ECHOSTAR TECHNOLOGIES L.L.C.

Patent Trials and Appeals Board

Mar 28, 2022

2021001667 (P.T.A.B. Mar. 28, 2022)

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. 14/967,562 12/14/2015 Adam Schafer P2012-09-10.2 9401-04917 1599 70560 7590 03/28/2022 KW LAW LLP (Dish Technologies L.L.C.) 6122 N 7th St Suite D Phoenix, AZ 85014 EXAMINER SANDERS, JUSTIN B ART UNIT PAPER NUMBER 2422 NOTIFICATION DATE DELIVERY MODE 03/28/2022 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): dish@kwlaw.co ipdept@dish.com uspto@dockettrak.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ADAM SCHAFER, JEREMY MICKELSEN, CHRISTOPHER BURNS, and RASHMI HEDGE ____________ Appeal 2021-001667 Application 14/967,562 Technology Center 2400 ____________ Before JOHN A. JEFFERY, CATHERINE SHIANG, and CARL L. SILVERMAN, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-16, which are all the claims pending and rejected in the application. Appeal Br. 12. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Dish Technologies L.L.C. as the real party in interest. Appeal Br. 1. Appeal 2021-001667 Application 14/967,562 2 STATEMENT OF THE CASE Introduction The invention relates to “identification of a user of a television receiver based on acceleration of a remote control.” Spec. ¶ 2. In particular, [a] method includes detecting acceleration of a user manipulated component, comparing the detected acceleration with user acceleration that is associated with a user of the electronic device, identifying the user of the electronic device based on the comparison of the detected acceleration and the user acceleration, and operating the electronic device based on the identified user of the electronic device. Abstr. Independent claim 1 is exemplary: 1. A method of identifying a user of an electronic device, the method comprising: detecting an acceleration noise pattern of a user manipulated component, wherein detecting the acceleration noise pattern of the user manipulated component further comprises detecting acceleration with an accelerometer and a gyroscope while the user manipulated component is at rest in a hand of a user of the electronic device; comparing the detected acceleration noise pattern with user acceleration that is associated with the user of the electronic device, wherein comparing includes comparing time domain data of the detected acceleration noise pattern with time domain data of the user acceleration; identifying the user of the electronic device based on the comparison of the detected acceleration noise pattern and the user acceleration; and operating the electronic device based on the identified user of the electronic device. Appeal Br. 13 (Claims Appendix). Appeal 2021-001667 Application 14/967,562 3 References and Rejections2 Claims Rejected 35 U.S.C. § References 1, 2, 4 103 Turgeman ’030 (US 2015/0094030 A1, Apr. 2, 2015), Kryze (US 2012/0162073 A1, June 28, 2012). 3, 5, 6, 8- 16 103 Turgeman ’030, Kryze, Liberty (US 2005/0243061 A1, Nov. 3, 2005). 7 103 Turgeman ’030, Kryze, Czompo (US 2010/0305899 A1, Dec. 2, 2010). ANALYSIS We have reviewed the Examiner’s rejection in light of Appellant’s contentions and the evidence of record. We concur with Appellant’s contention that the Examiner has not shown the cited Turgeman ’030 portions qualify as prior art. See Appeal Br. 8-10. I Turgeman ’030 Itself Does not Constitute Prior Art Appellant argues, and we agree, Turgeman ’030 (the primary reference cited by the Examiner) itself does not qualify as prior art: the present application is a continuation of 13/797,341, filed March 12, 2013. Application 13/797,341 itself claims priority to US Provisional Application 61/746,706, filed December 28, 2 Throughout this opinion, we refer to the (1) Final Office Action dated December 31, 2019 (“Final Act.”); (2) Appeal Brief dated July 14, 2020 (“Appeal Br.”); and (3) Examiner’s Answer dated October 26, 2020 (“Ans.”). Appeal 2021-001667 Application 14/967,562 4 2012.3 The present application claims priority to applications 13/797,341 and 61/746,706 in the ADS and Specification. . . . Turgeman ’030 was filed December 11, 2014, and therefore does not qualify as a 102(e) reference without reliance on a parent application. Appeal Br. 8. The Examiner’s Reliance on Turgeman ’030 The Examiner cites Turgeman ’030 as the primary reference for rejecting claim 1 and finds the Abstract, paragraphs 35 and 36, and Figure 5 of Turgeman ’030 teach many limitations of claim 1: Turgeman discloses a method of identifying a user of an electronic device, the method comprising: detecting an acceleration noise pattern of a user manipulated component (see abstract, generating a current value of a user-specific trait. . .relating to measured acceleration data, which will later be compared to a reference value through correlation, see also [0035]); comparing the detected acceleration noise pattern with user acceleration that is associated with the user of the electronic device; identifying the user of the electronic device based on the comparison of the detected acceleration noise pattern and the user acceleration (same as above, e.g., see abstract and [0035- 0036], see also Fig. 5); and operating the electronic device based on the identified user of the electronic device (same as above, see [0035-0036], see also Fig. 5). Final Act. 2-3. The Examiner acknowledges that Appellant previously argued “Turgeman ’030 does not have a valid 102(e) date” and thus does not qualify 3 Ultimately, it is up to Appellant to prove the claims of this invention are entitled to the priority date of the provisional application (December 28, 2012). Appeal 2021-001667 Application 14/967,562 5 as prior art by itself. Final Act. 9 (citing Appellant’s response). The Examiner responds: The argument does not address the provisional application 61/417479, which provides a valid prior art date, while not all the features found in the latest publication of ’030 are present in the provisional application, all those cited are, with the notable exception of a gyroscope, which Kryze was introduced to teach. Final Act. 9. In the Appeal Brief, Appellant continues to argue the cited Turgeman ’030 portions do not qualify as prior art: The FOA states that Turgeman[’s provisional application] provides a valid prior art date. FOA at p. 9, line 8. In fact, Turgeman[’s provisional application] does not include disclosure corresponding to the portions the rejection relies on. For example, the rejection cites paragraph [0035] of Turgeman ’030 to support the rejection. Turgeman[’s provisional application], however, includes no disclosure similar to that of [0035] of Turgeman ’030. For example, [0035] of Turgeman ’030 discusses “mobile or portable electronic devices.” Turgeman ’030 at [0035]. Turgeman[’s provisional application], however, discusses only “interfaces and accessories associated with the user’s computer terminal such as keyboard, mouse, camera, microphone, etc.” Turegeman[’s provisional application] at p. 8, lines 5-6. In fact, the terms “mobile” and “portable” do not even appear in Turgeman[’s provisional application]. Appeal Br. 9-10 (underlining omitted). In the Answer, the Examiner “agreed that Turgeman ’030 . . . does not qualify as prior art for the limitation relating to an accelerometer, as the relevant provisional (US 61/417479), only mentions a mouse.” Ans. 13. However, the Examiner does not respond to Appellant’s persistent argument that the remaining Turgeman ’030 portions cited by the Examiner also do not qualify as prior art. Instead, the Examiner continues to rely on the Appeal 2021-001667 Application 14/967,562 6 priority date of Turgeman’s provisional application, but does not show the cited Turgeman ’030 portions are indeed entitled to the priority date of Turgeman’s provisional application. According to the Federal Circuit, “because the PTO does not examine priority claims unless necessary, the Board [or the PTO] has no basis to presume that a reference patent is necessarily entitled to the filing date of its provisional application.”4 Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015). As a result, there is “no basis to presume that [Turgeman ’030] is necessarily entitled to the filing date of its provisional application.” Id. Further, while Dynamic Drinkware focuses on qualifying a patent reference as prior art in an inter partes review (Dynamic Drinkware, 800 F.3d at 1378-80), it is instructive to our situation. By drawing an analogy to the Petitioner’s situation in Dynamic Drinkware, we determine that in this case, the Examiner has the burden to prove the cited Turgeman ’030 portions are entitled to the priority date of Turgeman’s provisional application. See Dynamic Drinkware, 800 F.3d at 1378-80. However, as discussed above, the Examiner has not shown the cited Turgeman ’030 portions are disclosed in Turgeman’s provisional application. Indeed, the Abstracts of Turgeman ’030 and Turgeman’s provisional application are substantially different. See Abstracts of Turgeman ’030, Turgeman’s provisional application. Similarly, it is unclear why Turgeman’s provisional application discloses paragraphs 4 Although Dynamic Drinkware focuses on a pre-AIA patent reference (Dynamic Drinkware, 800 F.3d at 1378-80), we determine the statement is also applicable to an AIA patent reference. Appeal 2021-001667 Application 14/967,562 7 35 and 36 and Figure 5 of Turgeman ’030, as the provisional application does not include paragraph numbers or Figure 5. Therefore, the Examiner has not shown the cited Turgeman ’030 portions qualify as prior art via the priority date of Turgeman’s provisional application. II Turgeman ’030 is a [c]ontinuation of application No. 13/922,271, filed on Jun. 20, 2013, now Pat. No. 8,938,787, which is a continuation-in-part of application No. 13/877,676, filed on Apr. 4, 2013, filed as application No. PCT/IL2011/000907 on Nov. 29, 2011. Turgeman ’030, Related U.S. Application Data (emphasis added). Turgeman’s PCT/IL2011/000907 was filed on Nov. 29, 2011 (“Turgeman PCT Application”) and predates the priority date of the present invention. The Examiner does not refer to the Turgeman PCT Application, and does not cite that application to show the cited Turgeman ’030 portions qualify as prior art. According to the Federal Circuit, [w]hen neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims [or written description] in a []continuation-in-part[] application are entitled to the effective filing date of an earlier filed application.5 Dynamic Drinkware, 800 F.3d at 1380 (citation omitted). 5 Although Dynamic Drinkware focuses on a pre-AIA patent reference (Dynamic Drinkware, 800 F.3d at 1378-80), we determine the statement is also applicable to an AIA patent reference. Appeal 2021-001667 Application 14/967,562 8 As a result, “there is . . . no reason to presume” that the cited Turgeman ’030 portions qualify as prior art via the priority date of the Turgeman PCT Application. Id. Further, we note among other things, Examiner cites Turgeman ’030 for the claimed “acceleration noise pattern.” Final Act. 2-3. In contrast, Turgeman PCT Application does not appear to teach the claimed “acceleration noise pattern.” Therefore, the Examiner has not shown all of the cited Turgeman ’030 portions qualify as prior art via the priority date of the Turgeman PCT Application. Because the Examiner fails to provide sufficient evidence or explanation to show all of the cited Turgeman ’030 portions qualify as prior art, we are constrained by the record to reverse the Examiner’s rejection of independent claim 1, and independent claims 8 and 13 for similar reasons. We also reverse the Examiner’s rejection of corresponding dependent claims 2-7, 9-12, and 14-16. Although the Examiner cites additional references for rejecting some dependent claims, the Examiner has not shown the additional references overcome the deficiency discussed above in the rejection of claim 1. We note Appellant raises additional arguments. Because the identified issue is dispositive of the appeal, we do not address the additional arguments. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (an administrative agency’s “judicious use of a single dispositive issue approach . . . can . . . save . . . unnecessary cost and effort”). Appeal 2021-001667 Application 14/967,562 9 CONCLUSION We reverse the Examiner’s decision rejecting claims 1-16 under 35 U.S.C. § 103. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4 103 Turgeman ’030, Kryze 1, 2, 4 3, 5, 6, 8-16 103 Turgeman ’030, Kryze, Liberty 3, 5, 6, 8-16 7 103 Turgeman ’030, Kryze, Czompo 7 Overall Outcome 1-16 REVERSED