Ex Parte Goldenberg et al

Patent Trial and Appeal BoardMay 12, 2016

12264166 (P.T.A.B. May. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/264,166 11103/2008 34300 7590 05/13/2016 Kilpatrick Townsend and Stockton, LLP 1001 W Fourth Street Winston-Salem, NC 27101 FIRST NAMED INVENTOR Alex S. Goldenberg 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 ATTORNEY DOCKET NO. CONFIRMATION NO. IMM091Dl (51851-374420) EXAMINER 9636 MOON, SEOKYUN ART UNIT PAPER NUMBER 2694 MAILDATE DELIVERY MODE 05/13/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEX S. GOLDENBERG and RAMON ALARCON1 Appeal2014-006951 Application 12/264,166 Technology Center 2600 Before BRUCE R. WINSOR, DANIEL N. FISHMAN, and MICHAEL M. BARRY, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-37, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm-in-part. 1 Appellants identify Immersion Corporation as the real party in interest. App. Br. 1. Appeal2014-006951 Application 12/264, 166 Introduction Appellants state "[t]he present invention is directed to mapping kinesthetic force sensations to vibrotactile sensations output by a vibrotactile feedback device" and "[ s ]ophisticated vibrations can be output from a haptic feedback device that includes driver electronics driving a rotating mass in one direction." Spec. i-f 3 ("Summary"). Claims 1 and 18 are illustrative (each shown with a disputed claim requirement highlighted): 1. An apparatus, comprising: a housing manipulatable by a user; an actuator coupled to the housing and including an eccentric mass coupled to a rotatable shaft of the actuator defining an axis of rotation; a circuit coupled to the actuator, the circuit configured to produce a control signal such that, when the control signal is received by the actuator, the actuator produces a force effect having a magnitude and a frequency by rotating the mass about the axis of rotation in a first direction, the magnitude of the vibration being based on a duty cycle of the control signal and being independent of the frequency; and an obstacle member configured to be contacted with the mass when the mass is rotated, wherein the obstacle member is a spring member including a compliance portion configured to increase energy in the movement of the mass in a second direction opposite to the first direction when the mass comes into contact with the obstacle member. 18. A device, comprising: a housing; an actuator coupled to the housing, the actuator having a rotary shaft coupled to an eccentric mass, the eccentric mass configured to rotate around an axis of rotation of the rotary shaft in a first direction; and a stop member coupled to the housing, the stop member being positioned at least partially in a path of rotation of the 2 Appeal2014-006951 Application 12/264, 166 eccentric mass, the stop member configured to produce a tactile sensation when the eccentric mass comes in contact with the stop member, wherein the stop member comprises a spring member including a compliance portion configured to increase energy in the movement of the eccentric mass in a second direction opposite the first direction when the eccentric mass comes into contact with the stop member. App. Br. 30, 34 (Claims App'x). Rejections Claims 23, 28-35, and 37 stand rejected under 35 U.S.C. Â§ 112, i-f 1. Final Act. 5---6; Adv. Act. 2-3. Claims 1--4, 6, 8-12, 14, 16, and 17 stand rejected under 35 U.S.C. Â§ 103(a) over Ogata et al. (US 6,001,014; Dec. 14, 1999) ("Ogata"). Final Act. 6-12. Claims 5 and 13 stand rejected under 35 U.S.C. Â§ 103(a) over Ogata and Goto et al. (US 6,231,444 Bl; May 15, 2001) ("Goto"). Final Act. 12- 13. Claims 7 and 15 stand rejected under 35 U.S.C. Â§ 103(a) over Ogata and Rosenberg et al. (US 5,739,811; Apr. 14, 1998) ("Rosenberg"). Final Act. 13. Claims 18, 23-26, 28, 33, 34, 36, and 37 stand rejected under 35 U.S.C. Â§ 103(a) over You et al. (US 5,668,423; Sept. 16, 1997) ("You") and Furuki (US 6,268,671 Bl; July 31, 2001). Final Act. 14--19. Claims 19-22, 27, 29-32, and 35 stand rejected under 35 U.S.C. Â§ 103(a) over You, Furuki, and Ogata. Final Act. 19-24. 3 Appeal2014-006951 Application 12/264, 166 35U.S.C.Â§112, fl Rejections ANALYSIS The Examiner rejects claims 23, 28-35, and 37 because they "contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor ... had possession of the claimed invention." Final Act. 5.2 Claim 23 recites a "first stop member and a second stop member ... configured to define a range of rotation .... " The Examiner finds the first and second stop members disclosed in the Specification do not define a range of rotation because there is no disclosure of the second stop member being in the path of rotation and that, even if it were, such an arrangement does not inherently define a range of rotation. Ans. 21-22 (citing Spec. i-f 39). Appellants contend there is no disclosure of a stop member being not in the path of rotation, and that two stops in a path of rotation necessarily define a range of rotation. Reply Br. 2. We agree with Appellants. One of ordinary skill, reading Appellants' Specification, would understand that the disclosed and claimed stop members stop rotation with some structure in the path of rotation, and that two stop members necessarily define a range of rotation. The Examiner also finds claim 28, which recites "a first stop member ... at a first position in a path of rotation ... and a second stop member ... at a second position in the path of rotation," lacks written description support 2 The Examiner also issued aÂ§ 112, i-f 1 rejection of claim 25 (Final Act. 5), but then withdrew that rejection in the pre-appeal Advisory Action (Oct. 10, 2013, p. 3). The Examiner's Answer addresses the merits of that rejection as if it were pending (p. 23). We find this to be an oversight by the Examiner and conclude that the Â§ 112, i-f 1 rejection of claim 25 remains withdrawn. 4 Appeal2014-006951 Application 12/264, 166 for the same reason as claim 23. Ans. 23-24. Appellants similarly reference their argument for claim 23, noting "two stop members would not be located in exactly the same location. Otherwise there would be no reason for including two stop members." Reply Br. 3. We agree; the Specification demonstrates Appellants were "in possession of' the subject matter of claim 23. The Examiner rejects claims 29-35 based on their dependency from claim 28 and rejects claim 37 for the same reasons as for claim 23. Final Act. 6. We do not sustain those rejections for the reasons just discussed. 35 U.S.C. Â§ 103 Rejections Claim 1 Claim 1 recites, inter alia, "rotating the mass about the axis of rotation in a first direction." The disputed requirement requires the obstacle member "to increase energy in the movement of the mass in a second direction opposite to the first direction." The Examiner relies on Ogata's resilient member 42 of Figure 15 to show the disputed requirement. Final Act. 7-8. Appellants argue the Examiner errs because Ogata's resilient member is not configured to stop rotation of the rotating mass and, therefore, it cannot increase energy in the movement in the second direction as claimed. App. Br. 22-23. We agree. Ogata's teaching of transferring energy from a rotating mass without changing its direction of movement, notwithstanding Newton's Third Law,3 does not teach or suggest claim 1 's requirement to increase energy in the movement of the mass in an opposite direction. 3 See, e.g., en.wikipedia.org/wiki/Newton%27s_laws_of_motion ("[t]o every action there is always opposed an equal reaction"). 5 Appeal2014-006951 Application 12/264, 166 We accordingly do not sustain the Examiner's rejection of claim 1. For the same reasons we do not sustain the rejection of independent claims 9 and 17, which also include requirements similar to the disputed limitation and which the Examiner also rejects over Ogata. Nor do we sustain the rejection of claims 2-8 and 10-16, which depend, directly or indirectly, from either claim 1 or 9. Claim 18 Appellants argue the Examiner errs because Furuki, which the Examiner cites for the disputed limitation of claim 18, discloses a linear vibrator and teaches away from using the recited rotary actuator. App. Br. 26. A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed.Cir.1994). "[W]hen the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Although Furuki criticizes a prior art rotary actuator design, it does not criticize the claimed invention. Furuki' s Figure 10 shows the criticized prior art rotary actuator design, which does not include a stop. Stops are a key element of Appellants' claims. Appellants do not persuade us that 6 Appeal2014-006951 Application 12/264, 166 Furuki discourages or otherwise teaches one of ordinary skill away from combining its teaching of a spring-based stop with You's teaching of a rotary actuator with stops. The relevant inquiry is whether the claimed subject matter would have been obvious to one of ordinary skill in the art in light of the combined teachings of the references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner finds that "by applying the concept of Furuki to the device of You, You as modified by Furuki would teach two spring members formed on '19 A' and '19B', which provide a returning force to the moving portion, '16A', in a direction opposite to the direction of the movement of the element '16A'." Ans. 30. Appellants provide no persuasive argument or evidence that the Examiner's combination of teachings from You and Furuki was "uniquely challenging or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419); see also KSR, 550 at 421 ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."). Appellants further contend there would be no motivation to combine Furuki with You because "modifying the linear vibrator taught by Furuki to the rotary actuator taught by You would render Furuki unsatisfactory for its intended purpose, because, as explained by Furuki, such a design cannot control frequency and amplitude independently. See Furuki, col. 1 :23-28." App. Br. 27. The Examiner answers, and we agree, "the basis of the combination of You and Furuki is not modifying the device of Furuki to include a rotary actuator, but is modifying the device of You to have a spring member to provide an additional returning force to the rotary actuator of Furuki." Ans. 29. 7 Appeal2014-006951 Application 12/264, 166 We accordingly sustain the Examiner's rejection of claim 18. We also sustain the rejection of claims 23-26, 28, 33, 34, 36, and 37, which Appellants argue on the basis of claim 18. See App. Br. 26-27. Remaining Claims Appellants argue the Examiner errs in rejecting claims 19-22, 27, 29- 32, and 35 over the combination of You, Furuki, and Ogata for the same reasons argued for claim 18, additionally contending that Ogata's lack of disclosure of "a compliance portion" does not cure the deficiency of the combination of You and Furuki. App. Br. 28. None of these claims recite a "compliance portion" (any requirement for a "compliance portion" is by reference to a parent claim, discussed supra). Appellants do not persuade us of Examiner error, and we accordingly sustain the rejection of claims 19-22, 27, 29-32, and 35. uECISION For the reasons above, we reverse the Examiner's rejection of claims 1-17 and affirm the rejection of claims 18-37. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 8