Ex Parte Birnbaum et al

Patent Trial and Appeal Board

Jun 29, 2018

12502755 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/502,755 07/14/2009
34300 7590 07/03/2018
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.
IMM310 (51851/365651) 6796
EXAMINER
THERIAULT, STEVENB
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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,
and DANNY GRANT
Appeal2017-002443
Application 12/502,755 1
Technology Center 2100
Before JASON J. CHUNG, KARA L. SZPONDOWSKI, and
PHILLIP A. BENNETT, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection2 of claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
INVENTION
1 According to Appellants, the real party in interest is Immersion Corp.
App. Br. 1.
2 We herein refer to the Specification, filed Jul. 14, 2009 ("Spec."); Final
Office Action, mailed Feb. 11, 2016 ("Final Act."); Appeal Brief, filed Aug.
11, 2016 ("App. Br."); Examiner's Answer, mailed Sept. 27, 2016 ("Ans.");
and the Reply Brief, filed Nov. 23, 2016 ("Reply Br.").
Appeal2017-002443
Application 12/502,755
The invention is directed to "messaging systems, and more
particularly to systems and methods for physics-based tactile messaging."
Spec. i-f 2. Claim 1 is illustrative of the invention and is reproduced below:
1. A method comprising:
receiving a sensor signal from a sensor configured to sense
a physical interaction with a messaging device;
determining an interaction between one or more virtual
message objects and a virtual message environment, the
interaction based at least in part on the sensor signal and a virtual
physical parameter of at least one of the one or more virtual
message objects, the one or more virtual message objects each
comprising a message and an associated data file, and wherein
the virtual physical parameter is associated with the data file;
determining a haptic effect based at least in part on the
interaction; and
generating a haptic signal configured to cause an actuator
to output the haptic effect.
(App. Br., Claims Appendix, 22.)
REJECTIONS AT ISSUE
Claims 1, 11, and 14--16 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Grant et al. (US 2008/0287147 Al; filed May 18, 2007)
(hereinafter, "Grant' 147"). Final Act. 5-6.
Claims 1-29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination ofKotzin et al. (US 2005/0219211 Al;
published Oct. 5, 2005) (hereinafter, "Kotzin") and Grant et al. (US
2006/0288137 Al; published Dec. 21, 2006) (hereinafter "Grant '137").
Final Act. 6-10.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
2
Appeal2017-002443
Application 12/502,755
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
Rejection of Claims 1, 11, and 14--16 under 35 U.S.C. § 102(e)
The Examiner finds Grant '14 7 discloses a user selects, inserts a
smiley icon, emoticon, or command, and adds haptic effects within the text
of the SMS message. Ans. 6-7 (citing Grant' 147 i-fi-f 18, 22). In addition,
the Examiner finds Grant '14 7 discloses when a user receives the message,
the message will display to the user, which the Examiner maps to the
limitation:
determining an interaction between one or more virtual message
objects and a virtual message environment, the interaction based
at least in part on ... a virtual physical parameter of at least one
of the one or more virtual message objects ... [and] determining
a haptic effect based at least in part on the interaction
recited in claims 1 and 14 (and similarly recited in claims 11, 15, and 16).
Ans. 7-8 (citing Grant '14 7 i-fi-1 22, 24 ).
Appellants argue Grant '147 fails to disclose "determine an
interaction between one or more virtual message objects and a virtual
message environment" as recited in claims 1 and 14 (and similarly recited in
claims 11, 15, and 16) because Grant '14 7 merely discloses determining an
interaction for the message and device input with the sensor. App. Br. 17;
Reply Br. 3--4. In addition, Appellants argue Grant '147 discloses
"vibrotactile haptic effects, may be useful ... to create a sensory immersion
within a simulated or virtual environment," but fails to disclose: (1) virtual
message objects; (2) a virtual message environment; or (3) an interaction
3
Appeal2017-002443
Application 12/502,755
between one or more virtual message objects and a virtual message
environment. App. Br. 17; Reply Br. 3--4. Moreover, Appellants argue
Grant '14 7 discloses haptic content embedded in a message, which fails to
disclose
determining an interaction between one or more virtual message
objects and a virtual message environment, the interaction based
at least in part on ... a virtual physical parameter of at least one
of the one or more virtual message objects
recited in claims 1 and 14 (and similarly recited in claims 11, 15, and 16).
App. Br. 18; Reply Br. 3--4. Appellants further argue Grant '147 discloses
inserting or displaying the haptic message and outputting the effect to the
device such as vibrating, which fails to disclose the claimed "determining a
haptic effect based at least in part on the interaction [between one or more
virtual message objects and a virtual message environment]" as recited in
claim 1 (and similarly recited in claims 11 and 14--16). App. Br. 18. We
disagree with Appellants.
As an initial matter, Appellants do not refer to any special definitions
of "virtual message objects," "virtual message environment," and "virtual
physical parameter" nor do we find the Specification contains special
definitions for those terms. The cited portions of Grant '14 7 relied upon by
the Examiner disclose a user selects and inserts a smiley icon, emoticon (i.e.,
the smile or other emotion discloses the claimed "virtual physical
parameter"), or command (i.e., the smiley icon, emoticon, or command
discloses the claimed "virtual message objects"), and adds haptic effects
within the text of the SMS message (i.e., the SMS is a "virtual message
environment"). Ans. 7 (citing Grant '147 i-fi-f 18, 22). In addition, the cited
portions of Grant '14 7 disclose when a user receives the message, the
4
Appeal2017-002443
Application 12/502,755
message will display (i.e., determining an interaction between one or more
smiley icons, emoticons, etc. with the SMS messaging environment) to the
user, which discloses the limitation
determining an interaction between one or more virtual message
objects and a virtual message environment, the interaction based
at least in part on ... a virtual physical parameter of at least one
of the one or more virtual message objects ... [and] determining
a haptic effect based at least in part on the interaction"
recited in claims 1 and 14 (and similarly recited in claims 11, 15, and 16).
Ans. 7-8 (citing Grant '147 i-fi-122, 24).
Accordingly, we sustain the Examiner rejection of independent claims
1, 11, and 14--16 under 35 U.S.C. § 102(e).
Rejection of Claims 1, 2, 4, 5, 9-20, 22, 23, 25, 28, and 29 under
35 U.S.C. § 103(a)
The Examiner finds Kotzin teaches emptying a virtual glass of liquid
from one handheld electronic device to fill another virtual glass of liquid on
a handheld electronic device that provides haptic feedback to the user, which
the Examiner maps to the limitation "determining a haptic effect based at
least in part on the interaction [between one or more virtual [] objects and a
virtual[] environment]" recited in claims 1 and 14 (and similarly recited in
claims 11, 15, and 16). Ans. 10 (citing Kotzin i-fi-f 18, 20, 22). In addition,
the Examiner finds Grant' 137 teaches a plurality of handheld
communication devices in a chat session with each other and using avatars
as visual representations; the avatars have a haptic effect such as a laugh,
giggle, cry, pet purring, or the like, which the Examiner maps to the
limitation "determining a haptic effect based at least in part on the
5
Appeal2017-002443
Application 12/502,755
interaction [between one or more virtual message objects and a virtual
message environment]" recited in claims 1 and 14 (and similarly recited in
claims 11, 15, and 16). Ans. 11-12 (citing Grant '137 i-f 49).
Appellants argue Kotzin fails to teach "determining a haptic effect
based at least in part on the interaction [between one or more virtual
message objects and a virtual message environment]" because its discussion
of haptics is cursory. App. Br. 19. Additionally, Appellants argue Grant
'137 fails to teach virtual message objects or a virtual message environment.
Id. Appellants also argue although Grant' 137 teaches haptic effects that are
customized or personalized to convey information to the user about various
events of interest, it fails to teach "determining a haptic effect based at least
in part on the interaction [between one or more virtual message objects and a
virtual message environment]." Id. We disagree with Appellants.
The cited portions of Kotzin relied upon by the Examiner teach
emptying a virtual glass (i.e., one virtual object) of liquid (i.e., the liquid
transferring teaches the claimed "virtual physical parameter") from one
handheld electronic device to fill (i.e., interaction) another virtual glass of
liquid (i.e., the program that runs the virtual glass pouring liquid into another
virtual glass teaches the virtual environment; the displaying of virtual liquid
pouring teaches the interaction of the virtual objects and virtual
environment). Ans. 10 (citing Kotzin i-fi-118, 20, 22). In addition, the cited
portions of Kotzin teach a handheld electronic device that provides haptic
feedback to the user, which teaches the limitation "determining a haptic
effect based at least in part on the interaction [between one or more virtual []
objects and a virtual[] environment]" recited in claims 1 and 14 (and
6
Appeal2017-002443
Application 12/502,755
similarly recited in claims 11, 15, and 16). Ans. 10 (citing Kotzin i-fi-f 18, 20,
22).
Moreover, the cited portions of Grant '137 teach a plurality of
handheld communication devices in a chat session (i.e., virtual message
environment), exchanging messages (i.e., virtual message objects) with each
other, and using avatars as visual representations. Ans. 11-12 (citing Grant
'13 7 i1 49). Also, the cited portions of Grant '13 7 teach the avatars have a
haptic effect such as a laugh, giggle, cry, pet purring, or the like, which the
Examiner maps to the limitation "determining a haptic effect based at least
in part on the interaction [between one or more virtual message objects and a
virtual message environment]" recited in claims 1 and 14 (and similarly
recited in claims 11, 15, and 16). Ans. 11-12 (citing Grant '137 i-f 49). 3
Accordingly, we sustain the Examiner rejection of: (1) independent
claims 1, 11, and 14--16; and (2) dependent claims 2, 4, 5, 9, 10, 12, 13, 17-
20, 22, 23, 25, 28, and 29 under 35 U.S.C. § 103(a).
Rejection of Claims 3 and 24 under 35 U.S.C. § 103(a)
Claim 3 and claim 24 each recite the limitation "wherein the
interaction between the one or more virtual message objects and the virtual
message environment comprises a collision." App. Br. 22, 26 (Claims
Appendix). The Examiner finds claims 3 and 24 do not "recite or require the
collision to be a collision of objects per se, rather the claim is interpreted as
the interaction between one object and the environment comprises any or all
forms of what a collision could be." Ans. 12. The Examiner finds Kotzin's
3 In the event of further prosecution, the Examiner should consider whether
Grant '137 anticipates the claims under 35 U.S.C. § 102(b ).
7
Appeal2017-002443
Application 12/502,755
interaction between the user's hand and the object on the interface teaches
the recited collision. Ans. 12 (citing Kotzin i-fi-143--45).
Appellants argue collision does not appear in Kotzin, and Kotzin does
not teach a collision of anything. App. Br. 20. We agree with Appellants.
The cited portions of Kotzin relied upon by the Examiner lack any
implicit or explicit reasonable teaching of collision. Ans. 12 (citing Kotzin
i-fi-1 43--45). The broadest reasonable interpretation does not mean the
broadest possible interpretation. See MPEP § 2111. Accordingly, we do not
sustain the Examiner's rejection of claims 3 and 24.
Rejection of Claims 6 and 21 under 35 U.S.C. § 103(a)
Claim 6 and claim 21 each recite the limitation "wherein the virtual
message environment comprises an inbox." App. Br. 23, 26 (Claims
Appendix). The Examiner cites to the Background of Grant' 137 for the
first time in the Answer and finds Grant ' 13 7 teaches an inbox of email,
which the Examiner maps to the "inbox" recited in claims 6 and 21.
Compare Ans. 13 (citing Grant '137 i14) with Final Act. 9 (citing Kotzin).
Appellants argue the Examiner's reliance on Kotzin without any
citation does not teach an "inbox" as recited in claims 6 and 21. App. Br.
20. We disagree with Appellants.
Appellants do not rebut adequately the Examiner's finding that Grant
'137 teaches an inbox of email. Compare App. Br. 20 (arguing Kotzin fails
to teach the limitations recited in claims 6 and 21) with Reply Br. 4 (lacking
specific arguments pertaining to the Examiner's finding that Grant ' 13 7
teaches the limitations recited in claims 6 and 21 ). Accordingly, we sustain
the Examiner's rejection of claims 6 and 21.
8
Appeal2017-002443
Application 12/502,755
Rejection of Claims 7 and 26 under 35 U.S.C. § 103(a)
Claim 7 and claim 26 each recite the limitation "wherein the virtual
physical parameter comprises a size, a mass, a shape, a collision behavior, a
texture, or a visual representation." App. Br. 23, 26 (Claims Appendix).
The Examiner finds Kotzin's glass teaches the limitation "a visual
representation" recited in claims 7 and 26. Ans. 12 (citing Kotzin, Figs. 3-
4). Moreover, the Examiner finds Kotzin's liquid pouring teaches a virtual
physical parameter. Ans. 12-13 (citing Kotzin, Figs. 3--4).
Appellants argue Kotzin does not teach a cup in Figures 3--4, and
Kotzin's Figure 1 makes it clear that the cup is not transferred to another
device. According to Appellants, Kotzin merely teaches that one cup is
emptied while another cup is filled, which fails to teach "a virtual physical
parameter of at least one of the one or more virtual message objects." App.
Br. 20-21. We disagree with Appellants.
The cited portions of Kotzin teach a glass pouring liquid, which
teaches "a visual representation" recited in claims 7 and 26. Ans. 12-13
(citing Kotzin, Figs. 3--4). And the cited portions ofKotzin teach liquid
pouring, which teaches "a virtual physical parameter of at least one of the
one or more virtual message objects" recited in claims 7 and 26 ("virtual
physical parameter" is recited in claims 7 and 26 via their dependence from
claims 1 and 16). Ans. 12-13 (citing Kotzin, Figs. 3--4). Accordingly, we
sustain the Examiner's rejection of claims 7 and 26.
9
Appeal2017-002443
Application 12/502,755
Rejection of Claims 8 and 27 under 35 U.S.C. § 103(a)
Claim 8 and claim 2 7 each recite the limitation "wherein the virtual
message objects comprise one or more of: a ball, a tube, or a capsule."
App. Br. 23, 27 (Claims Appendix). The Examiner finds Kotzin's glass
teaches a cup or tube and Kotzin teaches other representations could be used.
Ans. 13-14 (citing Kotzin, Fig. 3). Moreover, the Examiner concludes a
skilled artisan would have understood at the time of the invention that the
user can choose what representation they want to see. Ans. 14 (citing
explicit suggestion to use physical forms other than cups in Kotzin i-fi-1 20,
44).
Appellants argue there is no tube in Kotzin so the Examiner fails to
establish prima facie obviousness. App. Br. 21. We disagree with
Appellants.
The cited portions of Kotzin teach a glass, which teaches "a cup or
tube." Ans. 13-14 (citing Kotzin, Fig. 3). Moreover, we agree with the
Examiner's conclusion that a skilled artisan would have understood at the
time of the invention that the user can choose what representation they want
to see. Ans. 14 (citing Kotzin i120). Accordingly, we sustain the
Examiner's rejection of claims 8 and 27.
DECISION
We affirm the Examiner's decision rejecting claims 1, 11, and 14--16
under 35 U.S.C. § 102(e).
We affirm the Examiner's decision rejecting claims 1, 2, 4--23, 25-29
under 35 U.S.C. § 103(a).
10
Appeal2017-002443
Application 12/502,755
We reverse the Examiner's decision rejecting claims 3 and 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-IN-PART
11