Ex Parte Heubel et al

Patent Trial and Appeal Board

May 10, 2017

12061463 (P.T.A.B. May. 10, 2017)

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.
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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.
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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
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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.
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(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
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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
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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
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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
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