Juan Manuel. Cruz-Hernandez et al.Download PDFPatent Trials and Appeals BoardAug 23, 201912697042 - (D) (P.T.A.B. Aug. 23, 2019) 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. 12/697,042 01/29/2010 Juan Manuel Cruz-Hernandez IMM355 (51851/383719) 1188 34300 7590 08/23/2019 Kilpatrick Townsend and Stockton/Immersion Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER YANG, JAMES J ART UNIT PAPER NUMBER 2683 NOTIFICATION DATE DELIVERY MODE 08/23/2019 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): eofficeaction@appcoll.com ipefiling@kilpatricktownsend.com kts_imm_docketing@kilpatricktownsend.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JUAN MANUEL CRUZ-HERNANDEZ and DANNY A. GRANT1 ____________ Appeal 2018-000472 Application 12/697,042 Technology Center 2600 ____________ Before CAROLYN D. THOMAS, JASON V. MORGAN, and JASON M. REPKO, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1–25, all the pending claims in the present application (see Claims Appendix). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An Oral Hearing was held on August 13, 2019. We AFFIRM-IN-PART. 1Appellants name as the real party in interest Immersion Corporation (App. Br. 1). Appeal 2018-000472 Application 12/697,042 2 The present invention relates generally to using multiple actuators to realize textures (see Spec., Abstract). Claim 1 is illustrative: 1. A system comprising: a first actuator configured to receive a first haptic signal and output a first haptic effect based at least in part on the first haptic signal; a second actuator configured to receive a second haptic signal and output a second haptic effect based at least in part on the second haptic signal, wherein the first haptic signal is different from the second haptic signal; and a processor configured to: determine a composite haptic effect generated by combining two haptic effects, the composite haptic effect configured to simulate a texture; after determining the composite haptic effect, determine a first frequency at which to operate the first actuator to output the first haptic effect and a second frequency at which to operate the second actuator to output the second haptic effect, the first and second haptic effects configured, when output at overlapping time periods to generate the composite haptic effect; and transmit the first haptic signal to the first actuator and transmit the second haptic signal to the second actuator. Appellants appeal the following rejections:2 R1. Claims 1–5, 7, 9, and 17–22 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 2, 11, 14, and 19 of co-pending Application No. 12/696,900 in view of Shahoian (US 2005/0017947 A1, Jan. 27, 2005) 2 The Examiner withdrew the rejection of claims 1 and 25 under 35 U.S.C. § 112 (b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite (see Ans. 3). Appeal 2018-000472 Application 12/697,042 3 (Final Act. 4–6);3 R2. Claims 1, 2, and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of Cruz- Hernandez (US 9,448,713 B2, Sept. 20, 2016) in view of Shahoian (Final Act. 7–8); R3. Claims 1–8 and 11–25 are rejected under 35 U.S.C. § 102(b) as being anticipated by Shahoian (Final Act. 9–13); R4. Claim 1 is rejected under 35 U.S.C. § 102(b) as being anticipated by Houston (US 2006/0290662 A1, Dec. 28, 2006) (Final Act. 13–14); R5. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Shahoian (Final Act. 14–15). We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). ANALYSIS Double Patenting Rejections Issue 1: Does the preponderance of evidence relied upon by the Examiner support a conclusion of obviousness-type double patenting and/or nonstatutory double patenting? Appellants contend that “the Office Action does not compare the claims of U.S. 9,448,713 to the claims recited by this application. Rather, it compares the disclosure of the ’713 patent” (App. Br. 14). Appellants make 3 Co-pending Application No. 12/696,900 issued on July 4, 2017, as U.S. Patent 9,696,803 B2. As such, as shall treat this rejection as non- provisionally. Appeal 2018-000472 Application 12/697,042 4 similar arguments regarding co-pending Application No. 12/696,900, i.e., “the Office Action does not compare the claims of the ’900 application to the claims of the present application” (id. at 15–17). We agree with Appellants. Specifically, the Examiner finds that “[r]egarding claims 1 and 21, ’900 [application] discloses a system comprising . . . (claim 1)” (Final Act. 4–5). Here, we find that the Examiner’s recitation of claim limitations appears to mirror the claim limitations in Appellants’ claim 1, instead of, or in addition to, claim 1 in the ’900 application, i.e., now U.S. Patent 9,696,803 B2. The Examiner makes similar findings regarding U.S. Patent 9,448,713 (see Final Act. 7). As such, we agree with Appellants that the Examiner merely “lists the language of claim 1 of the present Application” (App. Br. 14), and broadly states that the co-pending Application No. 12/696,900 and U.S. Patent 9,448,713 “discloses a system comprising” without clearly comparing the claims of the respective patents to the claims in the present application. Concerning the obviousness-type double patenting rejection of claims 1–5, 7, 9, and 17–22 over co-pending Application No. 12/696,900 (now U.S. Patent No. 9,696,803), we agree with Appellants that the Examiner has not articulated why it would have been obvious to arrive at the claimed subject matter from any of claims of the afore-identified Patents. The key question in any obviousness double patenting analysis is: “Does any claim in the application define merely an obvious variation of an invention claimed in the patent asserted as supporting double patenting?” General Foods v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1278 (Fed. Cir. 1992) (discussing In re Vogel, 422 F.2d 438 (CCPA 1970)). Appeal 2018-000472 Application 12/697,042 5 Answering this question requires that the decision maker first construe the claims in the patent and the claims under review and determine the differences between them. Eli Lilly v. Barr Labs., 251 F.3d 955, 968 (Fed. Cir. 2001). After determining the differences, the decision maker must determine whether the differences in subject matter render the claims patentably distinct. Id. Where a pending claim under review is an obvious variation of a patented claim, the pending claim is not patentably distinct. Vogel, 422 F.2d at 441. Furthermore, it is critical during the analysis that no part of the patent be used as “prior art” against the claims under review. In a double patenting rejection, the prior patent does not qualify as prior art, and therefore, the patented disclosure may not be used as prior art. Eli Lilly, 251 F.3d at 968; Vogel, 422 F.2d at 441; see also In re Sarett, 327 F.2d 1005, 1013 (CCPA 1964) (“We are not here concerned with what one skilled in the art would be aware [of] from reading the claims but with what inventions the claims define.”). The Examiner’s lack of focus on the patent claims, i.e., first construing such claims in the patent and the claims under review and determining the differences between them, makes this rejection deficient. Also, we point out that the disclosure of the patents are not before us in evaluating the obviousness-type double patenting rejection, only the claims thereof. Although we agree with the Examiner that “as long as the scope of limitation(s) in claim 1 of the co[-]pending application (’900) disclose the claims of the present application, the wording need not [] be the same” (Ans. 5), the Examiner fails to specifically illustrate how the respective claims are similar. Appeal 2018-000472 Application 12/697,042 6 Accordingly, we at least the reasons noted above, we are constrained by the record to reverse the Examiner’s double patenting rejections. Rejections under § 102(b) Claims 1–8 and 11–25 over Shahoian Issue 2: Did the Examiner err in finding that Shahoian discloses “after determining the composite haptic effect, determine a first frequency . . . and a second frequency,” as set forth in claim 1? Appellants contend that “[t]he Office Action completely ignores the required order of steps, ‘after determining the composite haptic effect, determines a first frequency . . .’” (App. Br. 18), and “[w]ithout showing this order the Office Action cannot establish that the claims are anticipated by Shahoian” (id.). The Examiner directs our attention to Shahoian’s paragraphs 49, 72, and 151–53 to teach the argued limitations and finds that “[t]he Appellant[s’] claims, in light of the specification, do not explicitly or inherently teach the claimed invention away from the interpretation” (see Ans. 6). With this statement, it appears that the Examiner is concluding that the claimed invention is not distinguishable from the Examiner’s findings. We disagree with the Examiner. As emphasized by Appellants, the Examiner seems to ignore the requirement of determining a first and second frequency after determining the composite haptic effect (see claim 1). Here, the cited portions of Shahoian merely discloses “a ‘periodic force sensation’ can be applied and can have a magnitude and a frequency” (¶ 72). However, the Examiner has not established, nor can we find, where Shahoian discloses determining a Appeal 2018-000472 Application 12/697,042 7 frequency at any particular time, i.e., after determining the composite haptic effect, as required by claim 1. Accordingly, we reverse the Examiner’s rejection of claim 1 as being anticipated by Shahoian, and we also reverse the anticipation rejection of claims 2–8 and 11–25 which also include this limitation. Claim 1 over Houston Issue 3: Did the Examiner err in finding that Houston discloses “the composite haptic effect configured to simulate a texture,” as set forth in claim 1? Appellants contend that “[t]he Office Action does not establish that Houston discloses ‘the composite haptic effect configured to simulate a texture’” (App. Br. 19) as “[t]his is not met simply by [Houston’s] ‘compound vibrations’” (id.), because there is “no explanation whatsoever of what is meant by a ‘compound vibration’” (id.). Appellants further contend that “Houston [0208] does not discuss a haptic effect ‘configured to simulate a texture’ . . . at best this paragraph simply discusses that a broad set of haptic sensations may be produced, without including detail as to what those haptic sensations are” (App. Br. 20). We disagree with Appellants. Here, Appellants’ Specification merely states that “[f]or example, each haptic effect may comprises vibrations that when combined form harmonics that simulate a texture on the surface of touch-sensitive interface 114” (Spec. ¶ 84). In other words, Appellants’ Specification describes the claimed “texture” as being formed of combined vibrations. Appeal 2018-000472 Application 12/697,042 8 Similarly, Houston describes a “vibration device using compound vibrations” (Houston ¶ 208) that “produce an extremely broad and rich set of haptic sensations for the end user” (id.). As such, we find unavailing Appellants contention that that “Houston [0208] does not discuss a haptic effect ‘configured to simulate a texture’” (see App. Br. 20), given that Appellants’ Specification merely indicates that such a simulated texture can be form by vibrations and Houston produces compound vibrations, i.e., a mixture of vibrations. Appellants fail to persuasively distinguish Houston’s teachings from the claimed “simulated texture.” Therefore, we agree with the Examiner that “the compound vibrations [of Houston] are equivalent to Appellants’ composite haptic effect” (see Ans. 6). Accordingly, we sustain the Examiner’s rejection of claim 1 as being anticipated by Houston Rejections under 103(a) Claims 9 and 10 Appellants have not presented separate arguments for dependent claims 9 and 10 (see App. Br. 21). In any case, since we agree with at least one of the arguments advanced by Appellants regarding independent claim 1, we also will not sustain the Examiner’s obviousness rejection of claims 9 and 10. DECISION We reverse both the Examiner’s rejection of claims 1–5, 7, 9, and 17– 22 on the ground of nonstatutory obviousness-type double patenting and the Appeal 2018-000472 Application 12/697,042 9 rejection of claims 1, 2, and 21 on the ground of nonstatutory double patenting. We reverse the Examiner’s § 102(b) rejection of claims 1–8 and 11– 25 over Shahoian. We reverse the Examiner’s § 103(a) rejection of claims 9 and 10 over Shahoian. We affirm the Examiner’s § 102(b) rejection of claim 1 over Houston. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Copy with citationCopy as parenthetical citation