Ex Parte Czompo et al

Patent Trial and Appeal Board

Aug 4, 2017

13309519 (P.T.A.B. Aug. 4, 2017)

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.
13/309,519 12/01/2011 Joseph CZOMPO Q110598Ulvk 1555
73859 7590 08/08/2017
Silicon Valley Patent Group LLP
Attn: Client QCM
4010 Moorpark Avenue
Suite 210
San Jose, CA 95117
EXAMINER
BARBEE, MANUEL L
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
08/08/2017 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):
ocpat_uspto@qualcomm.com
qualcomm_PAIR @ s vpatentgroup. com
B WYMAN @ S VP ATENTGROUP. COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH CZOMPO, ASHUTOSH JOSHI,
SHANTA PAVAN NAMBURI, and DISHA AHUJA
Appeal 2016-007041
Application 13/309,5191
Technology Center 2800
Before JEFFREY T. SMITH, BRIAN D. RANGE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—35. We have jurisdiction. 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is QUALCOMM
Incorporated. Appeal Br. 4.
Appeal 2016-007041
Application 13/309,519
STATEMENT OF THE CASE2
Appellants describe the invention as relating to an apparatus and
method for providing an improved heading estimate of a mobile device.
Abstract. In particular, the described invention makes use of inertial data for
the device (i.e., measurements of acceleration) to determine whether or not a
device is mounted in a vehicle. Spec. 110. The location reference system
may be adjusted depending on whether or not the device is mounted. Spec.
1110, 97. Claim 1 is illustrative of the claimed subject matter:
1. A method in a mobile device to detect if the mobile device
is unmounted, the method comprising:
receiving, in the mobile device, accelerometer
measurements;
determining, by the mobile device, an average of the
accelerometer measurements;
computing a parameter based on the accelerometer
measurements and the average;
computing a variance of the parameter;
comparing the variance to a threshold; and
declaring, by the mobile device, the mobile device is
unmounted based on the variance being greater than the
threshold.
Appeal Br. 37 (Claims App’x).
Claim 4 is similar but is directed to an apparatus and also recites, for
example, “an inertial measurement unit comprising an accelerometer.” Id. at
38.
2 In this opinion, we refer to the Final Office Action dated May 22, 2015
(“Final Act.”), the Appeal Brief filed November 6, 2015 (“Appeal Br.”), the
Examiner’s Answer dated May 6, 2016 (“Ans.”), and the Reply Brief filed
July 6, 2016 (“Reply Br.”).
2
Appeal 2016-007041
Application 13/309,519
The patent application addressed in this decision is related to Patent
Application No. 13/309,520 addressed by our decision in Appeal 2016-
007288.
REJECTION
On appeal, the Examiner maintains rejection of claims 1—35 as
unpatentable under 35 U.S.C. § 101. Final Act. 2; Ans. 2.
ANALYSIS
The Examiner rejects all claims on appeal as unpatentable under 35
U.S.C. § 101 based upon the claims being directed to abstract ideas. Final
Act. 2; Ans. 2. The Examiner states, for example, that “Claim 1 ... is
directed to determining, by the mobile device, an average of the
accelerometer measurements; computing a parameter based on the
accelerometer measurements and the average; computing a variance of the
parameter; and comparing the variance to a threshold.” Ans. 3. The
Examiner then states that “each of claims 1—35 include limitations that
involve a mathematical relationship or formula, which are abstract ideas.”
Id. at 6.
Appellants argue that the claims on appeal are not directed to an
abstract idea and also argue that the claims recite elements that amount to
significantly more than an abstract idea. Appeal Br. 27—29. Appellants
further argue that the claims are “rooted in location determination
technology to overcome a problem specifically arising with location
determination devices. . . .” Id. at 35—36 (citing DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); see also Reply Br. 7
3
Appeal 2016-007041
Application 13/309,519
(comparing claims at issue to those of Enfish LLC v. Microsoft Corp., 822
F.3d 1327 (Fed. Cir. 2016))3.
On the present record, Appellants’ arguments persuade us of
Examiner error. The Examiner bears the initial burden of presenting a prima
facie case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). To determine whether an invention claims ineligible subject matter
requires the application of the two-step test first introduced in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012)
and further explained in Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct.
2347, 2354 (2014). The first step requires a determination as to whether the
claims at issue are directed to a patent-ineligible concept such as an abstract
idea. See Alice, 134 S. Ct. at 2355. The second step requires examination of
“the elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Id. at 2357 (quoting Mayo 132 S. Ct. at 1294, 1298).
For the first step, the Examiner indicates the claims are directed to
“the abstract idea of computing a variance of the parameter and comparing
the variance to a threshold.” Final act. 2. As to the second step, the
Examiner has not adequately explained why the recitations of the claims
fails to describe an inventive concept sufficient to transform the alleged
abstract idea into a patent-eligible application. In other words, the Examiner
has not adequately explained why the recitations of the claims as a whole are
directed to abstract ideas rather than being more akin to claims our
3 Although decided after this matter’s briefing, we also make note of our
reviewing court’s decision in Thales Visionix Inc. v. U.S., 850 F.3d 1343
(Fed. Cir. 2017) (holding that claims directed to system for tracking object’s
motion with two inertial sensors were patent eligible).
4
Appeal 2016-007041
Application 13/309,519
reviewing court has previously deemed patent eligible. See, e.g., DDR
Holdings, LLC, 773 F.3d at 1257 (holding claims patent eligible where they
were “necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks”); see also
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355, n.3 (2014)
(“patent claims must be considered as a whole”) (internal quotation marks
and citation omitted). Accordingly, we do not sustain the Examiner’s
rejection.
DECISION
For the above reasons, we reverse the Examiner’s rejection of claims
1-35.
REVERSED
5