Ex Parte Terlizzi et al

Patent Trial and Appeal Board

Jun 12, 2017

12069352 (P.T.A.B. Jun. 12, 2017)

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.
12/069,352 02/08/2008 Jeffrey J. Terlizzi P4994US1 6405
7590 06/14/201762579
APPLE INC.
c/o Brownstein Hyatt Farber Schreck, LLP
410 Seventeenth Street
Suite 2200
Denver, CO 80202
EXAMINER
LEE, GENE W
ART UNIT PAPER NUMBER
2692
NOTIFICATION DATE DELIVERY MODE
06/14/2017 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):
patentdocket @ bhfs. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY J. TERLIZZI and JAHAN MINOO
Appeal 2017-000196
Application 12/069,352
Technology Center 2600
Before KALYAN K. DESPHANDE, JEREMY J. CURCURI, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify the real party in interest as Apple Inc. App. Br. 3.
Appeal 2017-000196
Application 12/069,352
Introduction
Appellants state the “invention relates to a multi-touch display screen
capable of providing localized tactile, or haptic, feedback to a user as the
user navigates a touch-based user interface.” Spec 12.
[I]n some instances, it may be inconvenient, or even dangerous,
for the user to look at the display. Unless touch input
components are improved, users that, for example, drive a
motor vehicle, may avoid devices that have a touch input
component and favor those that have a plurality of physical
input components (e.g., buttons, wheels, etc.).
Id. at 7.
Independent claims 1,11, and 22 are exemplary:
1. A method for enabling non-visual use of an
electronic device, comprising:
presenting a visual display, wherein the visual display
comprises:
a virtual input region;
a first external region adjacent to the virtual input
region; and;
a second external region adjacent the first external
region;
providing a first localized haptic output when the first
external region is touched, thereby indicating a first distance to
the virtual input region;
providing a second localized haptic output when the
second external region is touched, thereby indicating a second
distance to the virtual input region; and
providing a third localized haptic output when the virtual
input region is touched, thereby indicating the virtual input
region is being touched; wherein
the first, second and third haptic feedbacks are all
different from one another.
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11. A method for enabling non-visual use of an
electronic device comprising:
detecting a touch event on a touch-sensitive display at a
location;
determining whether the touch event is a first type of
touch event or a second type of touch event, the first type of
touch event and the second type of touch event each comprising
at least one gesture; and
if touch event is the first type of touch event, selectively
activating a first subset of a plurality of piezoelectric actuators;
and
if the touch event is the second type of touch event,
selectively activating a second subset of the plurality of
piezoelectric actuators;
wherein each of the plurality of piezoelectric actuators
share a common electrode.
22. A portable electronic device configured for non­
visual use, comprising:
a display screen that presents a visual display including a
user-selectable display element and an empty space region; and
an input component configured to:
provide a first localized haptic output when the
user-selectable display element is touched; and
provide a second localized haptic output when the
empty space region is touched at a user touch location
within the empty space region; wherein
the second localized haptic output varies
with a distance between the user-selectable display
element and the user touch location within.
App. Br. Claims App’x i—ii, iv.
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Application 12/069,352
Rejections and References
Claims 1, 2, and 7—10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ullrich et al. (US 2009/0002328 Al; Jan. 1, 2009). Final
Act. 2-4.
Claims 3, 4, and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ullrich and Cunningham et al. (US 2008/0012826 Al;
Jan. 17, 2008). Final Act. 4—5.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Ullrich, Cunningham, and Paley (US 5,296,871; Mar. 22, 1994). Final Act.
5- 6.
Claims 11—20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Ullrich, Hotelling et al. (US 2006/0026536 Al; May 11, 2006)
(“Hotelling ’536”), and Jeon et al. (US 5,758,296; June 2, 1998). Final Act.
6— 11. Claims 11—20 stand alternatively rejected under 35 U.S.C. § 103a) as
unpatentable in view of Ullrich, Hotelling ’536, Jeon, and Cunningham. Id.
at 12-18.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Ullrich, Hotelling ’536, Jeon, and Rosenberg et al. (US 7,602,384 B2;
Oct. 13,2009). Final Act. 11—12. Claim 21 stand alternatively rejected
under 35 U.S.C. § 103a) as unpatentable in view of Ullrich, Hotelling ’536,
Jeon, Rosenberg, and Cunningham. Id. at 18—19.
Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ullrich, Hotelling (US 2006/0197753 Al; Sept. 7, 2006)
(“Hotelling ’753”), and Paley. Final Act. 19-21.
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Application 12/069,352
Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ullrich, Hotelling ’753, Paley, and Cunningham. Final
Act. 21-22.
ANALYSIS
Appellants present substantive, separate arguments of Examiner error
for claims 1, 3, 4, 11, and 22. See App. Br. 7—19. Claims 2 and 6—10 stand
or fall with claim 1 (id. at 13, 19), claims 12—21 stand or fall with claim 112
(id. at 16—19), and claims 23—25 stand or fall with claim 22 (id. at 19).
Independent Claim 1
Appellants first contend the Examiner errs in rejecting claim 1 by
failing to consider the recited limitation of the “second external region.”
App. Br. 7. This is unpersuasive. In the Final Office Action’s discussion of
claim 1, the Examiner finds “Ullrich also teaches first and second external
regions, as the cells and subcells external to the virtual input region may
individually or collectively be considered first and second external regions.”
Final Act. 24.
Appellants also contend the Examiner errs in rejecting claim 1
because “Ullrich does not disclose or suggest ‘a virtual input region; a first
external region adjacent to the virtual input region; and a second external
region adjacent the first external region.’” App. Br. 7. The Examiner
answers that “the claim term ‘virtual input region’ may be mapped to one of
these cell regions for virtual input as taught by Ullrich” and that “[similarly,
a ‘first external region’ and a ‘second external region’ may be mapped to
2 Independent claim 13, a device claim with limitations corresponding to the
argued limitations of independent method claim 11 (see App. Br. Claims
App’x ii—iii), is the only independent claim not separately argued.
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cells that are adjacent to the cell mapped as the ‘virtual input region.’”
Ans. 5; see also id. at 5—6 (citing Ullrich || 27, 30, 66—67) and Final
Act. 24. Appellants reply that “Ullrich simply does not state that any input
regions are part of the visual display, but instead that input ‘in accordance
with the image’ can be detected,” and “the Examiner does not describe how
the ‘haptic cells’ of Ullrich are equivalent to ‘providing a visual display’
such as claimed.” Reply Br. 4.
Appellants do not persuade us the Examiner errs in mapping the
recited virtual input region and first and second external regions to Ullrich’s
disclosure. The array of cells shown Ullrich’s Figure 1 is “capable of
providing multiple tactile feedbacks in response to multiple touches
substantially simultaneous[ly]” (Ullrich 126) and plainly teaches a visual
display that accepts touch inputs and generates corresponding haptic outputs.
Ullrich also teaches that touch inputs are detected “in accordance with” a
displayed image (Ullrich 163), which an ordinarily skilled artisan would
have understood to teach or suggest the recited “virtual input region.” Such
an artisan also would have understood there are cells adjacent to, but not part
of the virtual input region; we agree with the Examiner’s mapping of these
to the recited “external regions.” See Ans. 4—6; see also Final Act. 2—3, 24.
Appellants further contend the Examiner errs in finding Ullrich
teaches or suggests “providing a first localized haptic output when the first
external region is touched, thereby indicating a first distance to the virtual
input region', [and] providing a second localized haptic output when the
second external region is touched, thereby indicating a second distance to
the virtual input region.' (emphasis added).” App. Br. 10. Appellants argue
the cited portions of Ullrich do not mention, teach, or suggest any distance to
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a virtual input region. Id. at 12; see also Reply Br. 4—6 (contending the
Examiner engages in unsupported rationalization and intentionally
misinterprets claim 1 by “falsely equating] a signal that indicates a distance
with two signals that indicate separate locations”).
Appellants do not persuade us. Claim 1 requires providing first and
second localized haptic outputs when first and second external regions are
touched, thereby indicating first and second distances to the virtual input
region. Using a broad but reasonable interpretation, in view of Appellants’
Specification, the verb “indicate” in the claim requirement “indicating a
distance” encompasses its ordinary dictionary meanings of “to point out or
point to” or “to be a sign, symptom, or index of.”3
An ordinarily skilled artisan would have understood Ullrich’s
disclosure of concurrently processing multiple user touch inputs “detected in
accordance with [a displayed] image” (Ullrich 162) to teach providing
multiple haptic outputs. Each cell has a specific location, and Ullrich
teaches using these locations for processing touch inputs. See, e.g., Ullrich
1 66 (“At block 1010, the process generates a first input in accordance with a
location of the first deformation and a second input in accordance with a
location of the second deformation.”). Thus, Ullrich teaches that cells
mapped to the external regions have locations relative to the location of the
virtual input region. Thus, the ordinarily skilled artisan would have
understood Ullrich to teach generating localized haptic outputs from touches
to these external regions which, from their relative locations, thereby
indicate (“point to” or “are a sign of’) the distances from the external
3 See w ww
2017)'.'
■webster. cc 5. v 110 5 5 cS- 5 Xy' / 5.5 5 Gi 1A <3 5- v (last accessed May 31,
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Application 12/069,352
regions to the virtual input region. In other words, we agree with the
Examiner that relative location “effectively indicates the distance” (Ans. 10
(quoting Final Act. 23—24)).
Appellants also contend “that general disclosure of capability of
physical cells of Ullrich cannot be read as disclosure of a specific output
related to a specific virtual input region that communicates a specific
message to a user.” App. Br. 12. We are not persuaded by this argument.
This contention is not commensurate with the scope of the claim, which
generally recites, inter alia, “a virtual input region,” and does not recite
specific requirements regarding messages to a user.
Appellants further contend that combining features from two different
embodiments of Ullrich to render obvious claim requirements not disclosed
by either embodiment “constitutes an impermissible exercise of employing
the claim as a template.” Id. at 13. This also does not persuade us.
First, it is well established that “[a]ny judgment on obviousness is in a
sense necessarily a reconstruction based upon hindsight reasoning, but so
long as it takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and does not
include knowledge gleaned only from applicant’s disclosure, such a
reconstruction is proper.” In re McLaughlin, 433 F.2d 1392, 1395 (CCPA
1971). Here, Appellants have not provided any persuasive evidence that the
Examiner’s analysis included knowledge gleaned only from the
specification. Rather, Appellants expressly acknowledge that the Examiner
has relied on the disclosure of Ullrich. See App. Br. 13.
Certainly the Supreme Court has warned that “[a] factfinder should be
aware, of course, of the distortion caused by hindsight bias and must be
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cautious of arguments reliant upon ex post reasoning,” KSR Int’l v. Teleflex,
Inc., 550 U.S. 398, 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36
(1966)). We note Appellants have not provided any objective evidence of
secondary considerations which our reviewing court guides “operates as a
beneficial check on hindsight.” Cheese Systems, Inc. v. Tetra Pak Cheese
and Powder Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). On this
record, and by the preponderance of evidence, we find the Examiner sets
forth sufficient “articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) {cited with approval in KSR, 550 U.S. at 419).
Accordingly, we sustain the rejection of claims 1 and 6—10. In doing
so, we adopt the findings and reasons of the Examiner in the rejection of
claim 1. See Final Act. 2—3, 23—24; Ans. 3—11.
Dependent Claims 3 and 4
Claim 3 depends from claim 1 and adds the requirements of “tracking
a user’s finger on the visual display; and providing at least one of the first
and second localized haptic output in response to the tracking.” App. Br.
Claims App’x i. Claim 4 depends from claim 3 and recites “wherein at least
one of the first and second localized haptic outputs is dynamic and changes
as the user's finger moves across the visual display.” Id. The Examiner
finds Cunningham paragraph 36 teaches these added requirements. Final
Act. 4—5. Appellants argue the Examiner errs in these findings because:
Cunningham merely describes correlating motion of a handheld
device to a cursor input for a computer displaying a medical
simulation. Haptic feedback, in this case, is based on a cursor
location on a visual display; haptic feedback is not at all
provided based on a location of a user’s finger on a visual
display.
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App. Br. 15.
Appellants specifically contend Cunningham does not teach claim 3’s
requirements because it “does not describe provided haptic feedback when a
portion of a virtual display is touched (e.g., ‘first localized haptic output’ or
‘second localized haptic output’) and as such cannot be read to disclose
providing any haptic output in response to tracking a finger across a
display.'''’ Id. at 16. Appellants similarly contend Cunningham fails to teach
claim 4’s requirements. Id. (“Cunningham does not describe provided
haptic feedback when a portion of a virtual display is touched . . . .”).
Appellants do not persuade us. As the Examiner answers, and we
agree, “physical contact of the finger with a visual display is already taught
by Ullrich. The key feature that Cunningham teaches is the tracking of user
input and providing haptic response due to the tracking. . . .” Ans. 12. That
Cunningham does not teach a touchscreen for input is of little import, as
“[t]he test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d413, 425 (CCPA 1981).
Thus, we sustain the rejection of claims 3 and 4. In doing so, we
adopt the Examiner’s findings and reasons. See Final Act. 4—5; Ans. 11—13.
Independent Claim 11
Appellants argue, inter alia,4 the Examiner errs in rejecting claim 11
by finding Ullrich’s teaching of determining a location of a touch event
4 Because we do not sustain the Examiner’s rejection of claim 11 based on a
dispositive issue, we do not address all of Appellants’ arguments.
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teaches or suggests determining a type of touch event as recited in
“determining whether the touch event is a first type of touch event or a
second type of touch event.”5 See App. Br. 16—18; Reply Br. 7. We agree.
The Examiner reasons “[tjhere is no inherent reason why location
cannot be a characteristic that distinguishes two types.” Ans. 14. By itself,
that is a true statement. But claim 11, by requiring two different event types
at one location, specifically distinguishes between an event type and an
event location. Specifically, before determining whether the touch event is
one of two types, claim 11 first requires “detecting a touch event on a touch-
sensitive display at a location.” Because the touch event at a (single)
location provides the antecedent basis for the determining step’s touch event,
the determining step must discriminate between two types of touch events at
that (same) location. This is consistent with embodiments taught by
Appellants’ Specification, which distinguish between event types and event
locations. See, e.g., Spec. 174 (identifying a touch signal includes data to
identify “the type of user input” and “the location or locations of user input,
etc.”).
Thus, the recited touch event cannot be, as the Examiner finds, the
occurrence of a touch at a location. Such a finding is inconsistent with the
determining step’s discrimination between different event types that occur at
a single location.
Accordingly, we do not sustain the rejection of claims 11—21.
5 The dispositive issue applies equally to the rejection over the combination
of Ullrich, Hotelling ’536, and Jeon et al., and to the rejection over the
combination of Ullrich, Hotelling ’536, Jeon, and Cunningham.
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Independent Claim 22
Appellants argue the Examiner errs in rejecting claim 22 for the same
reasons as for claim 1 with respect to the Examiner’s findings for the
teachings of Ullrich. App. Br. 18. We find this unpersuasive for the reasons
discussed above for claim 1. Appellants also argue Paley and Hoteling ’753,
which the Examiner also relies upon in rejecting claim 22, “do not cure the
defects of Ullrich.” Id. at 19. Because we disagree regarding the “defects”
of Ullrich, we also find these arguments unpersuasive of Examiner error.
Accordingly, we sustain the rejection of claims 22—25. In doing so,
we adopt the findings and reasons of the Examiner in the rejection of claim
22. See Final Act. 19—21; Ans. 15—16.
DECISION
For the above reasons, we affirm the rejection of claims 1—10 and 22—
25, and we reverse the rejection of claims 11—21. No time period for taking
any subsequent action in connection with this appeal may be extended under
37C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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