Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 5/4/2026 have been fully considered but they are not persuasive.
Applicant contends:
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Examiner respectfully disagrees. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Yu teaches an electrotactile apparatus has an electrode-array unit and a driver unit for generating a haptic feedback to a user. The electrode-array unit uses electrodes to electro-stimulate the user's skin with pulsed voltage signals generated by the driver unit, inducing excitation currents flowing in the user to generate the haptic feedback. The driver unit is self-powered or wirelessly powered for supporting untethered electrotactile stimulation to the user. A common counter electrode installed on the driver unit contacts the user's skin and collects the excitation currents returned from the user. Advantageously, the common counter electrode is located on an outer surface of the driver unit and the driver unit is substantially flexible, facilitating the common counter electrode to seamlessly contact the user's skin for achieving a stable electrode-skin interface while positioning the driver unit as a whole on the user's skin to provide untethered virtual touching experience to the user.(abstract).
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Yu teaches a flexible simulator that is placed on the user’s skin that applies haptic feedback.(abstract, (fig. 2 (100)) [0014,0017, 0023,0027,0042-0050].
While Yu teaches placing the device on the skin, Yu fails to expressly teach placing the device on the lip.
Brusell states, [0016] In FIG. 1, an example of a device is shown for transferring keyboard commands from a user 100, intended to be carried by the user's head as a so-called "headset". The device comprises an arm 102 having a plurality of signal sensors 104 placed along the arm 102 in an area which in use is basically located in close proximity to the outside of the user's mouth cavity. The signal sensors 104 are preferably located in positions that can easily be reached by the user's tongue.
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Examiner notes placing the sensors in an area that can easily be reached by the user’s tongue [0016]. This area includes the lips.
Examiner contends it would have been well within the purview of one of ordinary skill in the art to modify the teachings of Yu to further include wherein the stimulator is mountable to a lip of the user as taught by Brusell in order to provide an alternative means of inputting [001-003] and for providing feedback, particularly for disabled individuals [004-008]
MPEP 2114 states,
II. MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE PRIOR ART
“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was “for mixing flowing developer material” and the body of the claim recited “means for mixing ..., said mixing means being stationary and completely submerged in the developer material.” The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.).
Applicant further contends:
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Examiner respectfully disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Yu teaches placing the device on the skin [0014—0017] and Brusell teaches placing the device in the area easily reached by the tongue [0016]. This is particularly important for individuals with a disability or their hands are busy “[0003] Typically, such keyboard commands are input, e.g., for writing or controlling computer programs and applications, by the user pressing keys or buttons with his/her fingers, which however in some situations is not possible or desirable. Hence, there is a need to enable keyboard commands without requiring the use of hands, e.g. for disabled persons or when both hands are busy with other activities such as when driving a car and when operating various machines and instruments. For example, a doctor, dentist or nurse may need to input data to a computer during examination or treatment of a patient requiring work with the hands.) [0003] Brusell.
Examiner believe Applicant is pointing to Brusell individually but the question is would it have been obvious to place the device of Yu on the lip in view of Brusell and examiner believes so for the reasons above for a whole class of people to have feedback/input when they can’t use their hands.
Applicant further contends:
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Examiner respectfully disagrees. The MPEP 2145 states, furthermore, “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). See also UCB, Inc. v. Actavis Labs, UT, Inc., 65 F.4th 679, 692, 2023 USPQ2d 448 (Fed. Cir. 2023) (“a reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit or otherwise discourage investigation into the invention claimed.”) (internal quotations omitted) (quoting DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)); and Schwendimann v. Neenah, Inc., 82 F.4th 1371, 1381, 2023 USPQ2d 1173 (Fed. Cir. 2023) (“Although Oez [the prior art] used a white pigment with a cross-linking polymer, it does not discourage a skilled artisan from using the white pigment without a cross-linking polymer or lead the skilled artisan in a direction divergent from the path taken in the Appealed Patents. Thus, Oez's disclosure is substantial evidence that supports the Board's finding that Oez does not teach away from the proposed combination.”).
If the prior art is structurally equivalent to the claim, placing on the lip is merely claim language where the apparatus is intended to be employed and does not differential the claimed apparatus from a prior art apparatus. Furthermore, Brussel does not actively discourage the device being placed on the lip or within the area of the tongue by showing different embodiments. Claim 20 merely states:
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With respect to Brussel teaching a rigid sensor test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). As noted above Yu teaches a flexible device (abstract, (fig. 2 (100)) [0014,0017, 0023,0027,0042-0050].
With respect to Claim 1,
Applicant contends:
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Examiner notes the argument were not persuasive but further arguments maybe persuasive and Examiner is open to an interview After Final.
Examiner notes, Khoshkava states, [0021] Referring now to FIGS. 1 and 2, a possible embodiment of a unitary haptic device 100 comprises first and second electrodes 102 and 104. A sensor element 106 is positioned between the first and second electrodes 102 and 104. A protective layer 110 is positioned over the first electrode 102 and provides a touch surface 112. As discussed in more detail herein, the first electrode 102, second electrode 104, and sensor element 106 cooperate to sense when a user or object touches the touch surface 112, or in some embodiment moves proximal to the touch surface 112. Also as discussed in more detail herein, the first electrode 102 operates as a haptic actuator to deliver a haptic effect using electrostatic force (ESF) or transcutaneous electrical stimulation (TES). Other embodiments, however, can include structure additional to, or even in place of, the first electrode 102 to operate as the haptic actuator.
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While the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Examiner’s understanding of Khoshkava provides wherein electrodes 102 and 104 are opposite (see fig. 2) and the second electrodes of Khoshkava “cooperate” to sense where a touch location is determined.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al 2023/0341937 hereinafter, Yu in view of in view of Brusell et al (2011/0032126) hereinafter, Brusell.
In regards to claim 20, Yu teaches a method, comprising: applying a flexible stimulator to a lip of a wearer; (fig. 6 115 skin side with supporting later 650[0027-0045));
An electrotactile apparatus has an electrode-array unit and a driver unit for generating a haptic feedback to a user. The electrode-array unit uses electrodes to electro-stimulate the user's skin with pulsed voltage signals generated by the driver unit, inducing excitation currents flowing in the user to generate the haptic feedback. The driver unit is self-powered or wirelessly powered for supporting untethered electrotactile stimulation to the user. A common counter electrode installed on the driver unit contacts the user's skin and collects the excitation currents returned from the user. Advantageously, the common counter electrode is located on an outer surface of the driver unit and the driver unit is substantially flexible, facilitating the common counter electrode to seamlessly contact the user's skin for achieving a stable electrode-skin interface while positioning the driver unit as a whole on the user's skin to provide untethered virtual touching experience to the user.(abstract).
and using a set of electrodes and a ground electrode of the flexible stimulator (fig. 2 (115)s), delivering a first electrohaptic stimulus to the lip [0047-0055].
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Yu fails to teach placing the simulator on a lip of the user. Examiner notes MPEP 2111 and the intended use of the placing of the device on the lips.
However, Brusell expressly teaches placing sensors on the lips (fig. 1 (104 and fig. 3 (304a)) [0023-0032].
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It would have been obvious to one of ordinary skill in the art to modify the teachings of Yu to further include wherein the stimulator is mountable to a lip of the user as taught by Brusell in order to provide an alternative means of inputting [001-003] and for providing feedback, particularly for disabled individuals [004-008]
Claim(s) 1-3,8-10, and 13-15 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al 2023/0341937 hereinafter, Yu in view of Khoshkava et al (2018/0181202) hereinafter, Khoshkava in view of Brusell et al (2011/0032126) hereinafter, Brusell.
In regards to claim 1, Yu teaches a system comprising a stimulator, wherein the stimulator comprises (abstract)
a flexible substrate ([0027] elastomer substrate layer (fig. 6 (650)) having a first surface and a second surface opposite the first surface (fig. 6 115 skin side with supporting later 650));
a first set of electrodes disposed on the first surface of the flexible substrate (fig. 6 (115 electrodes) placed on skin side);
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Yu fails to teach a ground electrode disposed on the first surface of the flexible substrate; and Examiner notes a ground is necessary for the haptic (fig. 5 (128)) Yu
a second set of electrodes disposed on the second surface of the flexible substrate, Examiner notes Yu is only concerned with haptic feedback and not touch input
However, Khoshkava teaches a ground electrode disposed on the first surface of the flexible substrate (fig. 5a (122))
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a second set of electrodes disposed on the second surface of the flexible substrate, (figs. 1-6 (102, 104, and 106))
A bi-functional apparatus for sensing touch and delivering a haptic signal. The bi-functional apparatus comprises first and second electrodes. The first electrode provides a haptic interface for delivering an electrostatic force and has a top surface and a bottom surface. A dielectric insulator covers the top surface of the first electrode. A sensor is positioned between the bottom surface of the first electrode and the second electrode. The sensor selectively provides electrical conductivity between the first and second electrodes in response to at least a threshold amount of pressure exerted against the dielectric insulator. A method of sensing touch and delivering a haptic signal with a single device. The method comprises receiving an input at a touch surface of a dielectric insulator layered over a first electrode; in response to receiving the input at the touch surface, increasing the electrical conductivity of a sensor positioned between the first electrode and a second electrode; in response to increasing electrical conductivity of the sensor, conducting an electrical current between the first and second electrodes; and in response to conducting an electrical current between the first and second electrodes, applying a haptic drive signal to the first electrode, the haptic drive signal creating an electrostatic force in the dielectric insulator.
It would have been obvious to one of ordinary skill in the art to modify the teachings of Yu to a ground electrode disposed on the first surface of the flexible substrate; and Examiner notes a ground is necessary for the haptic a second set of electrodes disposed on the second surface of the flexible substrate as taught by Khoshkava to provide bi-functional apparatus in a single device (abstract, [0004-005]).
Yu and Khoshkava fail to expressly teach wherein the stimulator is mountable to a lip.
However, Brusell teaches wherein the sensor is mountable to a lip (fig. 1-3 104,204, and 304a) Brusell) .
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It would have been obvious to one of ordinary skill in the art to modify the teachings of Yu and Khoshkava to further include wherein the stimulator is mountable to a lip as taught by Brusell in order to provide an alternative means of inputting [001-003] particularly for handicapped individuals [004-008].
Therefore, Yu and Khoshkava and Brusell
wherein the stimulator is mountable to a lip, wherein the first set of electrodes and ground electrode are operable to provide electrohaptic (fig. 6 (115)) Yu stimulation to the lip when the stimulator is mounted thereto [0023-0032] Brusell, and wherein the second set of electrodes are operable to detect a location [[0026-0036] Khoskava of contact between the lip and at least one of an opposite lip or a tongue when the stimulator is mounted to the lip (fig. 1-3 104,204, and 304a) Brusell) .
In regards to claim 14, Yu teaches a method, comprising: applying a flexible stimulator to a lip of a wearer; (fig. 6 115 skin side with supporting later 650[0027-0045));
using a first set of electrodes (fig. 6 (115 electrodes) placed on skin side); and a ground electrode of the stimulator, (fig. 5 (128)) Yu
delivering a first electrohaptic stimulus to the lip (fig. 6 (115 electrodes) fig. 4 (423)); and
Yu fails to teach using a second set of electrodes of the stimulator, detecting a location of contact between the lip and at least one of an opposite lip or a tongue of the wearer.
However, Khoshkava teaches using a second set of electrodes of the stimulator, detecting a location of contact (figs. 1-6 (102, 104, and 106))
It would have been obvious to one of ordinary skill in the art to modify the teachings of Yu to include using a second set of electrodes of the stimulator, detecting a location of contact as taught by Khoshkava to provide bi-functional apparatus in a single device (abstract, [0004-005]).
Yu and Khoshkava fail to expressly teach wherein the stimulator is mountable to a lip.
However, Brusell teaches wherein the stimulator is mountable to a lip. (fig. 1-3 104,204, and 304a) Brusell) .
It would have been obvious to one of ordinary skill in the art to modify the teachings of Yu and Khoshkava to further include wherein the stimulator is mountable to a lip as taught by Brusell in order to provide an alternative means of inputting [001-003] particularly for handicapped individuals.
Therefore, Yu and Khoshkava in view of Brusell teaches
detecting a location of contact between the lip and at least one of an opposite lip or a tongue of the wearer (fig. 1-3 104,204, and 304a) Brusell) .
In regards to claim 2, Yu in view of Khoshkava in view of Brusell teaches the system of claim 1, further comprising: a controller comprising one or more processors and configured to perform controller operations including: applying electrohaptic stimulation through a first electrode of the first set of electrodes, using the ground electrode as a return electrode; and using the second set of electrodes, detecting a location of contact between the lip and at least one of the opposite lip or the tongue.(fig. 5 (425) and 128) Yu and (fig. 5a controller) Khoskava and (fig. 1-3 104,204, and 304a) Brusell) .
In regards to claim 3, Yu in view of Khoshkava in view of Brusell teaches system of claim 2, wherein using the second set of electrodes to detect a location of contact between the lip and at least one of the opposite lip or the tongue comprises detecting the capacitance of two or more electrodes of the second set of electrodes [022, 0027] Khoskava (fig. 1-3 104,204, and 304a) Brusell) .
In regards to claim 8, Yu in view of Khoshkava in view of Brusell teaches system of claim 2, wherein the controller operations further comprise: applying electrohaptic stimulation through a second electrode of the first set of electrodes (fig. 2 (multiple 115s labeling half as first set and second half a second set) Yu, using the ground electrode as a return electrode (fig. 2 (120)) Yu, wherein the first electrode differs from the second electrode(fig. 2 (multiple 115s labeling half as first set and second half a second set) Yu.
In regards to claim 9, Yu in view of Khoshkava in view of Brusell teaches system of claim 1, wherein the second set of electrodes consists of four to nine electrodes ((fig. 2 (115s 4 electrodes) Yu.
In regards to claim 10, Yu in view of Khoshkava in view of Brusell teaches system of claim 1, further comprising an insulator layer disposed between the first set of electrodes and the ground and the lip when the stimulator is mounted to the lip, wherein the insulator layer has a plurality of holes formed there through such that each electrode of the first set of electrodes can provide electrohaptic stimulation to the lip when the stimulator is mounted to the lip.(fig. 6 (610) Yu in view of (fig. 1-3 104,204, and 304a) Brusell).
In regards to claim 13, Yu in view of Khoshkava in view of Brusell teaches system of claim 1, wherein each electrode of the first set of electrodes at least partially overlaps with a respective electrode of the second set of electrodes (fig. 2 102, 106 and 104 overlap) Khoshkava.
In regards to claim 15, Yu in view of Khoshkava in view of Brusell teaches method of claim 14, further comprising: using a first subset of the first set of electrodes to deliver a second electrohaptic stimulus to the lip; and using a second subset of the first set of electrodes to deliver a third electrohaptic stimulus to the lip, wherein the first subset and the second subset do not contain any of the first set of electrodes in common. (fig. 2 (multiple 115s labeling a second set) Yu.
Allowable Subject Matter
Claims 4-7, 11-12, and 16-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRANT SITTA whose telephone number is (571)270-1542. The examiner can normally be reached M-F 7:30-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patrick Edouard can be reached at 571-272-6084. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GRANT SITTA/Primary Examiner, Art Unit 2622
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