Ramsay, Erin et al.

Patent Trials and Appeals Board

Aug 26, 2020

2019001371 (P.T.A.B. Aug. 26, 2020)

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.
13/046,263 03/11/2011 Erin Ramsay IMM344 (51851/371384) 4516
34300 7590 08/26/2020
Kilpatrick Townsend and Stockton/Immersion
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
MATTHEWS, ANDRE L
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
08/26/2020 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):
eofficeaction@appcoll.com
ipefiling@kilpatricktownsend.com
kts_imm_docketing@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte ERIN RAMSAY and PEDRO GREGORIO
____________________

Appeal 2019-001371
Application 13/046,263
Technology Center 2600
____________________

Before ROBERT E. NAPPI, JOHN P. PINKERTON, and
MATTHEW J. McNEILL, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 9–18, and 22–29, which are all of the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Immersion Corporation as the real party
in interest. Appeal Br. 1.
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Application 13/046,263

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STATEMENT OF THE CASE
Introduction
Appellant generally describes the disclosed and claimed invention as
relating to “haptic feedback and more particularly to systems and methods
for pre-touch and true touch.” Spec. ¶ 2.2
Claims 1, 18, and 23 are independent. Claim 1 is illustrative of the
subject matter on appeal and is reproduced below:
1. A system comprising:
a touch-sensitive interface configured to:
detect a first user interaction within a first threshold
distance from the touch-sensitive interface;
transmit a first interface signal associated with the first
user interaction:
detect a second user interaction when greater than a
second threshold area of a user’s skin contacts the touch-
sensitive interface; and
transmit a second interface signal associated with
the second user interaction;
a processor in communication with the touch-sensitive
interface and configured to:
receive the first interface signal;
determine a haptic effect based at least in part on the first
interface signal; and
preload a haptic signal associated with the haptic effect;
a cache in communication with the processor and
configured to store the preloaded haptic signal and

2 Our Decision refers to the Final Office Action mailed Jan. 9, 2018 (“Final
Act.”); the Appeal Brief filed June 4, 2018 (“Appeal Br.”); the Reply Brief
filed Dec. 4, 2018 (“Reply Br.”); the Examiner’s Answer mailed Oct. 5,
2018 (“Ans.”); and the original Specification filed Mar. 11, 2011 (“Spec.”).

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transmit the haptic signal based in part on the second
interface signal; and
a haptic effect generator in communication with the
cache and configured to receive the haptic signal from
the cache and output a haptic effect based at least in part
on the haptic signal.
Appeal Br. 20 (Claims App.).
References
Name Patent or Publication
Number
Date
Waldman US 5,311,175 May 10, 1994
Takashima et al.
(“Takashima”)
US 9,336,969 B2 May 10, 2016
Yeh et al. (“Yeh”) US 2007/0070044 A1 Mar. 29, 2007
Shimotani et al.
(“Shimotani”)
US 2011/0164063 A1 July 7, 2011

Rejections on Appeal3
Claims 1, 2, 9–18, 22, and 23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Waldman and Takashima.
Claims 25, 27, and 29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Waldman, Takashima, and Shimotani.
Claims 24, 26, and 28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Waldman, Takashima, and Yeh.

3 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
U.S.C. § 100 et seq. effective on March 16, 2013. Because this application
was filed before March 16, 2013, the Examiner examined the claims under
the pre-AIA version of 35 U.S.C. § 103. Final Act. 2.
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ANALYSIS
The dispositive issue raised by the arguments in Appellant’s briefs is
whether the combination of Waldman and Takashima teaches or suggests
the limitation “detect a second user interaction when greater than a second
threshold area of a user’s skin contacts the touch-sensitive interface,” as
recited in claim 1, and as similarly recited in claims 18 and 23.4
The Examiner rejected independent claims 1, 18, and 23 under 35
U.S.C. § 103(a) as being unpatentable over Waldman and Takashima. Final
Act. 2–4. In the Final Action, the Examiner finds that Waldman does not
teach the disputed limitation. Id. at 3. However, the Examiner finds that
Takashima teaches this limitation because “Takashima teaches a press
detection sensor where a second threshold area of a user’s skin contacts the
touch-sensitive interface.” Id. (stating “Figs. 8A-8E teach[] how a system
recognizes a user not touching the sensor to full pressure force pas[t] the
second threshold Vth2”) (emphasis omitted). In the Answer, the Examiner
finds that the claim language reciting “detects the interaction when a ‘greater
than a second threshold of a user’s skin’ contacts the touch sensitive
surface[,] does not mean the system sensing the user’s skin but instead
detects something greater than the ‘second threshold’ which could also be
force/pressure threshold.” Ans. 2. The Examiner also finds that Takashima
“teaches how the pressure applied is compared with two threshold values
and how execution of functions take place as a result of pressure applied.”
Id. (citing Takashima, Figs. 8A–8D, and related description). The Examiner

4 Appellant argues claims 1, 18, and 23 together. Appeal Br. 15–17. Thus,
we select claim 1 as representative with claims 18 and 23 standing or falling
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
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further finds that Figures 8B–8D of Takashima show how a finger
contacting the surface changes the amount of pressure measured. Id.
Moreover, the Examiner finds that because Takashima’s Figures 8B–8D
“show pressure directly being effected by the roll of the user finger on the
surface and more surface area is covered by the finger as it rolls to apply
more pressure, then it is understood the pressure measurement is due to more
skin being applied to cover more surface area as the finger rolls.” Id. at 2–3.
We are persuaded by Appellant’s arguments that the Examiner erred.
First, Appellant argues, and we agree, that Takashima does not teach the
disputed limitation because Takashima’s discussion of Figures 8A–8E
describes detecting a “press force” when pushing down the press detection
sensor, and does not describe determining an area of user’s skin contact.
Appeal Br. 16 (citing Takashima 9:50–54 (“horizontal axis shown in FIG.
8E denotes a press force F[N] when pushing down the press detection sensor
100”), 10:1–5 (“as shown in FIG. 8B . . . press force F is approximately
F1”)).
Second, we are persuaded by Appellant’s argument that there is no
support for the Examiner’s finding that Takashima’s Figures 8B–8D
show pressure directly being effected by the roll of the user
finger on the surface and more surface area is covered by the
finger as it rolls to apply more pressure, then it is understood
the pressure measurement is due to more skin being applied to
cover more surface area as the finger rolls.
Appeal Br. 17; Reply Br. 3. In that regard, Appellant argues, and we agree,
the Examiner “includes no citation to the prior art discussing pressure
correlated to surface area.” Appeal Br. 17. We also agree with Appellant’s
argument that the Examiner could not cite Takashima in support of this
finding because Takashima discloses using pressure sensors that could not
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be used to measure area of contact of a finger. Appeal Br. (citing
Takashima, 1:41–45 (“The pressure detection system includes four pressure
detection sensors provided at the four corners on the downward side of the
display unit and a driver IC which processes the pressure detection signals
thereof.”)). Thus, because the Examiner’s finding that it is “understood” the
pressure is due to more skin covering more surface area as the finger rolls is
unsupported by evidence or technical reasoning, it is based improperly on
conjecture or speculation. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(“The Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not . . . resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.”).
Third, Appellant argues the Examiner’s interpretation of the disputed
limitation is overly broad and not consistent with the ordinary and customary
meaning in view of the Specification. Reply Br. 3. The disputed limitation
requires “a touch-sensitive user interface configured to: . . . detect a second
user interaction when greater than a second threshold area of a user’s skin
contacts the touch-sensitive interface.” The Examiner determines “this does
not mean the system sensing the user’s skin but instead detects something
greater than the ‘second threshold’ which could also be force/pressure
threshold.” Ans. 2. Appellant argues, and we agree, that the claim
language, “detect a second user interaction when greater than a second
threshold area of a user’s skin contacts the touch-sensitive interface,”
“requires detecting an ‘area of a user’s skin’ in contact with a touch-
sensitive interface” to determine whether such “area of a user’s skin” is
“greater than a second threshold” area of a user’s skin. Reply Br. 3.
Appellant also argues, and we agree, that the Examiner acknowledges this is
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consistent with the Specification, stating “Applicant’s specification
[discloses] the system recognizes pre-touch when the user has contacted the
touch-sensitive interface but less than a certain amount of skin is in contact
with the surface, based on this description it is understood the system simply
recognizes the amount of surface area covered by the finger.” Id. at 2–3.
Based on the language of the disputed limitation, and the description in the
Specification of determining the amount of surface area covered by the
finger, we agree with Appellant that the Examiner’s interpretation of the
disputed limitation is overly broad and unreasonable. The Examiner’s claim
interpretation may be the broadest possible interpretation, but it is not the
broadest reasonable interpretation consistent with the Specification. See In
re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (The “correct
inquiry” is to give a claim its broadest reasonable interpretation, not the
“broadest possible interpretation.”).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1, 18, and 23 under 35 U.S.C. § 103(a). For the same
reasons, we do not sustain the Examiner’s rejection of dependent claims 2,
9–17, 22, and 24–29. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(“[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious”).
DECISION
We reverse the Examiner’s rejection of claims 1, 2, 9–18, and 22–29
under 35 U.S.C. § 103(a).
SUMMARY
In summary:
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 9–18,
22, 23
103(a) Waldman,
Takashima
1, 2, 9–18,
22, 23
25, 27, 29 103(a) Waldman,
Takashima,
Shimotani
25, 27, 29
24, 26, 28 103(a) Waldman,
Takashima, Yeh
24, 26, 28
Overall
Outcome
1, 2, 9–18,
22–29

REVERSED