Ex Parte Rosenberg

Patent Trial and Appeal BoardMar 29, 2017

14071701 (P.T.A.B. Mar. 29, 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. 14/071,701 11/05/2013 Louis B. Rosenberg IMM144.C1 (51851/891011) 9659 7590 Kilpatrick Townsend and Stockton, LLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER NGUYEN, KEVIN M ART UNIT PAPER NUMBER 2628 NOTIFICATION DATE DELIVERY MODE 03/31/2017 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 LOUIS B. ROSENBERG Appeal 2016-005321 Application 14/071,701 Technology Center 2600 Before: DEBRA K. STEPHENS, ADAM J. PYONIN, and PHILLIP A. BENNETT, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of claims 1—25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2016-005321 Application 14/071,701 THE CLAIMED SUBJECT MATTER According to Appellant, the claims are directed to devices using tactile feedback to deliver silent status information (Abstract). Claim 1, reproduced below, is representative of the claimed subject matter: 1. A handheld device comprising: a haptic feedback assembly; a fingerprint sensor configured to detect a fingerprint; a processor coupled to the fingerprint sensor, the processor configured to: receive a signal associated with the fingerprint; determine whether a user is a known user based in part on the fingerprint; and determine a haptic effect based on the fingerprint; and a drive circuit coupled to the processor and the haptic feedback assembly, the drive circuit configured to send a drive signal to the haptic feedback assembly. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Tamori US 5,515,738 May 14, 1996 Merjanian US 5,546,471 Aug. 13, 1996 REJECTION Claims 1—25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tamori and Merjanian (Final Act. 2—7). 2 Appeal 2016-005321 Application 14/071,701 35 U.S.C. § 103(a): Claims 1—25 Appellant contends the invention as recited in claims 1—25, is not obvious over Tamori and Merjanian (App. Br. 11—13). The issue presented by the arguments is: Issue: Does the combination of Tamori and Merjanian teach, suggest, or otherwise render obvious “determine a haptic effect based on the fingerprint,” as recited in claim 1? ANALYSIS Appellant argues Tamori discloses recreating a fingerprint pattern by correlating the local vibration frequencies and not determining a haptic effect based on the fingerprint (App. Br. 12). According to Appellant, Tamori uses vibration to detect a fingerprint pattern by vibrating a sheet that the user touches, which does not disclose the claim limitation of “determine a haptic effect based on the fingerprint” (id. ). Appellant further asserts because Tamori uses vibration to detect a fingerprint pattern, Tamori does not use a vibration to output a haptic effect (id. ). We are not persuaded by Appellant’s arguments. Specifically, Tamori determines vibrations (an effect of or related to touch) based on a fingerprint (See Tamori claim 18). In particular, Tamori teaches when a fingertip is pressed onto a surface pressure input panel, the touched portions will vibrate at different frequencies and amplitudes based on the pressure (Tamori 4:17— 39; Ans. 4). Thus, a haptic effect (vibrations) is determined based on a fingerprint. Appellant’s argument that Tamori does not use a vibration to output a haptic effect (App. Br. 12) is not persuasive as Appellant are arguing limitations not recited in the claim. 3 Appeal 2016-005321 Application 14/071,701 Appellant additionally argues Tamori teaches the frequency of the input vibration is too high a frequency for an ordinarily skilled artisan to use to output a vibration-based haptic effect (App. Br. 12). According to Appellant, Tamori describes the oscillator is connected to conductive plates “to apply a high frequency signal, preferably about 1 Mhz, between the plates of vibrating body 5” {id. (citing Tamori 4:7—11 (emphasis added))). Appellant points to their Specification which states “[i]n some cases, a frequency between 0 Hz and 500 Hz may be desirable” (Spec. 138). Thus, neither the reference nor Appellant’s Specification provides a specific frequency requirement but instead, each offers preferable and desirable frequencies. The claim, however, is silent with respect to specific frequencies. Next, Appellant argues no teaching, suggestion, or motivation in the cited references exists, to combine the 1 Mhz frequency with the fingerprint reader of Merjanian. Appellants argument is not persuasive as a teaching, suggestion, or motivation need not be present in the cited references themselves (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)). Furthermore, Appellant has not proffered sufficient evidence that Tamori’s frequency would not have produced a haptic effect, nor has Appellant proffered sufficient evidence that setting the frequency and amplitude of Tamori’s vibration to produce a haptic effect would not have been obvious to an ordinarily skilled artisan. Appellant additionally argues the combination of Merjanian and Tamori would be inoperable “because the disclosed 1 Mhz input vibration frequency of Tamori cannot be used to produce a vibration-based haptic, e.g., an effect between 0 Hz and 500 Hz” (App. Br. 13). We are not 4 Appeal 2016-005321 Application 14/071,701 persuaded by Appellant’s arguments. Tamori does not limit its vibration to a specific frequency; Appellant’s claim does not limit the haptic effect to a specific frequency; Appellant’s Specification does not set a required frequency range; and Appellant has not persuaded us an ordinarily skilled artisan would have found it uniquely challenging or beyond their skill to set the frequency and amplitude of Tamori’s vibration to determine a haptic effect based on the fingerprint. Accordingly, we are not persuaded the combination of Tamori and Merjanian fails to teach, suggest, or otherwise render obvious the limitations as recited in independent claim 1. Independent claims 10 and 18 were not separately argued and thus, Appellant’s have not persuaded us of error in the Examiner’s findings and conclusion. The dependent claims, not separately argued, fall with their respective independent claims. Therefore, we sustain the rejection of claims 1—25 under 35 U.S.C. § 103(a) for obviousness over Tamori and Merjanian. DECISION The Examiner’s rejection of claims 1—25 under 35 U.S.C. § 103(a) as being unpatentable over Tamori and Merjanian is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 5