Ex Parte Heubel et alDownload PDFPatent Trial and Appeal BoardMay 10, 201712061463 (P.T.A.B. May. 10, 2017) 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. 12/061,463 04/02/2008 Robert W. Heubel 043508-0385904 8534 7590 05/12/2017 Kilpatrick Townsend and Stockton, LLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER LEE, BENJAMIN C ART UNIT PAPER NUMBER 2693 NOTIFICATION DATE DELIVERY MODE 05/12/2017 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): eofficeaction @ appcoll.com kts_imm_docketing @ kilpatricktownsend. com ipefiling@kilpatricktownsend.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT W. HEUBEL, RYAN STEGER, ROBERT A. LACROIX, and MUGE BAKIRCIOGLU Appeal 2016-006114 Application 12/061,4631 Technology Center 2600 Before MAHSHID D. SAADAT, JOHN D. HAMANN, and JOYCE CRAIG, Administrative Patent Judges. HAMANN, Administrative Patent Judge. DECISION ON APPEAL Appellants file this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—6, 8—16, 18—23, and 31. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. THE CLAIMED INVENTION Appellants’ claimed invention relates to electronic interface devices, including interface devices with haptic feedback. Spec. 12. Claims 1 and 1 According to Appellants, the real party in interest is IMMERSION Corporation. App. Br. 2. Appeal 2016-006114 Application 12/061,463 19 are illustrative of the subject matter of the appeal and are reproduced below. 1. A haptic device, comprising: a flexible surface layer capable of reconfiguring its surface characteristics; a haptic substrate coupled to the flexible surface layer and configured to receive a first activating signal and to form a first physical surface pattern in response to the first activating signal, wherein the haptic substrate includes multiple tactile regions, wherein each tactile region is configured to be independently activated to form a surface shape of the haptic substrate; and a deforming mechanism coupled to the flexible surface layer and configured to deform the flexible surface layer to a first surface characteristic in accordance with the first physical surface pattern after formation of the first physical surface pattern. 19. A tactile device, comprising: a transparent grille having a predefined pattern of openings therethrough, wherein the transparent grille comprises a touch-sensitive surface configured to sense an input; a haptic deformable material layer coupled to the transparent grille and configured to receive an activating signal based on a sensed input and to partially change its shape in accordance with the activating signal and the predefined pattern of openings; and a transparent substrate coupled to the haptic deformable material layer and configured to provide haptic force feedback to control the haptic deformable material layer in accordance with the transparent grille and push a portion of the haptic deformable material layer through at least one of the plurality of openings. 2 Appeal 2016-006114 Application 12/061,463 REJECTIONS ON APPEAL (1) The Examiner rejected claims 1—5, 8, 10, and 12—14 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Terlizzi et al. (US 2009/0167704 Al; published July 2, 2009) (hereinafter “Terlizzi”) and Fish (US 6,337,678 Bl; issued Jan. 8, 2002). (2) The Examiner rejected claims 11, 16, 18, and 31 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Terlizzi, Fish, and Franzen (US 7,113,177 B2; issued Sept. 26, 2006). (3) The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Terlizzi, Fish, and Noolandi (US 6,940,485 B2; issued Sept. 6, 2005). (4) The Examiner rejected claims 9 and 15 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Terlizzi, Fish, and Roberts et al. (US 7,009,595 B2; issued May 7, 2006) (hereinafter “Roberts”). (5) The Examiner rejected claims 19—21 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Roberts and Kleen (US 2005/0057528 Al; published Mar. 17, 2005). (6) The Examiner rejected claims 22 and 23 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Roberts, Kleen, and Franzen. 3 Appeal 2016-006114 Application 12/061,463 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner erred. In reaching our decision, we consider all evidence presented and all arguments made by Appellants. We below address specific findings and arguments. (1) Deform to a first surface characteristic Appellants argue the combination of Terlizzi and Fish fails to teach or suggest “a deforming mechanism . . . configured to deform a flexible surface layer to a first surface characteristic in accordance with the first physical surface pattern after formation of the first physical pattern,” as recited by claim 1. App. Br. 7. According to Appellants, Fish teaches a grid of haptic elements, where each element can (i) move downward when pressed by a user’s finger, (ii) respond with an increasing feedback force while being depressed, and (iii) reduce the feedback force, once a threshold has been reached, to allow the element to move downward to convey a clicking sensation to the user. App. Br. 7 (citing Fish col. 5,11. 1—17). Appellants argue that the portion of the element that allows for the downward movement “does not deform a flexible surface,” but rather “[i]t is the user who deforms the flexible surface.” Id. (citing Fish Fig. 6a). The Examiner finds the combination of Terlizzi and Fish teaches or suggests the disputed limitation. See Ans. 3; April 28, 2015 Advisory Action (“Adv. Act.”) 2. Specifically, the Examiner finds Fish teaches or suggests that a feedback force is increased until the position of the haptic substrate, which is coupled to the flexible surface, reaches a threshold (i.e., “first pattern formed in response to the first activating signal”) resulting in a quick downward movement of the flexible surface layer (i.e., “deforming 4 Appeal 2016-006114 Application 12/061,463 surface to first surface characteristic”) via a moving assembly (i.e., “deforming mechanism”) coupled to the flexible surface and configured to deform the flexible surface to a first surface characteristic in accordance with the first pattern after formation of the first pattern. See Ans. 3 (citing Fish Fig. 6a (606); col. 5,11. 2-17; col. 10,11. 50-53). We are persuaded by Appellants’ arguments. We find the portions of Fish cited by the Examiner teach that a user causes the flexible surface layer to deform, rather than a deforming mechanism. See, e.g., Fish col. 5,11. 2— 17; col. 10,11. 50-53. Further, it would be unreasonable in light of the Specification and claim language (e.g., the deforming mechanism is “coupled” and “configured”) to interpret a deforming mechanism to include a user’s finger or stylus. See, e.g., Spec. Tflf 14, 20, 22 (providing a vacuum generator as an example of a deforming mechanism); Fig. la (showing a user’s finger and separate deforming mechanism); see also In re Suitco Surface, Inc., 603 F.3d 1255, 1259—60 (Fed. Cir. 2010) (finding that although “the PTO must give claims their broadest reasonable construction consistent with the specification^] . . . claims should always be read in light of the specification and teachings in the underlying patent”) (citation omitted). Furthermore, the Examiner cited “moving assembly” is not configured to deform the flexible surface layer, but rather to resist the deforming of the layer by the user. See Fish col. 5,11. 2—17; col. 10,11. 50-53. Our above findings and reasoning also apply to independent claim 10 for which Appellants (App. Br. 10—11) make similar arguments. 5 Appeal 2016-006114 Application 12/061,463 (2) Transparent grille Appellants argue the combination of Kleen and Roberts fails to teach or suggest “a transparent grille having a predefined pattern of openings therethrough, wherein the transparent grille comprises a touch-sensitive surface configured to sense an input,” as recited in claim 19. App. Br. 13—14; Reply Br. 4—5. As to Kleen, Appellants argue that it teaches a solid user surface (i.e., “without openings”). App. Br. 13 (citing Kleen Fig. 1 (illustrating solid surface 8)). As to Roberts, Appellants contend it teaches “a temporary pin retention mechanism that includes a flexible sheet 56 that holds pins 21 such that a feature on each pin 21 forces part of the flexible sheet 56 to bend or stretch slightly to allow passage of the feature whenever a pin 21 is set or reset.” App. Br. 14 (citing Roberts col. 7,11. 42—51). Appellants argue Roberts does not teach or suggest “that the flexible sheet 56 is a touch-sensitive surface configured to sense an input.” Id. Furthermore, Appellants argue Roberts also teaches that the flexible sheet that includes the openings is an internal layer and a thin sheet of flexible material without openings is provided over the top of the sheet with the openings and the pins. App. Br. 14 (citing Roberts col. 7,11. 42—65, Fig. 13). The Examiner finds, and we agree, that the combined teachings of Kleen and Roberts teach or suggest the disputed limitation. See Ans. 6—7; Final Act. 12—13. The Examiner finds, and we agree, Kleen teaches or suggests a touch-sensitive user interface screen for command input that is haptically perceptible to the user in the position touched. Final Act. 12 (citing Kleen Abstract, 129). As to Roberts, we agree with the Examiner that it teaches or suggests a flexible sheet of Mylar having openings for a matrix of pins to pass through when set or reset (i.e., “a transparent grille 6 Appeal 2016-006114 Application 12/061,463 having a predefined pattern of openings”). Final Act. 13 (citing Roberts col. 7,11. 42—51). We agree with the Examiner that these combined teachings of the references teach, or at least suggest, the disputed limitation. Id. We also note the claim language does not preclude having an additional layer above the transparent grille. (3) Combining Kleen and Roberts Appellants argue that the Examiner failed to provide sufficient reasoning to combine Kleen and Roberts. App. Br. 14—15. More specifically, Appellants argue one of ordinary skill in the art would not have looked to Roberts because Kleen “already provides a refreshable tactile graphic array.” App. Br. 15 (citing Kleen | 31). The Examiner finds “it would have been obvious to a person of ordinary skill in the art to modify the system of Kleen with the configuration of Roberts in order to provide a refreshable tactile graphic array for scanned tactile displays.” Final Act. 13 (citing Roberts col. 3,11. 37^40); see also Ans. 7 (citing Roberts col. 3,11. 34-44) (“In addition to Kleen’s transparent touch sensitive tactile feedback surface, Roberts provides a modification and improvement to make touch sensitive surface more useful by making it extendable . . . .”). We find 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). We also find Appellants’ contention unpersuasive at least because one of ordinary skill in the art would have found it obvious to try known alternatives in seeking improvements. SeeKSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of 7 Appeal 2016-006114 Application 12/061,463 ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). (4) Waived arguments Appellants have not shown good cause as to why any arguments raised in the Reply Brief (see Reply Br. 4—5) that (i) “Roberts makes no mention of any “transparent” features, much less a “transparent grille” and (ii) combining Roberts and Kleen’s teachings would render Kleen unsatisfactory for its intended purpose, could not have been presented earlier. As such, these arguments have not been considered, and are waived. See Ex parte Borden, 93 USPQ2d 1473, 1473—74 (BPAI 2010) (informative) (finding absent a showing of good cause, the Board is not required to address arguments in the Reply Brief that could have been presented in the principal Appeal Brief). CONCLUSION Based on our above findings and the record before us, we do not sustain the Examiner’s rejection of independent claims 1 and 10, nor claims 2—5, 8, and 12—14, which depend therefrom. We also do not sustain the Examiner’s rejection of claims 11, 16, and 18, which depend from claim 10, and claim 31, which depends from claim 1. We also do not sustain the Examiner’s rejection of claim 6, which depends indirectly from claim 1. We also do not sustain the Examiner’s rejection of claims 9 and 15, which depend from claims 1 and 10, respectively. Based on our above findings, we sustain the Examiner’s rejection of claim 19, as well as claims 20 and 21, as Appellants do not provide separate arguments for their patentability. We 8 Appeal 2016-006114 Application 12/061,463 also sustain the Examiner’s rejection of claims 22 and 23, as Appellants do not provide separate arguments for their patentability. DECISION We reverse the Examiner’s decision rejecting claims 1—6, 8—16, 18, and 31. We affirm the Examiner’s decision rejecting claims 19—23. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 9 Copy with citationCopy as parenthetical citation