Ex Parte Heubel et al

Patent Trial and Appeal Board

Apr 27, 2016

12046934 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/046,934 03/12/2008
34300 7590 04/27/2016
Kilpatrick Townsend and Stockton, LLP
1001 W Fourth Street
Winston-Salem, NC 27101
FIRST NAMED INVENTOR
Robert W. Heubel
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.
043508-0405550 2009
EXAMINER
OKEBATO, SAHLU
ART UNIT PAPER NUMBER
2625
MAILDATE DELIVERY MODE
04/27/2016 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 ROBERT W. HEUBEL, JASON D. FLEMING,
ERIN B. RAMSAY, A. TIMOTHY VETTER,
ROBERT A. LACROIX, PEDRO GREGORIO,
DANNY A. GRANT, and LAURI OLLI MATIAS IMPIVAARA
Appeal2014-006583
Application 12/046,934
Technology Center 2600
Before ALLEN R. MacDONALD, JEFFREYS. SMITH, and
AARON W. MOORE, Administrative Patent Judges.
DECISION ON APPEAL
Appeal2014-006583
Application 12/046,934
Judge MOORE, with whom Judge MacDONALD joins.
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 6, 20, 22-25, and 40---43, which constitute all of the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
THE INVENTION
The application is directed to a "device [with] a user interface that
generates a haptic effect in response to user inputs or gestures." (Abstract.)
Claims 6 and 20, reproduced below, are illustrative:
6. A method of operating a user interface comprising:
receiving an indication that an object has been flicked by a
user gesture and that the object has reached an end point that
causes the object to bounce;
generating a haptic effect when the object has reached the end
point, wherein the haptic effect decreases in magnitude as the
bounced object comes to rest; and
generating a second haptic effect to confirm that the bounced
object has come to rest.
20. A method of operating a device having a touchscreen
compnsmg:
storing a gesture on the device, wherein the gesture comprises
a user interaction associated with a directional motion on the
touchscreen; and
generating a dynamic haptic effect that simulates the gesture,
wherein the dynamic haptic effect is applied to different
1 Appellants identify Immersion Corporation as the real party in interest.
(See App. Br. 2.)
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individual portions of the touchscreen in series to simulate the
directional motion.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Martin et al.
Hotelling et al.
Ording et al.
Chaudhri et al.
US 2003/0122779 Al July 3, 2003
US 2006/0026535 Al Feb. 2, 2006
US 2007/0150830 Al June 28, 2007
US 2007/0150842 Al June 28, 2007
THE REJECTIONS2
1. Claim 43 stands rejected under 35 U.S.C. § 112, i-f 1, as failing
to comply with the written description requirement. (See Final Act. 2.)
2. Claims 20, 22-24, 40, 42, and 43 stand rejected under
35 U.S.C. § 102(e) as anticipated by Chaudhri. (See Final Act. 4--7.)
3. Claims 6 and 25 stand rejected under 35 U.S.C. § 103(a) as
obvious in view of Ording and Martin. (See Final Act. 8-9.)
4. Claim 41 stands rejected under 35 U.S.C. § 103(a) as obvious
in view of Chaudhri and Hotelling. (See Final Act. 11.)
ANALYSIS
Claim 43
The Examiner concluded that claim 43 fails to comply with the
written description requirement because the limitation "comparing the input
2 Claims 1-5, 7-19, 21, and 26-39 were canceled after final. (See July 31,
2013 Amendment After Final.)
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on the touchscreen to the stored gesture ... is nowhere to be found in the
specification." (Final Act. 2.) Appellants point to paragraphs 37-38 of the
Specification, which describe how "[d]evice 10 can be unlocked when a
predetermined gesture is input by the user" as "[ fJor example, the gesture
can function as a password or pass code to unlock the menu system of
device 10." (Spec. i-f 37.)
We agree with Appellants that the cited paragraphs describe the
claimed invention in sufficient detail for one skilled in the art to reasonably
conclude that the inventor had possession of the claimed invention. See
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
("[T]he test for sufficiency is whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date."). An artisan
would understand that using a "predetermined gesture" as a password or
pass code would entail comparing the user input gesture to a stored
("predetermined") gesture. We therefore decline to sustain this rejection.
Claims 20, 22-24, 40--42, and 43
Claim 20, which requires "storing a gesture on the device" and
"generating a dynamic haptic effect that simulates the gesture" where "the
dynamic haptic effect is applied to different individual portions of the
touchscreen in series to simulate the directional motion," stands rejected as
anticipated by Chaudhri. In the Final Action, the Examiner cited only
paragraphs 7 and 34 of Chaudhri regarding the claimed haptic effect. As
Appellants point out, however, those paragraphs describe the use of haptic
inputs, not haptic outputs, and therefore cannot support an anticipation
rejection. (See, e.g., Chaudhri i-f 34 ("The touch screen 126 also accepts
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input from the user based on haptic and/ or tactile contact. The touch screen
126 forms a touch-sensitive surface that accepts user input.").) At page 4 of
the Answer, the Examiner additionally cites paragraphs 63, 82, and 83 of
Chaudhri. Paragraph 83, which is representative of the pertinent disclosures
of the three, reads as follows:
In some embodiments, in addition to visual feedback, the device
supplies non-visual feedback to indicate progress towards satis-
faction of the user input condition. The additional feedback may
include audible feedback (e.g., sound(s)) or physical feedback
(e.g., vibration(s)).
(Chaudhri i-f 83.) While this passage does describe the use of haptic
feedback, it simply indicates that such feedback may be used to indicate
"progress towards satisfaction of the user input condition." This is
insufficient to anticipate because it does not describe generating a dynamic
haptic effect that "simulates a gesture" or that the haptic effect is "applied to
different individual portions of the touchscreen in series to simulate the
directional motion," as claimed. See Eli Lilly & Co. v. Zenith Goldfine
Pharm., Inc., 471 F.3d 1369, 1375 (Fed. Cir. 2006) (explaining that a
reference is anticipatory only if it "disclose[ s] each and every feature of the
claimed invention, either explicitly or inherently").
We accordingly decline to sustain the rejection of claim 20 under
35 U.S.C. § 102, and, for the same reasons, we decline to sustain the§ 102
rejections of claims 22-24, 40, 42, and 43, or the§ 103 rejection of claim
41. We do not reach Appellants' other arguments for claims 22 and 42.
Claims 6 and 25
Claim 6 requires "generating a haptic effect when [a UI object flicked
by a gesture] has reached [an] end point that causes the object to bounce,"
where "the haptic effect decreases in magnitude as the bounced object comes
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to rest" and "generating a second haptic effect to confirm that the bounced
object has come to rest."
The Examiner provides the following analysis for this claim:
Ording disclose[ s that] a displayed portion of the list of items
may appear to bounce off of a boundary of the window in the
touch-sensitive display when a beginning or an end of the list of
items is reached. Since the bouncing motion corresponds to a
damped motion, the motion gradually decreases and eventually
ends. This bouncing function is obviously observed visually as
[its] up and down movement comes to end. The only function
missed from the claimed limitation is adding a haptic feedback.
To cure this deficiency, Martin discloses generating user
controllable haptic events based on the amount of pressure
applied.
Therefore, it would have been obvious to one of ordinary skill
in the art to use Martin's multi-level ofhaptic events in each step
of Ording's damping motion including confirming end of
bouncing.
(Ans. 3; see Final Act. 8-9.) We agree that Ording teaches the bouncing UI
effect and that, in light of iviartin's teachings, it would have been obvious to
provide haptic feedback reflecting the bouncing effect. The Examiner,
however, does not point us to a teaching or suggestion of using a second
effect to confirm that the bounced object has come to rest, or otherwise
explain why it would have been obvious to add this additional feature. (See
Final Act. 8 (finding that Ording, the reference purported to show the
effects, does not disclose ... generating a second haptic feedback to confirm
that the bounced object has come to rest").)
A rejection on obviousness grounds cannot be sustained by mere
conclusory statements but instead requires some articulated reasoning with
some rational underpinning. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
398, 417-18 (2007); see also CFMT, Inc. v. Yieldup Int 'l Corp., 349 F .3d
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1333, 1342 (Fed. Cir. 2003) ("[O]bviousness requires a suggestion of all
limitations in a claim." (citing In re Royka, 490 F .2d 981, 985 (CCP A
1974)). On this record, we are unable to sustain the obviousness rejections
of claim 6 and its dependent claim 25.
DECISION
The rejections of claims 6, 20, 22-25, and 40-43 are reversed.
REVERSED
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SMITH, dissenting in part.
In my view, Appellants do not present persuasive arguments to show
error in the Examiner's rejection of claim 6. Appellants contend Ording
does not teach generating a haptic effect in relation to a bounced object.
(App. Br. 15.) However, the Examiner relies on Martin to teach the haptic
effect. (Ans. 3.) Appellants also contend Martin teaches haptic events, but
does not teach a haptic effect to confirm a bounced object has come to rest.
However, the Examiner relies on Ording to teach confirming a bounced
object has come to rest by visual observation. (Ans. 3.) "Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references." In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642
F.2d 413, 425 (CCPA 1981)). Here, Appellants' contentions against the
references individually do not show error in the combined teachings of
Ording and Martin.
Further, Appellants have not provided persuasive evidence or
argument to rebut the Examiner's findings. In particular, Appellants have
not addressed the Examiner's finding that Ording teaches visually observing
when a bouncing object comes to rest. Nor have Appellants addressed the
Examiner's finding that adding haptic feedback to the visual observation of
coming to rest was within the level of ordinary skill as taught by Martin. I
adopt the Examiner's unrebutted findings as my own.
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Here, adding
tactile feedback to an event as taught by Martin, such as when a bouncing
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object comes to rest as taught by Ording, does no more than yield the
predictable result of "generating a second haptic effect to confirm that the
bounced object has come to rest" within the meaning of claim 6.
I would affirm the rejection of claim 6.
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