NEOCIS, INC.

Patent Trials and Appeals Board

Aug 17, 2021

2020002937 (P.T.A.B. Aug. 17, 2021)

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.
15/699,631 09/08/2017 Alon Mozes N63770 1080US.C1
(0047.0)
8447
26158 7590 08/17/2021
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
YOON, SAE WON
ART UNIT PAPER NUMBER
2612
NOTIFICATION DATE DELIVERY MODE
08/17/2021 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):
BostonDocket@wbd-us.com
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALON MOZES, DAVID COLE, and SARVAGYA VAISH

Appeal 2020-002937
Application 15/699,631
Technology Center 2600

Before JAMES W. DEJMEK, JOYCE CRAIG, and
MATTHEW J. McNEILL Administrative Patent Judges.

CRAIG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1, 3–8, 10–15, 17–22, 24–29, and 31–
35. See Final Act. 1. Claims 2, 9, 16, 23, and 30 have been canceled. Appeal
Br. 22–28 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2019). Appellant identifies the real party in interest as is Neocis, Inc.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a method for using a physical object to
manipulate a corresponding virtual object in a virtual environment, and
associated apparatus and computer program product. Spec. 1 (Title). Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A system for planning a procedure, comprising:
a display device configured to display a first virtual
element, the first virtual element comprising a virtual surgical
apparatus including a virtual dental implant or a virtual surgical
instrument configured to prepare a site on a virtual jaw structure
to receive the virtual dental implant;
a controller device having a processor and being
configured to be in communication with the display device, the
controller device being further configured to direct the display
device to display the first virtual element; and
a physical control element in communication with the
controller device, the physical control element being configured
as a corresponding physical representation of the first virtual
element and having the same freedom of movement as the first
virtual element such that an actual manipulation and movement
of the physical control element in each degree of freedom is the
same as a virtual manipulation and movement of the first virtual
element displayed, via the processor of the controller device, on
the display device.
Appeal Br. 22 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bell, III et al. (“Bell”) US 8,662,900 B2 Mar. 4, 2014
Ohta US 7,716,008 B2 May 11, 2010

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REJECTION2
Claims 1, 3–8, 10–15, 17–22, 24–29, and 31–35 stand rejected under
35 U.S.C. § 103 as unpatentable over Bell and Ohta. Final Act. 4–35.
ANALYSIS
We begin by highlighting the disputed claim limitation and the
Examiner’s rejection. Claim 1 recites
a physical control element in communication with the
controller device, the physical control element being configured
as a corresponding physical representation of the first virtual
element and having the same freedom of movement as the first
virtual element such that an actual manipulation and movement
of the physical control element in each degree of freedom is the
same as a virtual manipulation and movement of the first virtual
element displayed, via the processor of the controller device, on
the display device.
Appeal Br. 22 (Claims App.). The Examiner found Bell teaches “a physical
control element in communication with the controller device, the physical
control element being configured as a corresponding physical representation
of the first virtual element and having the same freedom of movement as the
first virtual element such that an actual manipulation and movement of the
physical control element . . . displayed, via the processor of the controller
device, on the display device.” Final Act. 6–9. The Examiner found Bell
fails expressly to teach the omitted portion of the limitation, represented by
ellipses above —“in each degree of freedom is the same as a virtual

2 The Examiner objected to claims 20, 27, and 34 because of informalities.
Final Act. 2–3. We do not consider the objections in this appeal because an
objection is a petitionable matter under 37 C.F.R. § 1.181 and is not within
the jurisdiction of the Patent Trial and Appeal Board. See 37 C.F.R. § 1.181
(2019).
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manipulation and movement of the first virtual element.” Id. at 9. The
Examiner found “[i]t is well-known in the art to allow user’s physical
controller and displayed corresponding virtual content to move in same
manner (for example, movement in degrees of freedom of up/down,
left/right, or pitch/yaw/or roll).” Id. at 10. The Examiner identified Ohta as
an example teaching of such well-known feature in the art. Id. (citing Ohta
Figs. 8, 9, col. 15:54–col. 16:38).
Appellant argues the Examiner’s rejection is in error because the
haptic device 10 of Bell is not a physical control element “configured as a
corresponding physical representation of the first virtual element and having
the same freedom of movement as the first virtual element,” and does not
provide “a virtual manipulation of the first virtual element displayed” on a
display device corresponding to the “actual manipulation of the physical
control element,” as claim 1 requires. Appeal Br. 13. Appellant argues that
each of the paragraphs of Bell relied on by the Examiner does not teach or
suggest the disputed limitation. Appeal Br. 14–18.
We are not persuaded by Appellant’s arguments because they are
conclusory, merely reciting the claim limitation, the teachings of Bell, and
stating that the two are not the same. See id. As stated by the Federal Circuit,
Rule 41.37 “require[s] more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.” In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011). Moreover, Appellant addresses each cited
paragraph of Bell separately, arguing that it alone does not teach the
disputed limitation. See Appeal Br. 14–15. The Examiner, however, often
cited more than one paragraph of Bell as teaching a recited limitation. See
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Final Act. 6–9. We are also unpersuaded by Appellant’s argument that Bell’s
haptic device 10 “does not have the ‘outward appearance and general
feel’ of any these virtual surgical tools” (Appeal. Br. 15), as the plain text
of claim 1 does not recite a requirement based on “outward appearance and
general feel.”
Rather, claim 1 requires “the physical control element being
configured as a corresponding physical representation of the first virtual
element and having the same freedom of movement as the first virtual
element.” Appeal Br. 22 (Claims App.). We agree with the Examiner that
haptic device 10 of Bell (see Bell Fig. 1) is a corresponding physical
representation of a displayed virtual tool, such as a drill. See Ans. 6–7 (citing
Bell cols. 2:57–63, 3:57–63, 8:11–15, 10:53–56). We also agree with the
Examiner that the plain language of claim 1 does not require that the claimed
physical control element and the first virtual element have exact same look
or exact same configuration. See id. at 10. Rather, claim 1 requires only that
the physical control element be a “physical representation” of the first virtual
element. See id.
The Examiner found
Bell clearly teaches haptic device including various
components such as stylus, controller, arm, joint, and
mount/base which the components together allow the haptic
device to support complete repertoire of degrees of freedom
necessary to stimulate dental surgical procedures and to fully
interact with the 3D environment.
Bell’s haptic device allows stylus to rotate about a
longitudinal axis by mounted haptic controller connected to the
stylus swiveling about the mount with 360 degree freedom.
Stated differently, the haptic device including involved
components which has been interpreted by the examiner as
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claimed “a physical control element” allows complete
repertoire of degrees of freedom.
Bell clearly further teaches that movement of virtual
surgical tool is based on motion/movement of the haptic device
such that particular virtual surgical tool such as drill handpiece
would move in same manner as an actual drill in real life. Bell
clearly teaches that movement of the haptic device is displayed
as a corresponding movement of the virtual element. Both the
haptic device and the simulated/virtual drill handpiece can
perform movement that corresponds to real life movement of
real life drill.
See Ans. 6–9 (citing and explaining how Bell Figs. 6–10, cols. 2:59–62,
3:57–63, 4:10–32, 8:11–15, 10:53–56, 11:58–60, and 12:21–23 teach or
suggest the disputed limitation). Appellant has not persuasively rebutted the
Examiner’s findings.
Rather, in the Reply Brief, Appellant for the first time proffers a
dictionary definition of “corresponding” to mean “having or participating in
the same relationship especially with regard to the same or like wholes.”
Reply Br. 2 (citing “Merriam-Webster’s dictionary”). Appellant, however,
has forfeited this argument because they presented it for the first time in the
Reply Brief, without a showing of good cause. See 37 C.F.R. § 41.41(b)(2)
(2012); accord Ex parte Borden, 93 USPQ2d 1473, 1473–74 (BPAI 2010
(informative opinion) (“[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.”).
For these reasons, we are not persuaded that the Examiner erred in
finding the combination of Bell and Ohta teaches or suggests “configured as
a corresponding physical representation of the first virtual element and
having the same freedom of movement as the first virtual element,” as
recited in claim 1.
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Appellant next argues Bell does not teach or suggest the recited
limitation “such that an actual manipulation and movement of the physical
control element in each degree of freedom is the same as a virtual
manipulation and movement of the first virtual element displayed on the
display device,” as recited in claim 1. Appeal Br. 19.
We are not persuaded by Appellant’s argument because the Examiner
relied on the combination of Bell and Ohta, not Bell alone, as teaching that
limitation. See Final Act. 9–10. The test for obviousness is not whether the
claimed invention is expressly suggested in any one or all of the references,
but whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Because
Appellant did not address what the combined teachings of Bell and Ohta
would have suggested to an artisan of ordinary skill, Appellant has not
addressed or persuasively rebutted the findings actually made by the
Examiner.
For these reasons, we are not persuaded that the Examiner erred in
finding the combination of Bell and Ohta teaches or suggests “such that an
actual manipulation and movement of the physical control element in each
degree of freedom is the same as a virtual manipulation and movement of
the first virtual element displayed on the display device,” as recited in
claim 1.
We are also not persuaded by Appellant’s hindsight argument.
Appellant argues that Bell and Ohta
either separately or in combination, do not teach, suggest,
provide motivation for, or otherwise render predictable the
methods, systems, and computer program product of
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independent Claims 1, 8, 15, 22, and 29, requiring a physical
control element interface configured as a corresponding physical
representation of the first virtual element and having the same
freedom of movement as the first virtual element, without the
application of impermissible hindsight or manipulation of the
cited references by the Examiner in view of Appellant’s
disclosure.
Appeal Br. 21. Appellant’s argument is conclusory, as Appellant has not
identified any knowledge relied upon by the Examiner that was gleaned only
from Appellant’s disclosure and that was not otherwise within the level of
ordinary skill in the art at the time of invention. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971). Nor has Appellant provided objective
evidence of secondary considerations, which “operates as a beneficial check
on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc.,
725 F.3d 1341, 1352 (Fed. Cir. 2013). The Examiner provides “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); Final Act. 11.
For these reasons, we are not persuaded that the Examiner’s rationale
to combine the teachings of Bell with those of Ohta is unsupported or
conclusory or amounts to impermissible hindsight.
In summary, Appellant’s arguments have not persuaded us of error in
the Examiner’s obviousness rejection of independent claim 1. Independent
claims 8, 15, 22, and 29 recite limitations of similar scope and are not
separately argued. See 37 C.F.R. § 41.37(c)(1)(iv); see also Appeal Br. 10–
12. Accordingly, we sustain the Examiner’s obviousness rejection of claims
1, 8, 15, 22, and 29, and claims 3–7, 10–14, 17–21, 24–28, and 31–35
depending therefrom, over Bell and Ohta.
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CONCLUSION
The Examiner’s decision rejecting claims 1, 3–8, 10–15, 17–22, 24–
29, and 31–35 is affirmed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–8, 10–15,
17–22, 24–29,
31–35
103 Bell, Ohta 1, 3–8, 10–15,
17–22, 24–29,
31–35

RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED