Ex Parte Satoh et al

Board of Patent Appeals and Interferences

Apr 21, 2010

10537417 (B.P.A.I. Apr. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KIMIYASU SATOH and HIROYUKI INOKAWA
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Appeal 2009-008795
Application 10/537,4171
Technology Center 2600
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Decided: April 21, 2010
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Before MARC S. HOFF, CARLA M. KRIVAK, and THOMAS S. HAHN,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Sony Corporation.
Appeal 2009-008795
Application 10/537,417

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ invention relates to an input apparatus having a
piezoelectric actuator drive control method providing force sense feedback
to a user. The control portion of the input apparatus controls the deformation
mechanism to start driving the piezoelectric actuator to gradually deform the
operation surface in one direction and then in the reverse direction, causing
the user to feel a force sense as feedback (Spec. 4-5). The period for which
the operation surface is deformed in one direction is larger than the period
for which the operation surface is deformed in the reverse direction (Spec.
5).
Claim 1 is exemplary of the claims on appeal:
1 An input apparatus that outputs coordinate values of an operation
surface that the user has pressed as an input operation, deforms the operation
surface, and causes the user to feel a force sense as a feedback with the
deformed operation surface, comprising:
a deformation mechanism portion that uses a piezoelectric actuator
composed of a piezoelectric bi-morph device and that deforms the operation
surface;
a press force detection portion that detects whether the operation
surface has been pressed; and
a control portion that controls said deformation mechanism portion to
start driving the piezoelectric actuator to gradually deform the operation
surface in one direction and then to deform the operation surface in a reverse
direction so that the period for which the operation surface is deformed in
one direction is sufficiently larger than the period for which the operation
surface is deformed in the reverse direction when said press force detection
portion detects that the operation surface has been pressed.

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Application 10/537,417

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Wu US 6,422,757 B1 Jul. 23, 2002
Divigalpitiya US 2003/0205450 A1 Nov. 6, 2003
Yoshitaka JP 11-212725 Aug. 6, 1999
Shigeki JP 2002-259059 Sep. 13, 2002
Claims 1-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shigeki in view of Yoshitaka and Divigalpitiya.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shigeki in view of Yoshitaka, Divigalpitiya, and Wu.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed October 20, 2008), the Reply Brief (“Reply Br.,” filed
January 26, 2009) and the Examiner’s Answer (“Ans.,” mailed November
26, 2008) for their respective details.

ISSUES
Appellants argue that none of the cited references teach or suggest a
control portion that controls the deformation mechanism to start driving the
piezoelectric actuator to deform the operation surface in a first direction, and
then in the reverse direction, as recited in independent claims 1 and 12 (App.
Br. 5). The Examiner finds that Shigeki teaches this feature (Ans. 4).
Appellants further argue that none of the cited references teach or
suggest that the period for which the operation surface is deformed in one
direction is sufficiently larger than the period for which the operation surface
is deformed in the reverse direction (App. Br. 6). By contrast, the Examiner
finds that this limitation is met by Divigalpitiya (Ans. 5).
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Application 10/537,417

Appellants’ contentions present us with the following issues:
Did the Examiner err in finding that Shigeki teaches a control portion
that controls the deformation mechanism to start driving the piezoelectric
actuator to gradually deform the operation surface in one direction and then
to deform the operation surface in a reverse direction?
Did the Examiner err in finding that Divigalpitiya teaches a period for
which the operation surface is deformed in one direction being sufficiently
larger than the period for which the operation surface is deformed in the
reverse direction?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellants, they have invented an input apparatus
having a piezoelectric actuator drive control method that includes driving the
piezoelectric actuator to gradually deform the operation surface in one
direction and then in the reverse direction, causing the user to feel a force
sense as feedback (Spec. 4-5).
Shigeki
2. Shigeki teaches that when transparent electrode 2514 and
transparent electrode 2534 are brought into contact due to the press of a
user’s finger, bobbin coil 35A (a “sense-of-force” device) operates to “put
back” a user’s finger “to a user side, and a user can perceive having been
inputted as a sense of force” (¶ 40; Fig. 4).
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3. Shigeki does not teach driving a piezoelectric actuator to
deform the operation surface in the same direction as the user’s finger
presses.
Divigalpitiya
4. Divigalpitiya discloses the composition of pressure activated
switches, including the “relaxation time” needed for the switch materials to
recover to their original state (¶ 0033).
5. Divigalpitiya discloses touch screens and membrane switches
activated by a touch such as from a finger, stylus, or “other appropriate
object” (¶ 0002).

PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.
ANALYSIS
CLAIMS 1-7 AND 9-12
The pending independent claims (1 and 12) recite driving the
piezoelectric actuator to gradually deform the operation surface in one
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direction and then to deform the operation surface in the reverse direction.
Appellants argue that the cited references do not teach or suggest this
limitation. In particular, Appellants assert that the Examiner erred in finding
that Shigeki teaches driving the piezoelectric actuator to gradually deform
the operation surface in one direction, and then in the reverse direction,
because Shigeki only teaches driving the actuator in one direction, opposite
to the force of a user’s finger press (App. Br. 5).
We find Appellant’s argument persuasive of Examiner error. The
Examiner cites paragraph [40] of Shigeki as allegedly teaching driving the
piezoelectric actuator to deform the operation surface in one direction, and
then in a reverse direction (Ans. 4, 9). Shigeki paragraph [40] merely teaches
that when transparent electrode 2514 and transparent electrode 2534 are
brought into contact due to the press of a user’s finger, bobbin coil 35A (a
“sense-of-force” device) operates to “put back” a user’s finger “to a user
side, and a user can perceive having been inputted as a sense of force” (FF
2). We find no teaching in Shigeki of driving a piezoelectric actuator to
deform the operation surface in the same direction as the user’s finger press
(FF 3). We have reviewed Yoshitaka and Divigalpitiya, and find no teaching
in those references that a control portion controls a deformation mechanism
to deform an operation surface in one direction, and then in a reverse
direction. The Examiner has thus failed to establish a prima facie case of
obviousness for claims 1-7 and 9-12.
Appellants further argue that the Examiner erred in finding that
Divigalpitiya teaches different periods for driving the surface in one
direction, then in a reverse direction (App. Br. 6). We agree with Appellants
that Divigalpitiya does not teach driving a surface in one direction, then in
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the reverse direction. Rather, Divigalpitiya discloses the composition of
pressure activated switches, including the “relaxation time” needed for the
switch materials to recover to their original state (FF 4). Divigalpitiya does
not disclose “driving” a surface by anything other than a finger, stylus, or
“other appropriate object” (FF 5).
Appellants have shown that the Examiner erred in rejecting claims 1-7
and 9-12 under § 103 over the combination of Shigeki, Yoshitaka, and
Divigalpitiya. As a result, we will not sustain the rejection.
CLAIM 8
As noted supra, we do not sustain the rejection of claim 1, from which
claim 8 depends. We have reviewed Wu, and find that it does not remedy the
deficiencies of Shigeki and Divigalpitiya. Therefore, we will not sustain the
§ 103 rejection of claim 8, for the same reasons expressed with respect to
parent claim 1, supra.

CONCLUSIONS
The Examiner erred in finding that Shigeki teaches a control portion
that controls the deformation mechanism to start driving the piezoelectric
actuator to gradually deform the operation surface in one direction and then
to deform the operation surface in a reverse direction.
The Examiner erred in finding that Divigalpitiya teaches a period for
which the operation surface is deformed in one direction being sufficiently
larger than the period for which the operation surface is deformed in the
reverse direction.

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Appeal 2009-008795
Application 10/537,417

ORDER
The Examiner’s rejection of claims 1-12 is reversed.
REVERSED

ELD

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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