Ex Parte Rosenberg et al

Patent Trial and Appeal Board

Mar 10, 2014

11703322 (P.T.A.B. Mar. 10, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/703,322 02/06/2007 Louis B. Rosenberg IMMR-0015B 8991
34300 7590 03/10/2014
PATENT DEPARTMENT (51851)
KILPATRICK TOWNSEND & STOCKTON LLP
1001 WEST FOURTH STREET
WINSTON-SALEM, NC 27101
EXAMINER
HORNER, JONATHAN R
ART UNIT PAPER NUMBER
2694
MAIL DATE DELIVERY MODE
03/10/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LOUIS B. ROSENBERG and SCOTT B. BRAVE
____________________

Appeal 2011-010385
Application 11/703,322
Technology Center 2600
____________________

Before THU A. DANG, JOHNNY A. KUMAR, and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-18. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.2

1 The Real Party in Interest is Immersion Corporation.
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Application 11/703,322

2

STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to a method and apparatus for providing
force feedback to a user’s interaction with a displayed environment. A
signal is output from a host computer to an interface device to apply a force
sensation to a physical object, such as a joystick or a mouse. Abstract.
Claims on Appeal
Claims 1, 6, and 13 are the independent claims on appeal. Claim 1 is
representative of the Appellants’ invention, as reproduced with disputed
limitations emphasized below:

1. A method for providing a user of a manipulandum with
haptic feedback simulating an interaction of a simulated object
with a simulated compliant paddle whose movement is
associated with movement of the manipulandum, the method
comprising:
determining a first haptic force during a first stage of the
interaction, the first haptic force based on the interaction and a
compliance of the simulated compliant paddle;
determining a second haptic force during a second stage
of the interaction, the second haptic force based on the
interaction and the compliance;
actuating one or more actuators that are coupled to the
manipulandum to impart the first haptic force to the
manipulandum during the first stage of the interaction; and

2 Our decision refers to Appellants’ Appeal Brief filed December 13, 2010
(“App. Br.”); Reply Brief filed May 13, 2011 (“Reply Br.”); Examiner’s
Answer mailed March 16, 2011 (“Ans.”); Final Office Action mailed May
13, 2010 (“Final Rej.”); and the original Specification filed February 6, 2007
(“Spec.”).
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actuating at least one of the one or more actuators to
impart the second haptic force to the manipulandum during the
second stage.

Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lefkowitz US 4,524,348 Jun. 18, 1985
Brimhall US 5,396,266 Mar. 7, 1995

Examiner’s Rejections
(1) Claims 13-18 stand rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter. Ans. 3
(2) Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brimhall and Lefkowitz. Ans. 4-8.

ISSUES
Based on Appellants’ arguments, the issues on appeal are (1) whether
the Examiner erred in rejecting claims 13-18 under 35 U.S.C. § 101, and (2)
whether the Examiner erred in rejecting claims 1-18 under 35 U.S.C.
§ 103(a) as being unpatentable over Brimhall and Lefkowitz. Under the
§ 103(a) rejection, the appeal turns on whether the Examiner’s combination
of Brimhall and Lefkowitz discloses or suggests: (1) a first stage of an
interaction and a second stage of an interaction; and (2) a compliant paddle
and determining a force based on a compliance of a compliant paddle, as
recited in independent claims 1, 6, and 13. App. Br. 8-10.

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ANALYSIS
§ 101 Rejection of Claims 13-18
Claims 13-18 recite “a computer readable medium.” Appellants’
Specification is devoid of any definition of “computer readable medium”
and fails to expressly limit the term “computer readable medium” to exclude
signals, carrier waves, etc.
The Examiner finds the claimed “computer readable medium” when
accorded the broadest reasonable interpretation encompasses non-statutory
forms of media, such as signals and waveforms. Ans. 4. The Examiner
further suggests compliance with the Patent and Trademark Office (PTO)’s
instructions to overcome the § 101 rejection at USPTO web site at
http://www.uspto.gov/patents/law/notices/101_crm_20100127.pdf. Id.
In response, Appellants disclaim from the scope of claims 13-18 any
embodiments of computer-readable media that are transitory. App. Br. 10.
However, Appellants’ disclaimer as presented in their Brief is not a
sufficient disclaimer that the claimed computer readable medium necessarily
excludes transitory media from the scope of the term. See In re Nuijten, 500
F.3d 1346, 1355 (Fed. Cir. 2007) and our precedential opinion in Ex parte
Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential) (expanded
panel) (holding recited computer-readable storage medium ineligible under §
101 since it encompasses transitory media). As such, we find that the
Examiner correctly concludes the broadest reasonable interpretation of the
term “a computer readable medium,” according to its ordinary and
customary meaning to a person of ordinary skill in the art, encompasses non-
statutory subject matter. Ans. 11.
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We note, however, that Appellants are not precluded from amending
the specification and the claims to overcome the rejection. Relevant
guidance is in U.S. Patent & Trademark Office, Subject Matter Eligibility of
Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010)
(“A claim drawn to such a computer readable medium that covers both
transitory and non-transitory embodiments may be amended to narrow the
claim to cover only statutory embodiments to avoid a rejection under 35
U.S.C. § 101 by adding the limitation ‘non-transitory’ to the claim.”); U.S.
Patent & Trademark Office, Evaluating Subject Matter Eligibility Under 35
USC § 101 (August 2012 Update) pp. 11-14, available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf (noting
that while “non-transitory” is a viable option for overcoming the
presumption that the media encompass signals or carrier waves, merely
indicating that such media are “physical” or “tangible” will not overcome
such presumption).
Nevertheless, we sustain the Examiner’s rejection of claims 13-18
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.

§ 103(a) Rejection of Claims 1-18
With respect to independent claims 1, 6, and 13, the Examiner finds
Brimhall discloses a similar apparatus for providing force feedback to a
user’s interaction with a displayed environment and a similar method
determining a first haptic force during a first stage of the interaction, the first
haptic force based on the interaction and a compliance of the simulated
compliant paddle; determining a second haptic force during a second stage
of the interaction, the second haptic force based on the interaction and the
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compliance. Ans. 4-5 (citing Brimhall, col. 5, ll. 64-67; col. 6, ll. 3-31; FIG.
3 and FIG. 6).
FIG. 3 of Brimhall is reproduced below.

FIG. 3 of Brimhall shows an illustration of a computer-based game
including a user’s interaction with a displayed environment 40, a joystick 10,
a simulated racetrack 46, race car 48, and obstacles 50.

As shown in FIG. 3, the user’s skill is tested in the manipulation of
race car 48 along racetrack 46 through selective movement of joystick 10.
Signal processor 42 calculates the relationship between race car 48 and
racetrack 46 to provide feedback information to joystick 10, feedback
information such as braking force when it is determined that race car 48
have struck sidewall 46 and struck obstacle 50. See Brimhall, col. 4, ll. 50-
65; and col. 6, ll. 1-30.
The Examiner acknowledges that Brimhall does not explicitly disclose
“[a simulated] compliant paddle.” Id. at 5. The Examiner then finds
Lefkowitz discloses a simulated compliant paddle where a user’s interaction
and manipulation of a joystick to control movements of the simulated paddle
colliding with a ball. Id. at 5-6 (citing Lefkowitz, col. 1, ll. 45-56).
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Based on these disclosures and their same field of endeavor, the
Examiner concludes that:
[i]t would have been obvious … to replace the screen icon (and
object) of Brimhall with a [simulated] compliant paddle (and
ball) as taught by Lefkowitz because the feedback system
taught by Brimhall allows for feedback in a variety of systems
and the paddle and ball of Lefkowitz allow that system to be
used in a tennis or ping-pong like manner which increases the
enjoyment of the user.

Id. at 5-6 (citing Lefkowitz, col. 1, ll. 45-55).
Appellants contend the Examiner’s combination of Brimhall and
Lefkowitz does not disclose “determining a first haptic force during a first
stage of the interaction, the first haptic force based on the interaction and a
compliance of the simulated compliant paddle;” and “determining a second
haptic force during a second stage of the interaction, the second haptic force
based on the interaction and the compliance.” App. Br. 8. In particular,
Appellants argues that the Examiner’s combination of Brimhall and
Lefkowitz does not disclose a first stage of an interaction and a second stage
of an interaction and determining a force based on a compliance of a
compliant paddle. Id. 8-10.
We do not find Appellants’ arguments persuasive. Contrary to
Appellants’ contentions, we find the combination of Brimhall and Lefkowitz
teaches a first stage of an interaction, a second stage of an interaction, and
determining a force based on a compliance of a compliant paddle, as
correctly found by the Examiner. Ans. 4-5 and 9-11.
Brimhall discloses the computer 40 providing feedback of braking-
like force to lever arm or joystick 10 if determines that race car 48 struck
sidewall 46 and similarly providing feedback of braking-like force to lever
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arm or joystick 10 if determines that race car 48 struck obstacle 50. Id. at 9
(citing Brimhall, col. 4, ll. 50-65 or col. 6, ll. 1-30). The race car 48
interactions to race track 46 and to the obstacle 50 can be broadly interpreted
to encompass Appellants’ claimed “first stage of an interaction” and “second
stage of an interaction.” The feedback of braking-like force to lever arm or
joystick 10 when race car 48 struck sidewall 46 and struck obstacle 50 can
be broadly interpreted to encompass determining a force based on a
compliance of the compliant race car 48.
Lefkowitz is cited for disclosing the missing feature, i.e., simulated
compliant paddle. Ans. 5-6 and 10-11. Consequently, we find the
Examiner’s combination of Brimhall and Lefkowitz discloses the disputed
limitations of Appellants’ independent claims 1, 6, and 13, including:
“determining a first haptic force during a first stage of the interaction, the
first haptic force based on the interaction and a compliance of the simulated
compliant paddle” and “determining a second haptic force during a second
stage of the interaction, the second haptic force based on the interaction and
the compliance.”
For the reasons set forth above, Appellants’ contentions have not
persuaded us of any error in the Examiner’s position. Accordingly, we
sustain the Examiner’s obviousness rejection of independent claims 1, 6, and
13 based on Brimhall and Lefkowitz.
Appellants present no separate patentability arguments with respect to
dependent claims 2-5, 7-12 and 14-18. For the same reasons discussed, we
also sustain the Examiner’s obviousness rejection of claims 2-5, 7-12 and
14-18.

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CONCLUSION
On the record before us and arguments presented by Appellants, we
conclude that the Examiner has not erred in rejecting: (1) claims 13-18 under
35 U.S.C. § 101 and (2) claims 1-18 under 35 U.S.C. § 103(a).

DECISION
As such, we AFFIRM the Examiner’s final rejection of claims 1-18.
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).

AFFIRMED

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