporated into a housing 22. See Final Act. 3; Ans. 9-10; Zhai, Fig. 5. But we disagree with the Examiner that disposing these switches beneath the surface of housing 22 teaches or suggests that the switches are "distributed between the inner sphere and outer sphere." See Ans. 9-10 (emphasis omitted). Here, it appears the Examiner interpreted the "outer sphere" as an outer surface of housing 22 located above switch 64 and the "inner sphere" as an inner surface of housing 22 located beneath switch 64. But, this interpretation is overly broad and inconsistent with Appellants' Specification, which, as discussed above, describes inner and outer spheres as physical elements, not as surfaces. See Spec. i-fi-15, 14. Accordingly, because Zhai's switches 64 in Figure 5 are distributed only within an outer sphere, housing 22, and not in a position separating or connecting spatially two physical spheres (such as Zhai's sponge 30 and housing 22), the Examiner has not shown that Zhai's Figure 5 teaches or suggests "plurality of pressure sensors distributed between an inner sphere and an outer sphere for detecting localized compression of the outer sphere," as recited in claim 18. See Zhai, Fig. 5; Br. 8-9; Final Act. 2- 4; Ans. 9-10. Further, the Examiner has not shown that Vaananen or Walker cures this deficiency of Zhai. See Final Act. 2--4; Ans. 9-10. Nor 5 Appeal2015-007090 Application 13/415,293 has the Examiner provided an adequate rationale to fill the gaps in the cited prior art. In view of the foregoing, we conclude the Examiner erred in the rejection of claim 18. Accordingly, we do not sustain the rejection of independent claim 18. For the same reason, we do not sustain the rejections of dependent claims 19 and 21-29, each of which include the same deficiency discussed above for the rejection of claim 18. See Br. 11-14 (Claims App'x); Ans. 9-10; Final Act. 4--6. Nor do we sustain the rejection of claim 20, which includes the same limitation discussed above for claim 18 that has not been cured by Fe Dahlin. See Br. 11 (Claims App'x); Ans. 9- 10; Final Act. 6-7. NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b) Claim 18 We adopt as our own the Examiner's findings, conclusions, and reasoning for claim 18 (see Final Act. 2--4; Ans. 9-10) except, as discussed above, the finding that Figure 5 of Zhai alone teaches or suggests "a plurality of pressure sensors distributed between an inner sphere and an outer sphere for detecting localized compression of the outer sphere." Nevertheless, we conclude the combination of Vaananen, Zhai, and Walker teaches or suggests this claim limitation. More specifically, Figure 4 of Zhai teaches a single pressure sensor between an inner sphere and an outer sphere for detecting localized compression of the outer sphere. See Zhai, Fig. 4 (showing elastically deformable conductive rubber layer 56 sandwiched between inner and outer electrical contact layers 44 and 46, in a position between sponge 30 and 6 Appeal2015-007090 Application 13/415,293 outer elastic housing 58), col. 5, 11. 42--44, 49-55 ("the impedance properties of deformable conductive layer 56 are altered when a preselected pressure is applied across any point on its surface, thereby causing an electrical change which is detected and decoded as an indication of the presence of a switching event"). Figure 4 of Zhai does not explicitly teach "a plurality of pressure sensors distributed" between its inner and outer spheres. But, Figure 5 of Zhai teaches the concept of distributing a plurality of pressure sensors along a sphere in a user interface device. See Zhai, Fig. 5 (showing piezoelectric switches 64), col. 5, 11. 61---64. Modifying Figure 4 of Zhai to include a "plurality of pressure sensors" as taught in Figure 5 of Zhai, would have been a straightforward combination of well-known elements that a person of ordinary skill in the art could have combined as an exercise of routine skill with predictable results. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[W]hen a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious."); Zhai, col. 5, 11. 29-31. A person of ordinary skill in the art would have been motivated to make this modification in order to facilitate user communication at a plurality of localized positions on the user interface device. See Zhai, col. 5, 1. 66-col. 6, 1. 3 ("The piezoelectric elements are positioned so the minimum spacing between each piezoelectric element is less than a finger width in order to ensure the switch is engaged by a user squeezing the input device with it in any orientation in the user's fingers."); col. 3, 11. 47-53 ("Accordingly, it would be advantageous to provide a 6- DOF control device which ... permits the user to communicate discrete button-pressing type information to the computer regardless of the position 7 Appeal2015-007090 Application 13/415,293 of the device within the user's fingers."). Furthermore, it would have been obvious to combine the teachings of Vaananen with the teachings of Zhai, as Vaananen also teaches the known concept of placing a pressure sensor inside a spherical user interface device in order to detect user interaction. See Vaananen, Figs. 7-8, ,-r 29. As our analysis deviates from the Examiner's rejection, we designate our findings and conclusion to be a new ground of rejection for claim 18 under 35 U.S.C. § 103(a) over Vaananen, Zhai, and Walker. Claims 19-29 We have entered a new ground of rejection for claim 18. We leave it to the Examiner to consider the patentability of claims 19-29, in light of our findings and conclusions supra. The fact that we did not enter new grounds of rejection for claims 19-29 should not be construed to mean that we consider those claims to be directed to patentable subject matter or to be patentable over the prior art of record. DECISION The decision of the Examiner to reject claims 18-29 is reversed. We enter a new ground of rejection for claim 18 under 35 U.S.C. § 103(a) over Vaananen, Zhai, and Walker. Section 41.50(b) provides that "[a] new ground of rejection ... shall not be considered final for judicial review." Section 41. 50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of 8 Appeal2015-007090 Application 13/415,293 the following two options with respect to the new ground 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 Evidence 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)(l). See 37 C.F.R. §§ 41.50(f), 41.52(b). REVERSED 37 C.F.R. § 41.50(b) 9 Copy with citationCopy as parenthetical citation