Ex Parte Kinoshita

Patent Trials and Appeals Board

Mar 26, 2019

13575592 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/575,592 07/26/2012
78198 7590
Studebaker & Brackett PC
8255 Greensboro Drive
Suite 300
Tysons, VA 22102
03/28/2019
FIRST NAMED INVENTOR
Kenta Kinoshita
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.
005000-K00042 4119
EXAMINER
REED, STEPHEN T
ART UNIT PAPER NUMBER
2627
NOTIFICATION DATE DELIVERY MODE
03/28/2019 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):
info@sbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENT A KINOSHITA
Appeal2018-005563
Application 13/575,592
Technology Center 2600
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
ERIC S. FRAHM, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-005563
Application 13/575,592
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § I34(a) from a rejection of
claims 3---6. Claims 1 and 2 are canceled. We have jurisdiction under 35
U.S.C. § 6(b ).
We affirm.
The claims are directed to a tactile sensation providing apparatus and
method for providing tactile sensation. Claim 3, reproduced below, is
representative of the claimed subject matter:
3. A tactile sensation providing apparatus, comprising:
application software supporting provision of no tactile
sensation and configured, when activated, to supply
identification information of a user interface definition file
defining each tactile sensation to at least one user interface object
included in a user interface corresponding to the application
software; and
a control unit configured to retrieve the user interface
definition file from a memory unit based on the identification
information supplied from the application software and to set the
tactile sensation for the user interface according to the user
interface definition file, wherein
a tactile sensation defined to an input event to a first user
interface object of the at least one user interface object is
different from a tactile sensation defined to the same input event
to a second user interface object of the at least one user interface
object.
1 Appellant indicates KYOCERA Corporation is the real party in interest.
(App. Br. 2).
2
Appeal2018-005563
Application 13/575,592
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chin
Frid et al.
US 7,593,000 Bl
US 8,378,979 B2
Sept. 22, 2009
Feb. 19,2013
REJECTIONS
The Examiner made the following rejections:
Claims 3 and 5 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Frid.
Claims 4 and 6 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Frid in view of Chin.
ANALYSIS
Appellant does not set forth separate arguments for patentability of
independent claims 3---6. (App. Br. 4). Therefore, we select independent
claim 3 as the representative claim for the group and will address
Appellant's arguments thereto. 37 C.F.R. § 4I.37(c)(l)(iv). Arguments
which Appellant could have made but did not make in the Briefs are
waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellant argues that the Frid reference does not disclose or suggest
the claimed "a tactile sensation defined to an input event to a first user
interface object of the at least one user interface object is different from a
tactile sensation defined to the same input event to a second user interface
object of the at least one user interface object."2 (App. Br. 4--5) (emphasis
2 We note that the Examiner and Appellant cite to paragraphs [0098]-
[0100] of Appellant's PG-Publication rather than the Specification as
3
Appeal2018-005563
Application 13/575,592
omitted). Appellant refers to Figure 3 and corresponding portions of the
Specification and contends that the present application uses a hierarchical
approach to storing haptic data and identifies the manner in which the
invention defines the haptic responses for individual objects. (App. Br. 5).
Appellant argues that "Frid devices cannot provide different tactile
sensations for the same input event." (App. Br. 5). Consequently, Appellant
contends:
Frid discloses one-to-one relationships between input events and
haptic signatures. That is, Frid employs a flat, relational database
where each event/input has a single, distinct haptic signature
without regard to a particular object/icon/control.
Accordingly, while Frid may define different tactile sensations
to different input events, Frid cannot define different tactile
sensations to different objects for the same input event.
(App. Br. 6). Appellant provides an example where the Frid reference
would provide the same haptic output for the same event for any objects
when highlighting objects. (App. Br. 6-7). Finally, Appellant "respectfully
asserts that, if the limitation at issue was 'common and notoriously well-
known,' the Examiner would have found a reference disclosing such a
limitation. The Examiner failed to do so. The Examiner's assertion is
simply an erroneous conclusory statement of what the Examiner believes is
common knowledge." (App. Br. 7).
In response to Appellant's argument that the Frid reference only
discloses a one-to-one relationship, the Examiner reiterates the previously
originally filed. (Final Act. 8). Additionally, we refer to the arguments in
the Appeal Brief filed November 6, 2017, but the corrected appealed claims
are found in the appendix to the Corrected Appeal Brief filed December 13,
2017.
4
Appeal2018-005563
Application 13/575,592
finding (Ans. 4) that the Frid reference discloses having a corresponding
haptic signature for differing objects and that:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made that selecting an object, opening
a menu, turning the page of an electronic item or activating a link,
may all encompass the same input type, i.e., a touch or tap
gesture, as this is a common and notoriously well-known
technique of providing the same input to select different objects
on a touch screen in order to yield the predictable result of
providing a different haptic signature based on the different
objects selected, which allows the user to more easily distinguish
the selected object without having to view the touch screen.
Thus, Frid inherently teaches the use of selecting various objects
within the singular user interface using the same input type but
providing different haptic signatures based on the object selected
by the user, as shown at least in Fig. 4 and described in Col. 7,
line 3 to Col. 8, line 10.
(Final Act. 3--4). We further note that the Examiner provided evidence
supporting the Examiner's finding and further made of record in the Final
Action that "Cohen, US PG-Pub 2007/0035523, teaches providing different
tactile responses to the user based on touching a different user interface
object with a general touch input gesture." (Final Act. 9). We agree with
the Examiner that prior to Appellant's challenge, in the Appeal Brief, of the
Examiner's finding or taking of Official Notice, the Examiner previously
supported the Examiner's finding with a citation to the Cohen reference,
which shows the well-known correlation of differing keys/objects to the
same haptic response.
We further note the Examiner has not applied the Cohen reference in
the statement of the rejection, and the Cohen reference is merely relied upon
by the Examiner to support the Examiner's finding and evidence the well-
5
Appeal2018-005563
Application 13/575,592
known many-to-one correspondence of objects to a single haptic
response/action. Furthermore, we agree with the Examiner that the many-to-
one correspondence is a predictable result from the one-to-one
correspondence which is expressly disclosed in the Frid reference.
In response to Appellant's argument that "the claimed invention
requires a different haptic output for the same input event provided to
different objects," the Examiner finds that Appellant's argument contradicts
previous discussions of the Frid reference. We agree with the Examiner that
Appellant's arguments are slightly inconsistent.
We find that this is based upon the claim language and Appellant's
arguments to the prior art Frid reference do not necessarily correlate to the
disclosed invention. We find the confusion may be in the manner that
Appellant argues the differences in the invention and the manner in which
Appellant has claimed the invention.
The claimed invention is directed to a middle-ware type of software
package with the storage of future intended functionality, but Appellant
argues the operational/functional differences in the Frid reference regarding
the actions/responses where the claimed invention is directed to the manner
in which the relationships between the user actions or events and the
responses/haptic actions are stored in memory and then sets the responsive
actions. 3
3 We further note that paragraphs 64---65 of the Specification identified the
corresponding storage of each of the object definition information where
item 5 corresponds to "(5) information about object operation conditions
(action information)" and "the above (5) information about the object
operation conditions (action information), action information for executing a
predetermined application function corresponding to each object and
information about a predetermined tactile sensation corresponding to each
6
Appeal2018-005563
Application 13/575,592
We find the storage and control to be taught and suggested by the Frid
reference which is what is claimed in the "apparatus" of representative
independent claim 3. Additionally, we agree with the Examiner that the Frid
reference additionally teaches and suggests the storage of relationships
between user events and a corresponding responsive haptic action. We
further agree with the Examiner that it would have been obvious to one of
ordinary skill in the art at the time of the invention to have a one to many
relationship rather than the one to one relationship between actions and
objects because it was a predictable and desirable result as the Examiner
proffered in the Non-Final and Final Actions.
We find unpersuasive Appellant's argument that the Examiner should
supply a reference to support the Examiner's finding that "a touch or tap
gesture, as this is a common and notoriously well-known technique of
providing the same input event to select different objects" (App. Br. 7),
because the Examiner had previously cited the Cohen reference (filing date
in 2006) to support the Examiner's finding/Official Notice in the grounds
rejection.
Moreover, we find Appellant's arguments directed to the structure of
the database of the disclosed invention and the structure of the database of
the Frid reference are not commensurate in scope with the express language
of independent claim 3. Appellant's argument fails because it is not
object are defined." Furthermore, paragraph 72 of the Specification
discloses storage of input events corresponding to "object types" rather than
objects, but the claim language refers to "objects" rather than "types." We
further find that Appellant's Summary of the Claimed Subject Matter
generally discusses the resulting operation with of the user interface, but the
claim is limited to the storage of the relationship information in the
definitions. (Corrected App. Br. 2--4).
7
Appeal2018-005563
Application 13/575,592
commensurate with the scope of the claim. See In re Self, 671 F.2d 1344,
1348 (CCPA 1982) ("[A]ppellant's arguments fail from the outset because
... they are not based on limitations appearing in the claims."); In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) ("[The] proffered facts ... are
not commensurate with the claim scope and are therefore unpersuasive.").
Although the separate haptic signatures each appear to be different,
the audio files associated with these selections duplicate the same function
which further identifies that there be may a single selection action which
results in different audio outputs. Alternatively, the Examiner interprets the
claimed "object" and concludes "[g]iven the same input event, i.e., a touch
input on a touch screen, may be provided to select different objects, it would
have been obvious to one of ordinary skill in the art at the time the invention
was made that the device provides different haptic feedback based on the
user providing the same input event to different objects." (Ans. 6). We
agree with the Examiner that the corresponding label of "event 402" in
Figure 4 of the Frid reference does not necessarily dictate that the user
selection action ("click") is not an "input event" where multiple clicks can
have varied corresponding haptic signatures.
Additionally, we find that the Examiner's rejection was based on
modifying the one to one relationship of the Frid reference to a one to many
relationship for the haptic responses, as the Examiner stated in the rejection
and maintained that it was well-known as supported by the Cohen reference.
In the Reply Brief, Appellant recites the language of the claim and
reproduces columns 6-7 of the Frid reference and contends that "while Frid
does expressly disclose that different events (see[] Event 402 of Fig. 4) can
8
Appeal2018-005563
Application 13/575,592
have a different haptic response, this is not material to what is required by
the claims." (Reply Br. 3). Appellant also contends that "[t]here
is no instance in Fig. 4 where a single input event ( e.g., highlighting an
object, selecting an object, etc.) has multiple different haptic signatures."
(Reply Br. 3). Appellant further contends that the Examiner does not contest
the meaning of the term "input event " and the Specification is described at
paragraph 72 and Figure 5 of the specification. (Reply Br. 3).
We disagree with Appellant and find that the Examiner does provide a
discussion of the claimed "input event." (Ans. 6). Moreover, the
Specification discusses defining the "[t]he tactile sensation set for each type
of the objects is displayed in rows in a horizontal direction in FIG. 5."
(Spec. ,r 72). But we find the claimed invention is directed to the "objects"
and not the "types of the objects." As a result, Appellant's argument is not
supported by the language of independent claim 3. Additionally, we find
Appellant's Summary of the Claimed Subject Matter does not identify
Figure 5, but only identifies Figure 3 to correspond to the claimed invention.
Appellant also argues, for the first time in the Reply Brief that the
Examiner has made a new ground of rejection and that the Cohen reference
does not teach the claimed invention. This argument, however, is untimely
raised and Appellant has not argued good cause for the untimeliness. See 3 7
C.F .R. § 41.41 (b )(2). Accordingly, this argument has been waived as it was
raised for the first time in the Reply Brief without a showing of good cause.
See 37 C.F.R. § 4I.41(b)(2) (2012); see also Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative) ("[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner's rejections, but were not.").
9
Appeal2018-005563
Application 13/575,592
In addition, Appellant did not timely challenge the Examiner's finding
that "this [ one to many relationship] is a common and notoriously well-
known technique" (Final Act. 4 and Non-Final Act. 4). Moreover, in the
Appeal Brief, Appellant merely argues that the Examiner has not provided a
reference, but the Examiner had previously identified a supporting reference
in the Final Action. Now, in the Reply Brief, Appellant contends that the
Examiner has improperly made a new ground ofrejection. 4 (Reply Br. 4--5).
We disagree with Appellant because that the Examiner has not changed his
position nor the rejection and merely provided the evidence that Appellant
requested prior to Appellant requesting the supporting reference. Again,
Appellant does not dispute the Examiner's specific finding which Cohen is
provided to evidence.
Appellant merely contends:
Cohen teaches nothing more than providing different tactile
sensations on the basis of the objects on which normal touch
inputs are performed. Cohen does not disclose or suggest setting
different tactile sensations to multiple kinds of input operations.
Thus, Cohen does not disclose or suggest determining whether
the same or different input operations are performed to different
UI objects, on the premise that multiple kinds of input operations
are defined.
(Reply Br. 4). We find Appellant's argument unavailing. The Examiner
relies on the Cohen reference merely to support the taking of Official Notice
4 The issue of whether an Examiner raises an improper new ground of
rejection (Reply Br. 4--5) is a petitionable matter and not an appealable
matter. See 37 C.F.R. § 41.40(a). Appellants' failure to file timely such a
petition waives the argument. See id.
10
Appeal2018-005563
Application 13/575,592
that the specific fact was notoriously well known. (See MPEP § 2144.03)
We find Appellant's arguments do not controvert the Examiner's supporting
reference nor controvert that this fact was notoriously well known at the
time of the invention to have a one to many relationship.
Additionally, Appellant contends that the Examiner fails to
acknowledge a new ground of rejection. We disagree with Appellant as
described above. See supra n.4. We find the Examiner has not changed the
rejection since the claims were amended in the amendment filed July 5,
2016.
Therefore, we find the Examiner has not made a new ground of
rejection, and Appellant has not shown error in the Examiner's factual
findings or legal conclusion of obviousness of representative independent
claim 3, and we sustain the rejection thereof. Because Appellant has not set
forth separate arguments for patentability of independent claims 4---6, we
group them as falling with representative independent claim 3. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
CONCLUSION
The Examiner did not err in rejecting claims 3---6 based upon
obviousness under 35 U.S.C. § 103(a).
DECISION
For the above reasons, we affirm the Examiner's obviousness
rejections of claims 3---6 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv) (2017).
11
Appeal2018-005563
Application 13/575,592
AFFIRMED
12