Ex Parte Birnbaum et al

Patent Trials and Appeals Board

Apr 17, 2019

12697030 - (D) (P.T.A.B. Apr. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/697,030 01/29/2010
34300 7590 04/19/2019
Kilpatrick Townsend and Stockton/Immersion
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
FIRST NAMED INVENTOR
David M. Birnbaum
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.
IMM341 (51851/380230) 1167
EXAMINER
ENGLISH, ALECIA DIANE
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
04/19/2019 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
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 DAVID M. BIRNBAUM, CHRIS ULLRICH, PETER RUBIN,
PHONG DAVID NGO, and LEO KOPELOW
Appeal2018-004933
Application 12/697,030 1
Technology Center 2600
Before HUNG H. BUI, JON M. JURGOV AN, and NABEEL U. KHAN,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1, 2, 5, 6, 8-12, 14--17, and 19-24,
which are all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 According to Appellants, the real party in interest is Immersion
Corporation. App. Br. 1.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed
October 16, 2017; Reply Brief ("Reply Br.") filed April 6, 2018; Examiner's
Answer ("Ans.") mailed February 8, 2018; Final Office Action ("Final
Act.") mailed April 21, 2017; and original Specification ("Spec."), filed
January 29, 2010.
Appeal2018-004933
Application 12/697 ,030
STATEMENT OF THE CASE
Appellants' invention is directed to systems and methods for
interpreting physical interactions with a graphical user interface installed, for
example, in a handheld device, such as a mobile phone, responsive to user
gestures and/or movement of the device. Spec. ,r 4. According to an
example embodiment, the movement of the device (shaking, moving up,
down, forward, back, etc.) is sensed and interpreted as functions in a virtual
space, as shown in Appellants' Figure 2b, as reproduced below with
additional markings, inserted in red, for illustration.
Appellants' Figure 2b shows a graphical user interface ( GUI) 240
comprising a virtual physical space 232 to allow a user interaction therewith,
via user gestures or movements.
When user interacts with the virtual physical space, haptic effects are
generated to simulate an interaction with the virtual physical space. Spec.
2
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Application 12/697 ,030
Claims 1, 12, 19, and 20 are independent. Representative claim 1 is
reproduced below with disputed limitation in italics:
1. A device comprising:
a housing configured to be grasped by a user;
a display disposed in the housing, the display configured
to display a graphical user interface comprising a virtual physical
space comprising a list extending in a simulated depth dimension
comprising one or more virtual physical objects each comprising
an associated virtual weight;
a sensor disposed in the housing, the sensor configured to
detect a movement of the housing in a degree of freedom;
a processor disposed in the housing and in communication
with the display and the sensor, the processor configured to:
receive a sensor signal from the sensor, the sensor
signal comprising a parameter associated with the movement;
determine a command associated with the virtual
physical space based, at least in part, on the parameter;
determine a function to be executed based, at least
in part, on the command,
determine a haptic effect based in part on the virtual
weight of the one or more virtual objects and the function;
execute the function;
output a haptic signal associated with the haptic
effect; and
modify the list or one or more virtual physical
objects in the virtual physical space based in part on the function;
a haptic output device configured to receive the
haptic signal and output the haptic effect.
App. Br. 31 (Claims App.). 3
3 Other independent claims 12, 19, and 20 also recite the disputed limitation
noted in italics in claim 1 ; claims 9-11 and 15-1 7 listed in Claim Appendix
depends on claim 0. App. Br. 32-34. These dependencies appear to be
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Appeal2018-004933
Application 12/697 ,030
Evidence Considered
Rosenberg et al. ("Rosenberg") US 2001/0045941 Al
Shahoian et al. ("Shahoian") US 2005/0052430 Al
Ohwa et al. ("Ohwa") US 2005/0210410 Al
Marvit et al. ("Marvit") US 7,176,886 B2
Ording et al. ("Ording") US 2007/0152984 Al
Wolinsky US 2008/0020843 Al
Examiner's Rejections
(1) Claims 1, 2, 5, 6, and 12 stand rejected under
Nov. 29, 2001
Mar.10.2005
Sept. 22, 2005
Feb. 13,2007
July 5, 2007
Jan.24,2008
35 U.S.C. § I03(a) as being unpatentable over Marvit, Rosenberg, and
Ohwa. Final Act. 3---6.
(2) Claims 8-11 and 14--17 stand rejected under 35 U.S.C. § I03(a)
as being unpatentable over Marvit, Rosenberg, Ohwa, and Wolinsky. Final
Act. 7-9.
(3) Claim 19 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Ording, Shahoian, Ohwa, and Rosenberg. Final Act. 9-
13.
(4) Claims 20-22 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Ording, Shahoian, and Rosenberg. Final Act. 13-16.
(5) Claim 23 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Ording, Shahoian, Rosenberg, and Ohwa. Final Act. 16-
17.
inadvertent typos, and thus, the claims are examined based on the
dependencies indicated in the claim set filed on June 19, 2017 during
prosecution.
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Appeal2018-004933
Application 12/697 ,030
(6) Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ording, Shahoian, Rosenberg, and Wolinsky. Final Act.
17-18.
ISSUE
Based on Appellants' arguments, the dispositive issue on appeal is
whether the Examiner's combination of prior art references teaches or
suggests "determin[ing] a haptic effect based in part on the virtual weight of
the one or more virtual objects and the function" as recited in claim 1, and
similarly recited in claims 12, 19, and 20. App. Br. 26-28; Reply Br. 1-3.
ANALYSIS
In support of the obviousness rejection of claims 1, 12, 19, and 20, the
Examiner finds Rosenberg teaches most aspects of Appellants' claimed
invention including 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." Final Act. 4, 12, 15 (emphasis added) (citing Rosenberg ,r 59);
Adv. Act. 2 (mailed Aug. 1, 2017, citing Rosenberg ,r,r 3, 41, 53); Ans. 19-
20.
Appellants acknowledge:
Rosenberg discloses a force feedback interface wherein a virtual
environment comprises one or more virtual objects comprising
an associated virtual weight, and execution of a function based
on a determined haptic effect based in part on the virtual weight
of the one or more virtual objects, output a haptic signal
associated with the haptic effect, and outputting the signal to the
device.
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Appeal2018-004933
Application 12/697 ,030
App. Br. 27 ( citing Rosenberg ,r 59). However, Appellants argue Rosenberg
does not teach, and the Examiner does not address, "determin[ing] a haptic
effect based in part on the virtual weight of the one or more virtual objects
and the function." Id. According to Appellants, paragraph 59 of
Rosenberger only teaches "force sensations that depend on motion of the
user manipulatable object," but nothing about "determining a haptic effect
"based in part on ... the function." Id. at 27-28.
In response, the Examiner takes the position that because the claim
language recites that the haptic effect is determined "based in part" on the
virtual weight and the function, the phrase "based in part" can be interpreted
as the haptic effect is determined "based on the virtual weight, or the
function, or partially the virtual weight and partially the function. Ans. 20-
21.
We do not agree with the Examiner's interpretation of the claim
language but nonetheless agree with the Examiner that Rosenberg discloses
the claimed limitation . Claim terms, during prosecution, are given their
broadest reasonable interpretation consistent with the Specification. In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
However, the broadest-construction rubric does not give the PTO an
unfettered license to interpret the words in a claim without regarding for the
full claim language and the written description. In re Suit co Swface Inc., 94
USPQ2d 1640, 1644 (Fed. Cir. 2010). Rather, claims should always be read
in light of the specification and teachings in the underlying patent. See
Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211,217 (1940). A
construction that is unreasonably broad and does not reasonably reflect the
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Appeal2018-004933
Application 12/697 ,030
plain language and disclosure in the specification will not pass muster.
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015).
Here, 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" ( emphasis added) includes a phrase "based in part on" two
separate and distinct elements: Element "A" ("virtual weight of ... virtual
objects") and Element "B" ("function") connected with a conjunction word
"and." The term "and" is defined as "used to join sentence elements of the
same grammatical rank or function" (Merriam-Webster.com ( emphasis
added). 4 Given the broadest reasonable interpretation and the meaning of
the conjunction word "and", the phrase "based in part on" indicates that in
determining "haptic effect", both Element "A" ("virtual weight of ... virtual
objects") and Element "B" ("function") must be considered for purposes of
determining "a haptic effect." As such, we are persuaded by Appellants'
arguments that "[t]he plain meaning of 'determin[ing] a haptic effect based
in part on the virtual weight of the one or more virtual objects and the
function,' requires determining a haptic effect based in part on both 'the
virtual weight of the one or more virtual objects and the function."' App. Br.
28.
Nevertheless, we still agree with the Examiner that Rosenberg teaches
the disputed limitation. Ans. 19--20. For example, Rosenberg's Figure 3 is
4 Merriam-Webster.com, accessed at https://www.merriam-
webster.com/ dictionary/ and (last visited April 11, 2019).
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Application 12/697 ,030
reproduced below with additional markings for illustration.
INTERFACE DEVICE HOST COMPUTER
-~:t.";
' ~
Rosenberg's Figure 3 shows a block diagram of a force feedback system 30
including a host computer 32 and an interface device 34 connected by a
communication bus 36. Rosenberg ,r,r 34, 46, 50.
As shown in Figure 3, Rosenberg teaches that sensors 62 "sense the
position, motion and/or other characteristics of a user object 66." Receiving
such data, the haptic accelerator 60 provides the local microprocessor with
parameters such as position, velocity, and acceleration that are used to
compute and output the force values required for conditions such as
stiffness, damping and inertia. Rosenberg ,r,r 46, 61. In other words, based
on the parameters of the virtual object, a haptic effect is determined.
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Application 12/697 ,030
Rosenberg also teaches that the sensor signals received and used by
microprocessor are reported to host computer, which in tum, "updates a host
application program and outputs force control signals as appropriate. For
example, if the user moves a user manipulatable object, the computer 32
receives position and/or other signals indicating this movement and can
move a displayed cursor in response." Rosenberg ,r,r 42, 64. Therefore,
force control signals (i.e., haptic effect) are determined based on parameters
of the user object and the appropriate host application program comprising
functions such as movement of the displayed cursor, as correctly recognized
by Examiner. Ans. 20
In the Reply, Appellants argue that Examiner's interpretation of
"function" as "movement of the virtual object controlled by the motion of
the user manipulatable object" is not consistent with the plain language of
the claims since "claims require (1) that the function be executed, and (2)
that the user interface is modified based in part on the function," and
secondly, because "such an interpretation is not consistent with the
specification, as is required." Reply Br. 2.
We disagree. First, the term "function" is not limited to "movement
of the virtual object controlled by the motion of the user manipulatable
object" as Appellants argue. Reply Br. 2. Although the claims are
interpreted in light of the specification, limitations from the specification are
not read into the claims. In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993).
Second, Rosenberg teaches that movement of the virtual object (i.e. cursor)
is "controlled by the position of the user manipulatable object in a user
object workspace," and that the cursor movement is executed, "the cursor in
the word processor is then drawn on the display in the appropriate location"
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Application 12/697 ,030
as consistent with the claim. Further, in the process of being executed, the
cursor modifies the user interface as the "cursor can interact with a graphical
representation of a tab marker by dragging the tab-marker to a new
location", indicating the modification of user interface. Rosenberg ,r 64.
For these reasons, Appellants' arguments have not persuaded us of
Examiner error. Accordingly, we sustain the Examiner's obviousness
rejection of claim 1, and similarly, independent claims 12, 19, and 20 for
which Appellants provide the same arguments, and dependent claims 2, 5, 6,
8-12, 14--17, and 21-24 argued for their dependency. App. Br. 26-30.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1, 2, 5, 6, 8-12, 14--17,
and 19-24 under 35 U.S.C. § 103(a).
DECISION
As such, we affirm the Examiner's final rejection of claims 1, 2, 5, 6,
8-12, 14--17, and 19-24 under 35 U.S.C. § 103(a).
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).
AFFIRMED
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