Ex Parte Ramsay et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201713046263 (P.T.A.B. Feb. 28, 2017) Copy Citation 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. 13/046,263 03/11/2011 Erin Ramsay IMM344 (51851/371384) 4516 7590 Kilpatrick Townsend and Stockton, LLP 1001 W Fourth Street Winston-Salem, NC 27101 EXAMINER MATTHEWS, ANDRE L ART UNIT PAPER NUMBER 2621 NOTIFICATION DATE DELIVERY MODE 03/02/2017 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 ERIN RAMSAY and PEDRO GREGORIO Appeal 2016-004682 Application 13/046,2631 Technology Center 2600 Before ROBERT E. NAPPI, JOHN P. PINKERTON, and MATTHEW J. McNEILL, Administrative Patent Judges. PINKERTON, Administrative Patent Judge DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 2, 5—18, 20, 22, and 23, which are the only claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm and designate our decision as a new ground of rejection under 37 C.F.R § 41.50(b). 1 Appellants identify Immersion Corporation as the real party in interest. App. Br. 1. Appeal 2016-004682 Application 13/046,263 STATEMENT OF THE CASE Introduction Appellants’ disclosed and claimed invention generally relates “to haptic feedback and systems and methods for pre-touch and true touch. Spec. 12.2 Claim 1 is representative and reproduced below (with the disputed limitations emphasized)'. 1. A system comprising: a touch-sensitive interface configured to detect a user interaction and transmit a first interface signal based at least in part on the user interaction, wherein the touch-sensitive interface is configured to detect the user interaction before a physical contact and transmit the first interface signal based at least in part on the user interaction before the physical contact, and wherein the touch-sensitive interface is configured to detect the physical contact and transmit a second interface signal based at least in part on the physical contact', a processor in communication with the touch-sensitive interface and configured to receive the first interface signal and determine a haptic effect based at least in part on the first interface signal, the processor further configured to preload a haptic signal associated with the haptic effect', a cache in communication with the processor and configured to store the preloaded haptic signal for a time period, then transmit the haptic signal; and a haptic effect generator in communication with the cache and configured to receive the haptic signal from the cache 2 Our Decision refers to the Final Action mailed Feb. 12, 2015 (“Final Act.”); Appellants’ Appeal Brief filed Aug. 20, 2015 (“App. Br.”) and Reply Brief filed Apr. 4, 2016 (“Reply Br.”); the Examiner’s Answer mailed Feb. 3, 2016 (“Ans.”); and the original Specification filed Mar. 11, 2011 (“Spec.”). 2 Appeal 2016-004682 Application 13/046,263 and output a haptic effect based at least in part on the haptic signal. App. Br. 19 (Claims App’x). Rejection on Appeal Claims 1, 2, 5—18, 20, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Waldman (US 5,311,175; issued May 10, 1994), Braun et al. (US 2004/0104924 Al; published June 3, 2004) (“Braun”), and Hoellwarth (US 2010/0079264 Al; published Apr. 1, 2010). ANALYSIS We have reviewed the Examiner’s rejection in light of Appellants’ arguments in the Briefs and are not persuaded the Examiner has erred. Unless otherwise noted, we adopt as our own the findings and reasons set forth by the Examiner in the Office Action from which this appeal is taken (Final Act. 2—8) and in the Examiner’s Answer (Ans. 2—5), and we concur with the conclusions reached by the Examiner. For emphasis, we consider and highlight specific arguments as presented in the Briefs. Rejection of Claims 1, 2, 5—18, 20, 22, and 23 under § 103(a)3 Appellants’ First, Second, and Third Arguments Appellants argue the combination of references fails to teach or suggest “the processor further configured to preload a haptic signal associated with the haptic effect,” as recited in claim 1. App. Br. 14. In particular, Appellants argue the portions of Waldman cited by the Examiner, 3 Claim 1 is the only claim separately argued by Appellants. See App. Br. 14—18. Thus, we decide the rejection of these claims on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). 3 Appeal 2016-004682 Application 13/046,263 col. 6,11. 25—38 and col. 6,11. 19—23, are related to buffering a digit for dialing a telephone instead of providing a haptic effect. Id. 14—16; Reply Br. 1—2. Appellants also argue, while Waldman mentions using “dynamic tactile feedback” for the blind or deaf, “it does not discuss storing this feedback in elements 2—6 and 2—7, as the Examiner proposes.” App. Br. 15—16 (citing Waldman 10:29—33, 11:54—68). Appellants further argue, although the Examiner cites Braun as teaching a memory and force output management system for a force feedback system, it would not be obvious to replace elements 2—6 and 2—7 of Waldman because they are used for buffering a digit for dialing a telephone and “[replacing these components with the memory of Braun would render them inoperable for their intended purpose.” Id. at 16—17. Appellants also argue the Examiner has not established a motivation to combine Waldman and Braun in the Answer. Reply Br. 2. We do not find Appellants’ arguments persuasive. The Examiner finds, and we agree, Waldman teaches a store and forward method in which a user touches a button to store a number in the buffer memory and the number is identified or provided to the user through audio feedback or the feedback could be tactile. Ans. 2 (citing Waldman 6:25—38, 10:24—36); see also Waldman 6:17—23. The Examiner also finds, and we agree, Waldman teaches “a contact and press method where the system will recognize contact with a button [and] then execute a function one the button is pressed.” Id. (citing Waldman 12:60-66, 13:1—20); see also Waldman 6:29-36 (“responds to a Press by . . . also decoding the [Pressed] key . . . buffering the appropriate digit for dialing (2—6) . . . [and] [u]pon decoding a SND (2—16) Press, the system forwards the contents of the dialing means to the line 4 Appeal 2016-004682 Application 13/046,263 interface (2—7)”). The Examiner further finds Waldman teaches “the contacted button is stored in the buffer until the SND is pressed and is fully identified before completing the dial function [and] it would be understood that the signal associated with each numeric key is pre-loaded then it is provided as (tactile) feedback to the user once the user presses the SND key.” Ans. 2—3 (citing Waldman 6:35—49). In that regard, we note that column 6, lines 39-43 of Waldman state “the system could be configured to identity the entire telephone number currently held in the dialing buffer on a SND Touch, thereby confirming the number before it is sent to the line interface by a SND Press”). Thus, we agree with the Examiner’s finding that Waldman teaches or at least suggests the tactile signal associated with each numeric key is pre-loaded and, therefore, we find Waldman teaches or at least suggests “the processor further configured to preload a haptic signal associated with the haptic effect,” as recited in claim 1. See Merck & Co., Inc. v. Biocraft Labs, Inc., 874 F. 2d 804, 807—808 (Fed. Cir. 1989) (“the question under 35 U.S.C. 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made”). We also do not find Appellants’ arguments concerning Braun persuasive. First, we are not persuaded by Appellants’ argument that replacing elements 2—6 and 2—7 of Waldman with the memory of Braun would render them inoperable for their intended purpose because this argument is premised on the physical or bodily incorporation of Braun with Waldman. See App. Br. 16—17. In that regard, we agree with the Examiner that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements. In 5 Appeal 2016-004682 Application 13/046,263 re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). We also agree with the Examiner that Braun teaches “being able to store/pre-load a haptic effect into cache memory and then access the memory when the haptic effect is ready to be used” and that storing haptic signals in cache memory and later accessing the signal for use, as taught by Braun, can be incorporated into the phone dialing system as taught by Waldman without rendering the phone dialing method inoperable. Ans. 3^4; see also Final Act. 3 (citing Braun H 11, 12). Second, we are not persuaded by Appellants’ argument the Examiner has not established a motivation to combine Waldman and Braun. See Reply Br. 2. The Examiner finds it would have been obvious to a person of ordinary skill in the art to combine the idea of storing and forwarding haptic effects, as taught by Waldman, with the method of storing a force effect in cache memory until it is needed, as taught by Braun, because “[t]his combination would yield a device that provides a user with haptic feedback when needed to avoid erroneous use of the device.” See Final Act. 3^4. We agree with the Examiner’s stated rationale for combining Waldman and Braun and find it constitutes articulated reasoning with some rational underpinning in accordance with KSR Int’l Co. v. Teleflex Co., 550 U.S. 398, 418 (2007). 6 Appeal 2016-004682 Application 13/046,263 Appellants’ Fourth and Fifth Arguments Appellants argue the combination of references fails to teach or suggest “a processor in communication with the touch-sensitive interface and configured to receive the first interface signal and determine a haptic effect based at least in part on the first interface signal,” as recited in claim 1. App. Br. 17. In particular, Appellants argue this limitation requires a haptic effect generated based in part on user interaction before physical contact, which is not taught or suggested by Waldman’s teaching of tactile feedback based on touch/press key information. Id.; Reply Br. 2. Appellants also argue Hoellwarth does not teach or suggest “wherein the touch-sensitive interface is configured to detect the physical contact and transmit a second interface signal based at least in part on the physical contact” because Hoellwarth “does not discuss ‘a second interface signal based at least in part on the physical contact.’” App. Br. 17; Reply Br. 3. Although we agree with Appellants’ argument that Waldman does not teach the first interface signal based in part on user interaction before physical contact, the Examiner finds, and we agree, “Hoellwarth teaches a haptic feedback system wherein the touch-sensitive interface is configured to detect the user interaction before a physical contact and transmit the first interface signal based at least in part on the user interaction before the physical contact.” Final Act. 4 (citing Hoellwarth | 6). In that regard, paragraph 6 of Hoellwarth explains the system includes “a sensor arrangement configured to detect a location of an object in close proximity to the surface . . . [and] includes a haptic signal generator configured to produce a haptic signal when an object is detected.” We interpret this portion of Hoellwarth to teach that a haptic signal is produced when an 7 Appeal 2016-004682 Application 13/046,263 object is detected in close proximity to the surface, i.e., before physical contact. Thus, we find Hoellwarth teaches “a processor in communication with the touch-sensitive interface and configured to receive the first interface signal and determine a haptic effect based at least in part on the first interface signal,” as recited in claim 1. Although the Examiner finds paragraphs 5 and 6 of Hoellwarth teach “wherein the touch-sensitive interface is configured to detect the physical contact and transmit a second interface signal based at least in part on the physical contact” (see Final Act. 4; Ans. 5), we do not agree with this finding, but instead are persuaded by Appellants’ argument that Hoellwarth does not teach a second interface signal based at least in part on the physical contact. App. Br. 17; Reply Br. 3. However, we find Waldman teaches “a second interface signal based at least in part on the physical contact” because, as discussed supra, the touch/press system of Waldman teaches an audio or tactile signal is transmitted based on physical contact by touching or pressing a key or button. See Waldman 6:17-49; 10:24—36. Thus, we find Waldman teaches or suggests “wherein the touch-sensitive interface is configured to detect the physical contact and transmit a second interface signal based at least in part on the physical contact,” as recited in claim 1. DECISION We affirm the Examiner’s rejection of claims 1, 2, 5—18, 20, 22, and 23 under 35 U.S.C. § 103(a). Because our analysis above differs from the Examiner’s rejection, we designate this a new ground of rejection. 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). 8 Appeal 2016-004682 Application 13/046,263 37 C.F.R. § 41.50(b) This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, 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 evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding 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. . . . AFFIRMED 37 C.F.R, $ 41.50(b) 9 Copy with citationCopy as parenthetical citation