UNITED STA TES p A TENT AND TRADEMARK OFFICE
`
`UNITED STA TES 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.
`
`10/723,778
`
`11/26/2003
`
`Henry Dacosta
`
`IMM174
`
`4196
`
`34300
`7590
`03/06/2008
`PATENT DEPARTMENT (51851)
`KILPATRICK STOCKTON LLP
`1001 WEST FOURTH STREET
`WINSTON-SALEM, NC 27101
`
`EXAMINER
`
`LIANG, REGINA
`
`ART UNIT
`
`PAPER NUMBER
`
`2629
`
`MAILDATE
`
`DELIVERY MODE
`
`03/06/2008
`
`PAPER
`
`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.
`
`PTOL-90A (Rev. 04/07)
`
`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2003
`Page 1 of 104
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`

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`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`10/723,778
`
`Examiner
`
`DA COST A ET AL.
`
`Art Unit
`
`2629
`Regina Liang
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`Period for Reply
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ;l_ MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1 )IZI Responsive to communication(s) filed on 16 January 2008.
`2a)0 This action is FINAL.
`2b)[8J This action is non-final.
`3)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4)[8J Claim(s) 1-13.16-23 and 26-32 is/are pending in the application.
`4a) Of the above claim(s) __
`is/are withdrawn from consideration.
`5)0 Claim(s) __
`is/are allowed.
`6)[8J Claim(s) 1-13. 16-23. 26-32 is/are rejected.
`7)0 Claim(s) __
`is/are objected to.
`8)0 Claim(s) __
`are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)0 The specification is objected to by the Examiner.
`10)0 The drawing(s) filed on __
`is/are: a)O accepted or b)O objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`11 )0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PT0-152.
`
`Priority under 35 U.S.C. § 119
`
`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)O All b)O Some* c)O None of:
`1.0 Certified copies of the priority documents have been received.
`.
`2.0 Certified copies of the priority documents have been received in Application No. __
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17 .2(a)).
`*Seethe attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`1) [8J Notice of References Cited (PTO-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) 0 Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date __
`.
`
`4) 0 Interview Summary (PTO-413)
`Paper No(s)/Mail Date. __
`.
`5) 0 Notice of Informal Patent Application
`6) 0 Other: __
`.
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20080226
`
`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2003
`Page 2 of 104
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`Application/Control Number: 10/723,778
`Art Unit: 2629
`
`Page2
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`DETAILED ACTION
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`Continued Examination Under 37 CFR 1.114
`
`1.
`
`A request for continued examination under 3 7 CFR 1.114, including the fee set forth in
`
`3 7 CFR 1.17 ( e ), was filed in this application after final rejection. Since this application is
`
`eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e)
`
`has been timely paid, the finality of the previous Office action has been withdrawn pursuant to
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`37 CFR 1.114. Applicant's submission filed on 1/16/08 has been entered. Claims 1-13, 16-23,
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`26-32 are pending in the application.
`
`2.
`
`The text of those sections of Title 35, U.S. Code not included in this action can be found
`
`in a prior Office action.
`
`Claim Rejections- 35 USC§ 112
`
`3.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the manner and process of making
`and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it
`pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode
`contemplated by the inventor of carrying out his invention.
`
`4.
`
`Claims 6 and 20 are rejected under 35 U.S.C. 112, first paragraph, as failing to comply
`
`with the written description requirement. The claim(s) contains subject matter which was not
`
`described in the specification in such a way as to reasonably convey to one skilled in the relevant
`
`art that the inventor(s ), at the time the application was filed, had possession of the claimed
`
`invention.
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`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2003
`Page 3 of 104
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`Application/Control Number: 10/723,778
`Art Unit: 2629
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`Page 3
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`Fig. 3 and section [0050] of the specification discloses "If the speed is less than the speed
`
`threshold, the change in pseudo pressure is compared to a threshold value 322. If the change in
`
`pseudo pressure is less than or equal to the threshold, the processor (106) returns to step 302 in
`
`the process. If the change in pseudo pressure is greater than the threshold, the processor (106)
`
`determines whether the first interval has elapsed 324, if so, the processor (106) concludes that
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`the user is pressing 326 and the processor (106) returns to step 302 in the process". In step 322,
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`the specification discloses the change in pseudo pressure is compared to a threshold value.
`
`Although the specification discloses in steps 302 and 306 of Fig. 3, comparing the pressure
`
`signal to an upper threshold and to a lower threshold, respectively, the specification does not
`
`disclose in step 322 that the change in pseudo pressure is compared to a first pressure threshold
`
`value and a second pressure threshold value, and outputting the signal if the pressure signal is
`
`greater than both first pressure threshold value and the second pressure threshold value.
`
`Therefore, the specification does not provide support for "comparing to a second pressure
`
`threshold value, and outputting the signal if the pressure signal is greater than both first pressure
`
`threshold value and the second pressure threshold value" as claimed in claims 6 and 20
`
`Claim Rejections- 35 USC§ 101
`
`5.
`
`35 U.S.C. 101 reads as follows:
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or
`any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and
`requirements of this title.
`
`6.
`
`Claims 19-23, 26-28, 30, 32 are rejected under 35 U.S.C. 101 because the claimed
`
`invention is directed to non-statutory subject matter. Claims 19-23, 26-28, 30, 32 are rejected
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`under 35 U.S.C. 101 as being non-statutory because claims although claim a computer-readable
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`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2003
`Page 4 of 104
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`Application/Control Number: 10/723,778
`Art Unit: 2629
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`Page4
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`medium on which is encoded programming code, however, page 8, [0024] of the specification
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`discloses "Embodiments of computer-readable media include, but are not limited to, an
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`electronic, optical, magnetic, or other storage or transmission device capable of providing a
`
`processor, .... Also, various other forms of commuter-readable media may transmit or carry
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`instructions to a computer, including a router, private or public network, or other transmission
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`device or channel, both wired and wireless", in light of the definition in the specification, the
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`medium as claimed is that of a signal. As set forth in the Interim Guidelines, page 55, "A claimed
`
`signal has no physical structure, does not itself perform any useful, concrete and tangible result
`
`and, thus, does not fit within the definition of a machine". Therefore, claims 19-23, 26-28, 30, 32
`
`are nothing but a signal and signal is non-statutory.
`
`Claim Rejections - 35 USC§ 103
`
`7.
`
`Claims 1-3, 5-13, 16, 17, 19-23, 26, 27, 29-32 are rejected under 35 U.S.C. 103(a) as
`
`being unpatentable over Gillespie et al (US 5,880,411 hereinafter Gillespie) in view of Astala et
`
`al (US 6,590,568 hereinafter Astala).
`
`As to claims 1, 19, Gillespie discloses a method comprising: receiving a pressure signal
`
`( e.g. Z-value, Fig. 1) indicating a pressure from an input device ( e.g. finger); determining a
`
`change in pressure based at least in part on the pressure signal (col. 23, lines 25-32, col. 24, lines
`
`44-60 for example); determining a velocity associated with the pressure signal; and outputting a
`
`press signal if the velocity is less than the velocity threshold ( col. 36, lines 26-4 7, which states"
`
`There are several ways to distinguish between a true drag and a press. A true drag can be
`
`identified if the finger's speed of motion prior to lift-off is above a small threshold. A press
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`Application/Control Number: 10/723,778
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`Page 5
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`can be identified if the finger was stationary through the entire gesture, possibly ignoring small,
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`inconsequential movements"; in other words, a press can be identified if the finger's speed of
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`motion prior to lift-off is below a small threshold), and the change in pressure is greater than a
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`change in pressure threshold (col. 35, lines 28-30, and col. 49, lines 8-112 for example).
`
`Gillespie does not disclose outputting a press signal if a first interval has elapsed.
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`However, Astala is cited to teach outputting a press signal if the value of pressure of touch input
`
`is greater than a pressure threshold and a first interval has elapsed (col. 9, lines 24-35). Thus, it
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`would have been obvious to one having ordinary skill in the art at the time the invention was
`
`made to modify Gillespie to output the press signal if a first interval has elapsed as taught by
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`Astala so as to "provide a touch screen technique for an electronic device in which the location
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`and the time duration of an object, such as a finger or stylus or other pointed object, contacting or
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`pressing a detection point on the touch screen, are detected" (col. 2, lines 21-23 of Astala) and to
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`eliminate unintentional contact.
`
`As to claims 31, 32, Gillespie discloses comparing the pressure signal to an adaptive
`
`pressure threshold value, and outputting the press signal if the pressure signal is greater than the
`
`adaptive pressure threshold value (302, 320 in Fig. 17 A).
`
`As to claim 2, Gillespie also discloses an adaptive pressure threshold value (col. 23, lines
`
`29-32), wherein the adaptive pressure threshold value (Zrn) is associated with an absolute
`
`pressure threshold.
`
`As to claim 3, Gillespie discloses adaptive pressure threshold value is associated with a
`
`position received from the input device ( e.g. the Z-values is derived from the position signals X
`
`and Y).
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`Application/Control Number: 10/723,778
`Art Unit: 2629
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`Page 6
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`As to claim 5, Gillespie discloses the adaptive pressure threshold value is associated with
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`a user identifier (col. 23, lines 31-32).
`
`As to claims 6, 20, Fig. 9 of Gillespie discloses the adaptive pressure threshold value
`
`comprises a first pressure threshold value, and further comprising: comparing the pressure signal
`
`to a second pressure threshold value; and outputting the signal if the pressure signal is greater
`
`than both the first pressure threshold value and the second pressure threshold value.
`
`As to claims 16 and 20, Gillespie discloses a first pressure signal and a second pressure
`
`signal, calculating a different signal indicative of a difference between the first and second
`
`pressure signal, comparing the difference signal to a difference threshold value and outputting
`
`the press signal if the difference signal is greater than the difference threshold value ( col. 24,
`
`lines 20-60).
`
`As to claim 7, Gillespie discloses the pressure signal comprises a pseudo pressure signal
`
`( e.g. the pressure value is varied in accordance with the capacitance value).
`
`As to claim 8, Gillespie discloses supplying a pressure filter (48-1...48-n, Fig. 3) to the
`
`pressure signal to create a filtered pressure signal.
`
`As to claims 9-11, 17, 21-22, 27, Gillespie discloses the pressure filter comprises a first
`
`pressure filter comprising a first attribute (e.g. high frequency, col. 13, lines 34-44), and further
`
`comprising applying a second pressure filter to the pressure signal, the second pressure filter
`
`comprising a second attribute (e.g. low frequency, col. 15, line 55) that is different than the first
`
`attribute.
`
`As to claims 12, 23, Gillespie discloses applying the pressure filter comprises applying
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`Application/Control Number: 10/723,778
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`Page 7
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`the pressure filter utilizing a sliding window (col. 28, lines 47-58).
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`As to claim 13, Gillespie discloses the input device comprises a touch pad (10, Fig. 1).
`
`As to claims 29, 30, Gillespie discloses determining a rate of change of pseudo-pressure
`
`associated with the pressure signal (determining the Z value applied by the user), comparing the
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`rate of change of pseudo-pressure with a threshold (302, 320 in Fig. 17 A) and outputting a
`
`pressing signal if the rate of change of pseudo-pressure is greater than the pseudo-threshold (Fig.
`
`17A).
`
`8.
`
`Claim 4 is rejected under 35 U.S.C. 103(a) as being unpatentable over Gillespie and
`
`Astala as applied to claim 31, and further in view Geaghan et al (US 2003/0063073 hereinafter
`
`Geaghan).
`
`As to claim 4, Gillespie as modified by Astala does not disclose the adaptive pressure
`
`threshold value can vary over time. However, Geaghan teaches the thresholds can be adjusted
`
`over time (lines 16-20 in [0040]). Thus, it would have been obvious to one having ordinary skill
`
`in the art at the time the invention was made to modify Gillespie as modified by Astala to adjust
`
`the adaptive pressure threshold value over time as taught by Geaghan to distinguish valid touch
`
`inputs on a continuously updated basis.
`
`9.
`
`Claims 18 and 28 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Gillespie and Astala as applied to claims 1 and 19, and further in view of Fujita et al. (US Patent
`
`No. 6,118,435).
`
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`Application/Control Number: 10/723,778
`Art Unit: 2629
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`Page 8
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`As to claims 18 and 28, it is noted that Gillespie as modified by Astala does not
`
`specifically disclose outputting a signal associated with a haptic effect, the haptic effect based at
`
`least in part on the pressure signal. Fujita is cited to teach a touch panel device similar to
`
`Gillespie. Fujita further discloses a signal associated with a haptic effect, the haptic effect based
`
`at least in part on the pressure signal (see abstract and Fig. 2). It would have been obvious to one
`
`of ordinary skill in the art to have modified Gillespie as modified by Astala with the tactile force
`
`feedback as taught by Fujita so as to provide an interaction between the user and the computer.
`
`Response to Arguments
`
`10. Applicant's arguments with respect to claims 1-13, 16-23, 26-32 have been considered
`
`but are moot in view of the new ground(s) ofrejection.
`
`Applicant's remarks regarding the 101 rejection of claims 19-23, 28, 30, 32 are not
`
`persuasive. The "router, private or public network, or other transmission device or channel, both
`
`wired and wireless" are nothing more than propagation media that transmit or carry instructions,
`
`and it is the signal within these media that is actually carrying the signal. As such the claimed
`
`media is nothing but a signal which is not-statutory. As set forth in the Interim Guidelines, page
`
`55, "A claimed signal has no physical structure, does not itself perform any useful, concrete and
`
`tangible result and, thus, does not fit within the definition of a machine". "A signal, a form of
`
`energy, does not fall within either of the two definitions of manufacture. Thus, a signal does not
`
`fall within one of the four statutory classes of§ 101." Page 57 of the Interim Guidelines.
`
`Furthermore, it has been decided by the CAFC in In re Nuijten that signals are not statutory.
`
`Therefore claims 19-23, 28, 30, 32 are not statutory.
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`Valve Corp. v. Immersion Corp.
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`Immersion Exhibit 2003
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`Application/Control Number: 10/723,778
`Art Unit: 2629
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`Page 9
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`Applicant's remarks regarding Gillespie are not persuasive, see the rejections above.
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`Conclusion
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`11.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Regina Liang whose telephone number is (571) 272-7693. The
`
`examiner can normally be reached on Monday-Friday from 8AM to 5:00PM.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Richard Hjerpe, can be reached on (571) 272-7691. The fax phone number for the
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`organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`/Regina Liang/
`Primary Examiner, Art Unit 2629
`
`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2003
`Page 10 of 104
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`Attorney Docket IMMl 74
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of
`Application No.
`
`For
`
`Filed
`
`Examiner
`
`Art Unit
`
`Henry DaCosta et al
`
`10/723,778
`Systems and Methods for Adaptive Interpretation of Input
`from a Touch-Sensitive Input Device
`November 26, 2003
`Regina Liang
`
`2629
`
`Mail Stop Amendment
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`AMENDMENT AND RESPONSE TO NON-FINAL OFFICE ACTION
`
`Sir:
`
`The following Amendment and Remarks are submitted in response to the Office
`Action mailed March 6, 2008.
`
`Amendments to the Specification begin on page 2 of this paper.
`Remarks begin on page 3 of this paper.
`
`US2000 10919707.1
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`IPR2024-00556
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`Page 11 of 104
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`

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`Serial No. 10/723,778
`Attorney Docket IMMl 74
`
`REMARKS
`
`This paper is filed in response to the Office Action mailed March 6, 2008.
`Claims 1-13, 16-23, and 26-32 are pending in this application. Claims 6 and 20
`are rejected under 35 U.S.C. § 112, ,r 1 for allegedly failing to comply with the written
`description requirement. Claims 19-23, 26-28, 30, and 32 are rejected under 35 U.S.C. §
`101 for allegedly being directed to non-statutory subject matter. Claims 1-3, 5-13, 16,
`17, 19-23, 26, 27, and 29-32 are rejected under 35 U.S.C. § 103(a) as allegedly being
`unpatentable over U.S. 5,880,411 to Gillespie et al ("Gillespie") in view of U.S. Patent
`No. 6,590,568 to Astala et al ("Astala"). Claim 4 is rejected under 35 U.S.C. § 103(a) as
`allegedly being unpatentable over Gillespie in view of Astala and further in view of U.S.
`Patent Publication No. 2003/0063073 to Geaghan et al ("Geaghan"). Claims 18 and 28
`are rejected under 35 U.S.C. § 103(a) as allegedly being unpatentable over Gillespie in
`view of Astala and further in view of U.S. Patent No. 6,118,435 to Fujita et al ("Fujita").
`Applicant has amended the specification. No new matter is added by this
`amendment, and support may be found in the specification and claims as originally filed.
`Applicant traverses each of the Examiner's rejections and respectfully requests
`reconsideration and allowance of all claims in light of the remarks below.
`As a preliminary matter, the Applicant notes that the Examiner appears to use the
`terms "pressure" and "change in pressure" interchangeably in the various rejections of the
`claims. This is incorrect because the two terms refer to different characteristics or values.
`As such, the use of one term should not be construed by the Examiner as a use of the
`other.
`
`I. § 112, ,:r 1 - Claims 6 and 20
`
`Claims 6 and 20 were rejected under 35 U.S.C. § 112, ,r 1 as failing to comply
`with the written description requirement.
`To satisfy the written description requirement of35 U.S.C. § 112, ,r 1, the
`applicant must describe the claimed invention with all of its limitations. See M.P.E.P. §
`2163(1).
`In the Office Action, the Examiner states that
`
`uszooo 10919707.1
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`3 of9
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`Page 12 of 104
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`Serial No. 10/723,778
`Attorney Docket IMMl 74
`The specification does not disclose in step 322 that the change in pseudo
`pressure is compared to a first pressure threshold value and a second
`pressure threshold value, and outputting the signal if the pressure signal is
`greater than both first pressure threshold value and the second pressure
`threshold value. See Office Action, p. 3.
`However, regardless of whether the Examiner's statement is true, the specification
`does provide written description for comparing a pressure value against two threshold
`values as recited in claims 6 and 20. For example, paragraph 41 recites that "[i]n the
`embodiment shown in FIG. 2, the processor (106) compares the pseudo pressure against
`both lower and upper thresholds to determine whether the finger is touching." Further, in
`paragraph 46, the specification recites "[i]n the embodiment shown in FIG. 3, a processor
`(106) executing program code first compares the pseudo pressure to an upper threshold
`value 302. If the pseudo pressure exceeds the upper threshold value, the process
`continues at step 314. If not, the processor (106) determines whether the user was
`previously touching, for example by checking the value of a stored flag 304. If so, the
`processor (106) compares the pseudo pressure to a lower threshold value 306." As such,
`with regards to both of figures 2 and 3, the specification describes comparing a pressure
`value to a first and second threshold value.
`Further, Applicant would like to note that in the rejection, the Examiner stated
`that "the change in pseudo pressure is compared to a first pressure threshold value and a
`second pressure threshold value." This is not accurate based on the claim language. The
`claim language of claims 6 and 20 recites that a "pressure signal," not a "change in
`pressure," is compared against first and second thresholds.
`In view of the foregoing, Applicant respectfully requests the Examiner withdraw
`the rejections of claims 6 and 20.
`
`II. § 101 - Claims 19-23, 26-28, 30, and 32
`
`Applicant respectfully traverses the Examiner's rejection of claims 19-23, 26-28,
`30, and 32 under 35 U.S.C. § 101 as being directed towards non-patentable subject
`matter. The Examiner asserts that Applicant's definition of a computer-readable medium
`includes a signal per se, which were adjudged non-patentable subject matter in In re
`
`US2000 10919707.1
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`4 of9
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`Serial No. 10/723,778
`Attorney Docket IMM 17 4
`
`. Applicant expressly states that, for the purposes of this application, the term
`Nuijten 1
`computer-readable medium does not include a signal per se. However, to expedite
`prosecution, Applicant has cancelled the portion of the specification that the Examiner
`alleges recites a signal per se. Applicant respectfully requests the Examiner withdraw the
`rejection of claims 19-23, 26-28, 30, and 32.
`
`III. § 103(a)-GillespieinviewofAstala-Claims
`and 29-32
`
`1-3,5-13, 16, 17, 19-23,26,27,
`
`Applicant respectfully traverses the rejection of claims 1-3, 5-13, 16, 17, 19-23,
`26, 27, and 29-32 under 35 U.S.C. § 103(a) as being unpatentable over Gillespie in view
`of Astala.
`To sustain a rejection under 35 U.S.C. § 103(a), the combined references must
`teach or suggest each and every element of the claimed invention. See M.P .E.P. §
`2143.03.
`Because Gillespie in view of Astala does not teach or suggest "outputting a press
`signal if the velocity is less than a velocity threshold, the change in pressure is greater
`than a change in pressure threshold, and a first interval has elapsed" as recited in claim 1,
`claim 1 is patentable over the combined references. The Examiner has cited to column
`35 lines 28-30 and column 49, lines 8-12 to support the assertion that Gillespie teaches
`comparing a change in pressure to a threshold. However, these two portions of Gillespie
`relate a a pressure value, not a change in pressure value:
`
`Finally, the Z signal exceeds threshold Ztap for at least some part ofthes
`stroke. Thus the stroke qualifies as a tap. Gillespie, Col. 35, lines 28-30.
`
`FIG. 19 is a timing diagram illustrating a "push" gesture. To perform this
`gesture, the finger is first brought near enough to cause cursor motion
`without causing a virtual button press. Next, the finger pressure increases
`past threshold ZpushDown, causing the virtual button to be pressed.
`Gillespie, Col. 49, lines 8-12.
`
`Each of these passages describes comparing a "pressure" with a threshold, not a
`"change in pressure" with a "change in pressure" threshold. As such, Gillespie does not
`
`1 500 F.3d 1346 (Fed. Cir. 2007).
`
`US2000 10919707.1
`
`5 of9
`
`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2003
`Page 14 of 104
`
`

`

`Serial No. 10/723,778
`Attorney Docket IMMl 74
`
`teach or suggest "outputting a press signal if the velocity is less than a velocity threshold,
`the change in pressure is greater than a change in pressure threshold, and a first interval
`has elapsed." Astala does not cure this deficiency. Astala teaches a method for dragging
`a virtual object across a touch screen by dragging a finger across the touch screen. The
`portion cited by the Examiner does not relate to detecting a press event. Instead it relates
`to the detection of the drag gesture. The detection of a press is dealt with summarily:
`
`The process begins at step 700. At step 702, a touch screen input is
`detected. That is, the touch of an object, such as a finger or pointed stylus,
`on the touch screen 70 is detected. This is illustrated in FIG. 6b by touch
`input 732 being disposed over the object file 1 of window 728. Astala,
`Col. 9, lines 15-19.
`
`Thus, neither Astala, nor Gillespie in view of Astala, teach or suggest "outputting
`a press signal if the velocity is less than a velocity threshold, the change in pressure is
`greater than a change in pressure threshold, and a first interval has elapsed" as recited in
`claim 1. As such, claim 1 is patentable over Gillespie in view of Astala. Applicant
`respectfully requests the Examiner withdraw the rejection of claim 1.
`Similar to claim 1, claim 19 recites "program code for outputting a press signal if
`the velocity is less than the velocity threshold, the change in pressure is greater than a
`change in pressure threshold, and a first interval has elapsed." Claim 19 is patentable
`over Gillespie in view of Astala for at least the same reasons as claim 1. Applicant
`respectfully requests the Examiner withdraw the rejection of claim 1.
`Because claims 2-3, 5-13, 16, 17, 20-23, 26, 27, and 29-32 each depend from and
`further limit either claim 1 or claim 19, claims 2-3, 5-13, 16, 17, 20-23, 26, 27, and 29-32
`are each patentable over Gillespie in view of Astala for at least the same reasons.
`Applicant respectfully requests the Examiner withdraw the rejection of claims 2-3, 5-13,
`16, 17, 20-23, 26, 27, and 29-32.
`
`IV. § 103(a)- Gillespie in view of Astala and Geaghan- Claim 4
`
`Applicant respectfully traverses the rejection of claim 4 under 35 U.S.C. § 103(a)
`as being unpatentable over Gillespie in view of Astala and further in view of Geaghan.
`
`US2000 10919707.1
`
`6 of9
`
`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2003
`Page 15 of 104
`
`

`

`Serial No. 10/723,778
`Attorney Docket IMMl 74
`
`To sustain a rejection under 35 U.S.C. § 103(a), the combined references must
`teach or suggest each and every element of the claimed invention. See M.P .E.P. §
`2143.03.
`Because Gillespie in view of Astala and further in view of Geaghan does not
`teach or suggest "outputting a press signal if the velocity is less than a velocity threshold,
`the change in pressure is greater than a change in pressure threshold, and a first interval
`has elapsed" as recited in claim 1, :from which claim 4 depends, claim 4 is patentable over
`the combined references. As discussed above, Gillespie in view of Astala does not teach
`or suggest "outputting a press signal if the velocity is less than a velocity threshold, the
`change in pressure is greater than a change in pressure threshold, and a first interval has
`elapsed." Geaghan does not cure this deficiency. Geaghan teaches that a change in
`pressure should be less than a threshold to detect a valid press event, not that a change in
`pressure should be greater than a threshold as recited in claim 1. Geaghan, Figure 1.
`Further, Geaghan states that if the rate of change of pressure is greater than a threshold, it
`"can indicate a double touch or an unstable touch. If the touch is stable and the rate of
`change is less than a threshold, a position can be reported." Geaghan, Paragraph 50. As
`such, Geaghan teaches that a change in pressure greater than a threshold is undesirable
`when detecting a touch, contrary to elements recited in claim 4. Thus, claim 4 is
`patentable over the combined references. Applicant respectfully requests the Examiner
`withdraw the rejection of claim 4.
`
`V. § 103(a)- Gillespie in view of Astala and Fujita- Claims 18 and 28
`
`Applicant respectfully traverses the rejection of claims 18 and 28 under 35 U.S.C.
`§ 103(a) as being unpatentable over Gillespie in view of Astala and further in view of
`Fujita.
`
`To sustain a rejection under 35 U.S.C. § 103(a), the combined references must
`teach or suggest each and every element of the claimed invention. See M.P .E.P. §
`2143.03.
`Because Gillespie in view of Astala and further in view of Fujita does not teach or
`suggest "outputting a press signal if the velocity is less than a velocity threshold, the
`change in pressure is greater than a change in pressure threshold, and a first interval has
`
`uszooo 10919707.1
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`7 of9
`
`Valve Corp. v. Immersion Corp.
`IPR2024-00556
`Immersion Exhibit 2003
`Page 16 of 104
`
`

`

`Serial No. 10/723,778
`Attorney Docket IMMl 74
`elapsed" as recited in claim 1, from which claim 18 depends, claim 18 is patentable over
`the combined references. As discussed above, Gillespie in view of Astala does not teach
`or suggest "outputting a press signal if the velocity is less than a velocity threshold, the
`change in pressure is greater than a change in pressure threshold, and a first interval has
`elapsed.