2016 Pat. App. LEXIS 1627
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`Patent Trial and Appeal Board
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`February 01, 2016, Decided
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`Appeal 2014-000203; Application 12/696,900 Technology Center 2600
`
`Reporter
`2016 Pat. App. LEXIS 1627
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`Ex parte JUAN MANUEL CRUZ-HERNANDEZ and DANNY A. GRANT
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`Notice:
` [*1]
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`ROUTINE OPINION. Pursuant to the Patent Trial and Appeal Board Standard Operating Procedure 2, the opinion
`below has been designated a routine opinion.
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`Core Terms
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`coefficient of friction, vibrate, patent, haptic, surface, double patenting, frequency, touch, amplitude, actuator,
`obviousness-type, co-pending, disclosure, output, rejected claim, invent, configure, signal, nonstatutory, anticipate,
`prima facie case, prior art, apparatus, recite
`
`Panel: Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and JASON V. MORGAN, Administrative Patent
`Judges.
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`Opinion By: JEFFREY S. SMITH
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`Opinion
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`
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`THOMAS, Administrative Patent Judge.
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`DECISION ON APPEAL
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`Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner finally rejecting claims 1-11 and 13-23, all
`the pending claims in the present application. Claim 12 is canceled. We have jurisdiction over the appeal under 35
`U.S.C. § 6(b). An Oral Hearing was held on January 14, 2016.
`
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`We AFFIRM.
`
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`The present invention relates generally to providing haptic effects in response to a touch occurring in a touch
`area of a touch surface. A first haptic signal can be sent to cause an actuator to vary a coefficient of friction of
`the touch surface. See Abstract.
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`Telit Wireless Solutions Inc. and Telit Communications PLC Exh. 1234 p.1
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`2016 Pat. App. LEXIS 1627
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`Page 2 of 8
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`Claim 1 is illustrative:
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`1. A system comprising:
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`a sensor configured to detect a touch in a touch area when an object contacts a touch surface;
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`a first actuator in communication with the processor and coupled to the touch surface, the first actuator
`configured [*2] to provide a first haptic output, in response to a first haptic signal, the first haptic output
`configured to vary a coefficient of friction of the touch surface;
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`a second actuator in communication with the processor and coupled to the touch surface, the second
`actuator configured to provide a second haptic output, in response to a second haptic signal, the second
`haptic output different from the first haptic output; and
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`a processor in communication with the first actuator, the second actuator, and the sensor, the processor
`configured to:
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`select a composite haptic effect to generate on the touch surface, and
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`transmit the first haptic signal to the first actuator, the first haptic signal associated with the composite
`haptic effect; and
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`transmit the second haptic signal to the second actuator, the second haptic signal associated with the
`composite haptic effect, the first haptic signal and the second haptic signal configured to cause the
`first actuator and the second actuator to generate the composite haptic effect on the touch surface.
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`App. Br. 18 (Claims App'x)
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`Appellants appeal the following rejections:
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`R1. Claim 1 is rejected on the grounds of nonstatutory obviousness-type [*3] double patenting as being
`unpatentable over Cruz-Hernandez (U.S. 7,667, 687 B2; Feb. 23, 2010), Grant (U.S. 7,890, 863 B2; Feb. 15, 2011),
`Heubel (U.S. 8,098, 235 B2; Jan. 17, 2012), Grant (U.S. 8,157, 650 B2; Apr. 17, 2012), Grant (U.S. 8,232, 969 B2;
`July 31, 2012), and Grant (U.S. 8,264, 465 B2; Sept. 11, 2012) (see Final Act. 3-10; Ans. 3--4);
`
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`R2. Claim 1 is provisionally rejected on the grounds of nonstatutory obviousness-type double patenting as being
` ; and
`1
`unpatentable over various co-pending applications (seeFinal Act. 10-49; Ans. 4-5)
`
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`1 The Examiner withdrew the provisional rejection of claim 1 on the ground of nonstatutory obviousness-type double
`patenting over claim 10 of co-pending Application No. 12/269,084, claim 8 of co-pending Application No. 12/538,575, claim 24
`of co-pending Application No. 12/947,321, claim 9 of co-pending Application No. 13/605,589, and claim 20 of co-pending
`Application No. 12/697,042 (see Ans. 3).
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`Telit Wireless Solutions Inc. and Telit Communications PLC Exh. 1234 p.2
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`2016 Pat. App. LEXIS 1627
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`Page 3 of 8
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` [*4]
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`R3. Claims 1-11 and 13-23 are rejected under 35 U.S.C. § 102(b) as being anticipated by Shahoian (US
`2005/0017947 AI; Jan. 27, 2005) (see Final Act. 49-54; Ans. 3).
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`RELATED DECISIONS
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`Appeal No. 2014-000206 (Application No. 12/696,908), mailed January 29, 2016 (Examiner Affirmed).
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`Appeal No. 2014-000209 (Application No. 12/697,010), mailed January 29, 2016 (Examiner Affirmed).
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`Appeal No. 2014-000210 (Application No. 12/697,037), mailed January 29, 2016 (Examiner Affirmed).
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`Appeal No. 2014-000211 (Application No. 12/697,042), mailed January 29, 2016 (Examiner Affirmed).
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`Appellants direct our attention to essentially the same or similar evidence relied upon in each of the above-noted
`related cases. Therefore, we adopt and incorporate herein by reference the Board's related decisions to the extent
`they apply to the similar arguments and evidence made herein.
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`ANALYSIS
`
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`Issue 1: Does the preponderance of evidence relied upon by the Examiner support a conclusion of obviousness-
`type double patenting?
`
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`Obviousness-Type Double Patenting Rejection of claim 1 over U.S. Patent 7,667,687; U.S. Patent
`7,890,863 [*5] ; U.S. Patent 8,098,235; and over each of the provisionally rejected co-pending Applications
`
`
`We highlight that Appellants state that "[i]fthe Examiner does not produce a prima facie case, the applicant is
`under no obligation to submit evidence of nonobviousness" (App. Br. 13) and "[d]ue to space and time constraints,
`Appellant[s] cannot herein address each of the double patenting rejections" (id.). Instead, Appellants broadly note
`that "each of Tables . . . state at least once that a vibration discloses adjusting a coefficient of friction . . . this
`does not anticipate claim 1" (id.) (emphasis added).
`
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`Appellants correctly note that the one who bears the initial burden of presenting a prima facie case of
`unpatentability is the Examiner. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). However, a prima facie case
`is established when the party with the burden of proof points to evidence that is sufficient, if uncontroverted, to
`entitle it to prevail as a matter of law. See Saab Cars USA, Inc. v. U. S., 434 F.3d 1359, 1369 (Fed. Cir. 2006). In
`particular, regarding the Patent [*6] Examiner's burden of production:
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`[A]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of
`the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as
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`Telit Wireless Solutions Inc. and Telit Communications PLC Exh. 1234 p.3
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`2016 Pat. App. LEXIS 1627
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`Page 4 of 8
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`to meet the notice requirement of [ 35 U.S.C.] § 132. As the statute itself instructs, the examiner must "notify
`the applicant," "stating the reasons for such rejection," "together with such information and references as may
`be useful in judging the propriety of continuing prosecution of his application." 35 U.S.C. § 132.
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`
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`In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Here, we find that the Examiner has indeed notified Appellants of
`the basis of the rejection, i.e., nonstatutory obviousness-type double patenting, together with sufficient
`information and reference citations, i.e., Tables 1.1, 1.2, 2.1, 2.2, 3.1-3.10 (see Final Act. 4-49) that are helpful in
`judging the propriety of continuing prosecution of this application. For example, in the Tables the Examiner has
`indicated which limitations are explicitly shown, which are implied [*7] (and why they are implied), and which fall
`under official notice (and why the Examiner takes official notice) (id.). Because we find such information is useful in
`judging the propriety of continuing prosecution of this application, and provides sufficient evidence for purposes of
`reviewing the Examiner's rejection, the Examiner has met the initial burden of presenting a prima facie case. As
`such, the burden is now shifted to Appellants for coming forward with rebuttal or argument. In re Rijckaert, 9 F.3d
`1531, 1532 (Fed. Cir. 1993).
`
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`Appellants, however, have not provided persuasive reasoning or rebuttal evidence, by affidavit or otherwise, to
`overcome the Examiner's prima facie case. Moreover, arguments not made are waived. See 37 C.F.R. §
`41.37(c)(1)(iv) (2012). Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of
`this court to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions
`over the prior art.")
`
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`Furthermore, we note that Appellants' statement "this does not anticipate claim [*8] 1" (see App. Br. 13 (emphasis
`added)) misses the mark concerning addressing the obviousness-type double patenting rejection. 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 Corp. v. Studiengesellschaft Kahle mb H, 972 F.2d 1272, 1278 (Fed. Cir. 1992) (discussing In re Vogel, 422
`F.2d 438 (CCPA 1970)). Here, Appellants inappropriately reference "anticipating" the claims. This is a misplaced
`response.
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`Therefore, we pro forma affirm the Examiner's nonstatutory obviousness-type double patenting rejection of claim 1
`over U.S. Patent 7,667,687; U.S. Patent 7,890,863; U.S. Patent 8,098,235; and each of the provisionally rejected
` (see Ans. 3-5).
`2
`co-pending Applications
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` [*9]
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`Double Patenting Rejection of claim 1 over U.S. 8,157, 650; U.S. 8,232, 969; and U.S. 8,264, 465
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`Unlike above, regarding the rejection of claim 1 over U.S. 8, 157, 650; U.S. 8,232, 969; and U.S. 8,264, 465, here
`Appellants provide rebuttals to the Examiner's prima facie case. Specifically, Appellants contend that "the
`disclosure of a vibration alone does not disclose a perceptible adjustment in the coefficient of friction" (App. Br.
`13). Appellants further contend that "with regard to claim 15 of U.S. Patent 8,157,650 . . . a low frequency
`vibration is particularly unlikely to generate a perceptible adjustment in the coefficient of friction" (id.). Appellants
`
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`2 We leave it to the Examiner to ascertain whether any of the cited thirty-nine co-pending Applications are no longer co-
`pending, i.e., have been abandoned, or whether the claims of the co-pending Applications have been substantively modified to
`an extent that moots any of the Examiner's obviousness-type double patenting rejections.
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`Telit Wireless Solutions Inc. and Telit Communications PLC Exh. 1234 p.4
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`2016 Pat. App. LEXIS 1627
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`Page 5 of 8
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`also contend that "with respect to claim 24 of U.S. Patent 8,232,969 and claim 1 of U.S. Patent 8,264,465, neither
`of these claims even recites a vibration" (id.).
`
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`As stated by our reviewing court in In re Braat, 937 F.2d 589, 592-93 (Fed. Cir. 1991) [*10] (citation omitted):
`
`Obviousness-type double patenting is a judicially created doctrine intended to prevent improper timewise
`extension of the patent right by prohibiting the issuance of claims in a second patent which are not "patentably
`distinct" from the claims of a first patent.
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`An analysis analogous to an obviousness analysis under 35 U.S.C. § 103(a) comes into play during the step of
`determining the obviousness of the "difference" between the claimed invention and the patented invention. See
`Studiengesellschaft Kahle mb H v. N. Petrochemical Co., 784 F.2d 351, 355 (Fed. Cir. 1986); In re Longi, 759 F.2d
`887, 892-93 (Fed. Cir. 1985). However, the disclosure of a patent cited in support of a double patenting rejection
`cannot be used as though it was prior art, even where the disclosure is found in the claims. Braat, 937 F.2d at 594
`n.5. "It is the claims, not the specification, that define an invention. . . . And it is the claims that are compared when
`assessing double patenting. " Ortho Pharmaceutical Corp. v. Smith, 959 F.2d 936, 943 (Fed. Cir. 1992). [*11]
`However, the disclosure of a patent may be used to learn the meaning of terms and in "interpreting the coverage
`of [a] claim." Vogel, 422 F.2d at 441.
`
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`Here, the Examiner responds that "one of ordinary skill in the art of vibration apparatuses reasonably would infer
`that an apparatus disclosed by a reference, which includes the components and structure of the presently claimed
`invention, is capable of varying a coefficient of friction of a touch surface" (Ans. 31) (emphasis added). In other
`words, the Examiner appears to look to the disclosures of the cited patents. Although the Examiner provides
`several Tables that indicate which claims/limitations in the Patents are being compared to claim 1 in the present
`application in assessing the double patenting rejection (see Final Act. 4-49), the Examiner fails to address
`specifics arguments made by Appellants concerning entries in such Tables. Interestingly, the Examiner even fails
`to address Appellants' contention that "neither of these claims even recites a vibration" as proffered by the
`Examiner (i.e., referencing claim 24 of U.S. Patent 8,232,969 and claim 1 of U.S. Patent 8,264 [*12] . 465) as
`indicated in the Examiner's Table 1.2 (see App. Br. 13; see also Ans. 8).
`
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`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. See 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.").
`
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`Here, the Examiner's focus on the disclosed vibration apparatuses in the disclosures misses the mark (see Ans.
`31). The focus should be on the claims, not the disclosures. Also, the disclosures of the cited patents are not
`before us in evaluating the obviousness-type double patenting rejection, only the claims thereof.
`
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`In view of the above discussion, we do not sustain the nonstatutory obviousness-type double patenting
`rejection of claim 1 over U.S. 8,157, 650; U.S. 8,232, 969 [*13] ; and U.S. 8,264, 465.
`
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`35 U.S.C. § 102(b) Rejection
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`Telit Wireless Solutions Inc. and Telit Communications PLC Exh. 1234 p.5
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`2016 Pat. App. LEXIS 1627
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`Page 6 of 8
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`Issue 2: Did the Examiner err in finding that Shahoian discloses "the first haptic output configured to vary a
`coefficient of friction of the touch surface, " as set forth in claim 1?
`
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`Appellants contend "that Shahoian['s] paragraphs [0044] and [0186] are not related to friction or adjusting a
`coefficient of friction" (App. Br. 14). Appellants further contend that "[t]he Office Action attempts to apply a 35
`U.S.C. § 102 rejection on grounds that a vibration inherently causes a variation in the coefficient of friction. But to
`do so, the Office Action must establish that all vibrations cause a variation in the coefficient of friction" (id. at 15).
`
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`In response, the Examiner highlights that Appellants' Specification states that "the coefficient of friction can be
`varied by vibrating the surface at different frequencies and/or amplitudes" (Ans. 13 (citing Spec. P 26)). In
`addition, the Examiner finds that "[t]he claims and the written description of the present application each fail to limit
`the vibrations to a particular range of amplitude, [*14] range of frequency, and/or set of shapes" (Ans. 13) and
`"[t]hus, the variation of the coefficient of friction of the touch surface is satisfied by, yet not limited to, any
`vibration of a touch surface" (id.). We agree with the Examiner.
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`We refer to, rely on, and adopt the Examiner's findings and conclusions set forth in the Answer. Our discussions
`here will be limited to the following points of emphasis.
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`Specifically, as highlighted by the Examiner, Appellants' Specification (P 26) states "the coefficient of friction can
`be varied by vibrating the surface at different frequencies and/or amplitudes. " Stated differently, Appellants
`explicitly disclose that vibration of different frequencies and/or amplitudes achieves a variance of the coefficient
`of friction.
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`Similarly, Shahoian discloses "a variety of haptic sensations can be output to the user who is contacting the
`touchpad (or housing or separate surface) . For example, jolts, vibrations (varying or constant amplitude) , and
`textures can be output" (Shahoian P 44) and "[i]n other cases a texture can be performed by presenting a vibration
`to a user . . . the frequency and magnitude of the vibration is increased" (id. at P 186). [*15] Consistent with
`Appellants' Specification, Shahoian discloses outputting vibrations at varying frequencies and/or amplitudes,
`i.e., haptic sensations. The Examiner finds, and we agree, that because Shahoian discloses varying amplitudes
`and/or frequencies of a vibration, Shahoian necessarily discloses varying a coefficient of friction of a surface.
`
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`Given Appellants' disclosure in paragraph 26, Appellants fail to distinguish Shahoian's vibrations at varying
`frequencies and/or amplitudes from the claimed "vary a coefficient of friction. " Although Appellants direct our
`attention to "low frequency vibration of 1 Hz, 0.5 Hz, 0.1 Hz, or 0.05 Hz, etc., at virtually any amplitude" as being
`"insufficient to vary the coefficient of friction of the surface" (see App. Br. 15), we note that the aforementioned low
`frequency vibrations are not cited or relied upon by the Examiner, nor do they even appear in the disclosure of
`Shahoian. Furthermore, Appellants have not provided evidence, by affidavit or otherwise, to support such "low
`frequency" contentions. Mere attorney arguments and conclusory statements that are unsupported by factual
`evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); [*16] see also In
`re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); 37 C.F.R. § 1.111(b); and Exparte Belinne, No. 2009-004693,
`slip
`op.
`at
`7-8
`(BPAI
`Aug.
`10,
`2009)
`(informative),
`available
`at
`http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf
`
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`Further, we find that Appellants' "low frequency" argument is not commensurate with the scope of claim 1 because
`claim 1 does not require any particular frequency for varying the coefficient of friction, nor does Appellants'
`Specification limit the frequencies in any manner. Furthermore, this argument ignores Appellants' disclosure that
`varying amplitudes may also vary the coefficient of friction.
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`Telit Wireless Solutions Inc. and Telit Communications PLC Exh. 1234 p.6
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`2016 Pat. App. LEXIS 1627
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`Page 7 of 8
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`Therefore, we agree with the Examiner that "whether the apparatus disclosed by Shahoian anticipates the present
`claims is unrelated to whether 'a low frequency vibration . . . at virtually any amplitude would be insufficient to
`vary the coefficient of friction of the surface of a vibrotactile device'" (Ans. 27), as the low frequency vibrations
`(i.e., 1 Hz, 0.5 Hz, 0.1 Hz, or 0.05 Hz) highlighted by Appellants are not being relied upon by the Examiner in the
`prima [*17] facie case.
`
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`As noted supra, Appellants' Specification clearly indicates that "vibrations at varying amplitudes" is one way of
`achieving a variance in a coefficient of friction. As such, we find Appellants' contention "that Shahoian['s]
`paragraphs [0044] and [0186] are not related to friction or adjusting a coefficient of friction" (see App. Br. 14)
`unavailing given Appellants' statements in their Specification that vibrating a surface at different frequencies
`and/or amplitudes achieves a variance of the coefficient of friction of a surface (see Spec. P 26).
`
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`In addition, given that Appellants' Specification and/or claims have not placed any limitations on a vibration's
`frequencies and/or amplitudes required to vary a coefficient of friction of the touch surface, we also find
`unavailing Appellants contention that "the Office Action must establish that all vibrations cause a variation in the
`coefficient of friction" (App. Br. 15) (emphasis added).
`
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`Furthermore, we note that claim 1 recites, inter alia, "the first haptic output configured to vary a coefficient of
`friction of the touch surface" (see claim 1) (emphasis added). Thus, claim 1 does not positively [*18] recite
`varying a coefficient of friction. Rather, the claim calls for only a haptic output configured to (capable of) vary a
`coefficient of friction. See, e.g., In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (anticipation found where
`prior art was found to be capable of performing the claimed function). Given that Appellants have conceded that a
`coefficient of friction can be varied by vibrating the surface at different frequencies and/or amplitudes (see Spec.
`P 26) using a piezoelectric actuator (id. at P 21), and Shahoian does indeed vibrate a surface at different
`amplitudes/ frequencies (see Shahoian PP 44, 186) using a piezoelectric actuator (see id. at Abstract), we agree
`with the Examiner that Shahoian's device is capable varying a coefficient of friction of a surface (see Ans. 32).
`
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`Here, the Examiner's appropriately finds that "one of ordinary skill in the art of haptic apparatuses reasonably
`would infer that an apparatus disclosed by a reference with identical components and structure as the presently
`claimed invention is capable of varying a coefficient of friction of a touch surface" (id.). Appellants do not
`point [*19] to any difference in structure between the claimed invention and Shahoian's device. Instead, Appellants
`merely direct our attention to low frequency vibrations that were never cited by the Examiner.
`
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`In addition, although Appellants contend that "the Office Action has not met its burden of establishing that a
`variance in the perceived coefficient of friction is inherent in Shahoian" (App. Br. 16) (emphasis added), we agree
`with the Examiner that "the system disclosed by Shahoian is a haptic system . . . and, thus, like the presently
`claimed 'haptic' system, must produce an output that is felt" (Ans. 25).
`
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`For at least these reasons, we are not persuaded the Examiner erred in finding Shahoian discloses the invention
`as recited in independent claim 1 and in commensurately recited independent claims 11 and 20, not separately
`argued. Therefore, the Examiner did not err in rejecting claims 1-11 and 13-23 under 35 U.S.C. § 102(b) for
`anticipation by Shahoian.
`
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`DECISION
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`Telit Wireless Solutions Inc. and Telit Communications PLC Exh. 1234 p.7
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`2016 Pat. App. LEXIS 1627
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`Page 8 of 8
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`We affirm the Examiner's § 102(b) rejection.
`
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`We pro forma affirm the Examiner's nonstatutory obviousness-type double patenting rejection of claim 1 over
` U.S. Patent 7,667,687 [*20] ; U.S. Patent 7,890,863; U.S. Patent 8,098,235; and each of the provisionally
`rejected co-pending Applications.
`
`
`We reverse the nonstatutory obviousness-type double patenting rejection of claim 1 over U.S. 8, 157, 650;
`U.S. 8,232, 969; and U.S. 8,264, 465.
`
`
`Since at least one rejection encompassing all claims on appeal is affirmed, the decision of the Examiner is
`affirmed. All claims on appeal are unpatenable.
`
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`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
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`End of Document
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`Telit Wireless Solutions Inc. and Telit Communications PLC Exh. 1234 p.8