NEOCIS, INC.Download PDFPatent Trials and Appeals BoardAug 17, 20212020002937 (P.T.A.B. Aug. 17, 2021) 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. 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. Appeal 2020-002937 Application 15/699,631 2 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 Appeal 2020-002937 Application 15/699,631 3 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). Appeal 2020-002937 Application 15/699,631 4 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 Appeal 2020-002937 Application 15/699,631 5 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 Appeal 2020-002937 Application 15/699,631 6 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. Appeal 2020-002937 Application 15/699,631 7 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 Appeal 2020-002937 Application 15/699,631 8 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. Appeal 2020-002937 Application 15/699,631 9 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 Copy with citationCopy as parenthetical citation