Juan Manuel. Cruz-Hernandez et al.

Patent Trials and Appeals Board

Aug 23, 2019

12697042 - (D) (P.T.A.B. Aug. 23, 2019)

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).
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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).
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(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.
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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)).
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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.
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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
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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.
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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
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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