David Amm et al.

Patent Trials and Appeals Board

Dec 18, 2019

13794492 - (D) (P.T.A.B. Dec. 18, 2019)

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.
13/794,492 03/11/2013 David Amm 122202-5028 (P18194US1) 2912
142248 7590 12/18/2019
Morgan, Lewis & Bockius LLP (Apple)
600 Anton Boulevard
Suite 1800
Costa Mesa, CA 92626
EXAMINER
HULKA, JAMES R
ART UNIT PAPER NUMBER
3645
NOTIFICATION DATE DELIVERY MODE
12/18/2019 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):
OCIPDocketing@morganlewis.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID AMM, BRIAN MICHAEL KING,
STEVEN P. HOTELLING and MICHAEL B. WITTENBERG1
___________

Appeal 2018-002432
Application 13/794,492
Technology Center 3600

____________

Before JEAN R. HOMERE, CARL W. WHITEHEAD JR. and
MICHAEL J. STRAUSS, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 1–3, 5–7, 19–29
and 31–34 under 35 U.S.C. § 134(a). Appeal Brief 5. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Apple, Inc., as the real party in interest.
Appeal Brief 3.
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Application 13/794,492
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Introduction
According to Appellant, the claimed subject matter is directed to
“ultrasonic ranging mobile devices, which can find proximate devices using
ultrasound so as to communicate and share data between devices.”
Specification ¶ 6.

Representative Claims
1. A mobile device comprising:
a button configured to perform a function when actuated;
an ultrasound transmitter configured to emit a first signal to a
proximate device, wherein the button and the ultrasound transmitter are
structurally co-located; and
an ultrasound receiver configured to receive a separate second signal
from the proximate device, wherein the mobile device is configured to
determine a range of the proximate device based on a time lapse associated
with the second signal.

23. A method of finding a range of a proximate device, comprising:
transmitting a first ultrasound signal from a mobile device ultrasound
transmitter;
recording a time of transmission of the first signal;
receiving a separate second ultrasound signal from a proximate device
at a plurality of ultrasound receivers of the mobile device, the separate
second ultrasound signal being received subsequent to transmitting the first
signal;
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recording times of receipt of the second signal at the plurality of
ultrasound receivers; and calculating a range between the mobile device and
the proximate device and a relative orientation based on time lapses between
the recorded time of transmission of the first signal and the recorded times of
receipt of the second signal.

24. A mobile device comprising:
a housing; and
at least one combined ultrasound transmitter and button disposed on
an external surface of the housing and configured to transmit an ultrasound
signal without an aperture to pass the ultrasound signal.

References
Name Reference Date
Hooley US 2011/0129101 Al June 2, 2011
Mason et al. US 2004/0192353 A1 September 30, 2004
Hotelling US 2008/0088602 Al April 17, 2008
Boyle et al. US 2010/0002777 A1 January 7, 2010
Langereis et al. US 2011/0003614 A1 January 6, 2011
Megdal et al. US 2011/0141853 A1 June 16, 2011

Rejections on Appeal2
Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hooley and Hotelling. Final Action 4.

2 The 35 U.S.C. § 112 rejections were withdrawn by the Examiner. See
Answer 3.
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Claims 1–3, 5–7, 19, 22, 26–27, 31–32 and 34 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Langereis, Hotelling and Boyle.
Final Action 4–9.
Claims 20, 21, 28 and 29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Langereis, Hotelling, Boyle and Hooley. Final
Action 9–10.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Langereis, Megdal and Boyle. Final Action 11–12.
Claim 33 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Langereis, Megdal, Boyle and Mason. Final Action 12.

ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed October 5, 2017), the Reply Brief (filed
January 3, 2018), the Final Action (mailed March 28, 2017) and the Answer
(mailed November 3, 2017), for the respective details.
Claims 1–3, 5–7, 19–22, 26–29, 31–34
The Examiner finds that Langereis3 discloses the claimed mobile
device with the exception that “Langereis does not explicitly teach a separate
second signal or a button configured for performing multiple functions . . .
or a button and the ultrasound transmitter are structurally co-located.” Final
Action 4–5. The Examiner addresses Langereis’ deficiency by finding that
“Boyle teaches a separate second signal [[¶]0010]” and “Hotelling teaches a
multifunctional button capable of performing multiple functions . . . [[¶¶]

3 Langereis Abstract, ¶¶ 58–60, 85 and 86.
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0044; 0093] and a button and the ultrasound transmitter are structurally co-
located [[¶¶]0058-66].” Final Action 5.
Appellant contends:
Langereis discloses that a device emits an ultrasonic signal that
reflects off of a reflective surface and the emitted ultrasonic
signal is received back at the device (that emitted the ultrasonic
signal). Langereis does not disclose or suggest to “emit a first
ultrasound signal to a proximate device,” “receive a separate
second signal from the proximate device,” and “determine a
range of the proximate device based on a time lapse associated
with the second signal,” as recited in independent claim 1.
Appeal Brief 13 (citing Langereis ¶58).
Upon review of Langereis, we do not find adequate support for the
Examiner’s findings. Langereis discloses “the processor [30] can determine
the travelling time of the ultrasonic signal 6, 7 between emission and
reception by acoustic transducer 4 and thus determine the distance between
acoustic transducer 4 and the reflective surface 9” and, from the distances of
the amplitudes of the ultrasonic signal 6 and the reflected ultrasonic 7, the
processor 30 may draw conclusions about the properties of the reflective
surface 9. Langereis ¶60. Langereis discloses that by comparing the
predefined threshold voltage of the time lag, the processor 30 “determines
whether the electronic device is being held at the head or cheek of the user,
which situation corresponds to a normal phone-call or if the electronic
device is located at a certain distance from the head or cheek of the user,
indicating a hands-free-call situation.” Langereis ¶60. Langereis further
discloses:
[S]teps of generating [ ] at least one electric signal in the
frequency range of ultrasonic sound, emitting [ ] at least one
ultrasonic signal 6 by means of the acoustic transducer; receiving
at least one ultrasonic signal 7 by means of the acoustic
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transducer; deducing [ ] from the at least one emitted ultrasonic
signal and the at least one received ultrasonic signal at least the
delay between emission of the emitted ultrasonic signal and
reception of the corresponding ultrasonic signal.
Langereis ¶86.
We find that Langereis does not disclose “an ultrasound transmitter
configured to emit a first signal to a proximate device” and “an ultrasound
receiver configured to receive a separate second signal from the proximate
device” as recited in claim 1. As noted above, the Examiner relies upon
Boyle, paragraph 10 and Hotelling, paragraphs 44, 58–66 and 93 to cure
Langereis’ deficiencies. The Examiner cites to paragraph 10 of Boyle
without any specificity to Boyle’s teachings. See Final Action 10; see also
Appeal Brief 12–13. Boyle discloses that mobile devices may be used for
“detecting and/or identifying signals that employ streaming processing to
generate time-frequency surfaces by sampling a datastream according to a
temporal structure” for such applications as radar surveillance, acoustic
surveillance, oil and gas exploration, medical imaging, etc.” Boyle Abstract,
¶10. Boyle fails to cure Langereis’ deficiencies.
Appellant contends, “[T]here is no disclosure or suggestion in
Hotelling that a fixed function button has a physical structure or form, or
that a fixed function button is “structurally co-located” with an
“ultrasound transmitter,” as recited in independent claim 1. Appeal Brief
15. The Examiner finds:
Hotelling reference is a prior art reference written by one of the
listed inventors/appellants, and succinctly directed to using
mobile devices with surface buttons for various tasks, and having
the ability to configure buttons to perform certain tasks. Since
the button and the transmitter are co-located in the mobile device,
one having ordinary skill in the art could easily program a
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particular button to transmit an ultrasound signal that would
initiate ranging.
Answer 6.
We find Appellant’s argument persuasive and do not agree with the
Examiner’s findings because they are not substantiated by Hotelling, which
fails todisclose an ultrasound transmitter, as recited in claim 1, that addresses
the deficiencies of Langereis and Boyle. “[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR Int’l., Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
Additionally, the Examiner merely cites to multiple paragraphs within
the cited prior art without any specificity as to where the Examiner’s
findings are supported and therefore, a prima facie case of obviousness has
not been established in regard to independent claims 1 and 19.4 See Final

4 37 C.F.R. §1.104(c)(2) (In rejecting claims for want of novelty or for
obviousness, the examiner must cite the best references at his or her
command. When a reference is complex or shows or describes inventions
other than that claimed by the applicant, the particular part relied on must be
designated as nearly as practicable. The pertinence of each reference, if not
apparent, must be clearly explained and each rejected claim specified.) The
procedural burden of establishing a prima facie case is carried when the
rejection satisfies 35 U.S.C. § 132, in “notify[ing] the applicant . . . [by]
stating the reasons for [its] rejection, or objection or requirement, together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.” 35 U.S.C.
§ 132. This section “‘is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.’” In re Jung 637 F.3d 1356, 1362 (Fed. Cir. 2011) citing
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Action 2–3. Accordingly, we reverse the Examiner’s obviousness rejection
of independent claims 1 and 19, as well as, the obviousness rejections of
dependent claims 2, 3, 5–7, 20–22, 26–29 and 31–34.
Claim 23
The Examiner finds that Langereis discloses the claimed mobile
device with the exception that, “Langereis does not explicitly teach a second
device proximate to the first device, . . . at a plurality of ultrasonic receivers
of the mobile device . . . subsequent to transmitting the first signal. . . and
calculating a . . . relative orientation.” Final Action 11; see Footnote 3. The
Examiner addresses Langereis’ deficiency by finding that “Boyle teaches a
second device proximate to the first device, or wherein the second device
includes at least one ultrasound transmitter capable of transmitting the
second signal to the first device in response to the first signal from the first
device [[¶]0010]” and “Megdal teaches at a plurality of ultrasonic
receivers of the mobile device . . . subsequent to transmitting the first signal .
. . and calculating a . . . relative orientation [[¶¶]0006; 0039; 0054].” Final
Action 11.
Appellant contends, “The Office Action acknowledges that Langereis
does not disclose or suggest, and the Office Action does not assert that
Megdal discloses or suggests ‘receiving a separate second ultrasound signal
from a proximate device at a plurality of ultrasound receivers of the mobile
device,’ as recited in independent claim 23.” Appeal Brief 21 (citing Final
Action 11). Appellant also contend, “Since Langereis and Megdal do not
disclose receiving ‘a separate second ultrasound signal,’ Langereis and

Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).

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Megdal cannot disclose or suggest ‘calculating a range between the mobile
device and the proximate device . . . based on time lapses between the
recorded time of transmission of the first signal and the recorded times of
receipt of the second signal,’ as recited in independent claim 23.” Appeal
Brief 21–22. Appellant contends that Boyle’s disclosure of “bistatic . . .
radar” does not cure the deficiencies of Langereis and Megdal. Appellant
argues, “the Examiner is clearly reaching a conclusion based solely on the
Examiner’s own understanding that is not supported by any concrete
evidence in the record (the mere disclosure of ‘bi-static and mono-static
radar’ in paragraph [0010] of Boyle does not support the assertion made by
the Examiner).” Appeal Brief 22.
As we indicated above with regard to claim 1, commensurate in
scope, we find Appellant’s arguments persuasive and we do not agree with
the Examiner’s findings that Boyle remedies Langereis’ deficiency by
disclosing “receiving a separate second ultrasound signal from a proximate
device at a plurality of ultrasound receivers of the mobile device” as
required in independent claim 23. We reverse the Examiner’s obviousness
rejection of independent claim 23.
Claims 24–25
Hooley discloses, “The mobile phone 30 incorporates an ultrasonic
transducer array 303 acting as both the transmitter and receiver of the
directional microphone, or alternatively comprising a transmitting section
and a receiving section.” Hooley ¶33. Hooley further discloses, “The
transducer array 303 is shown on the front face of the mobile phone 30,
where it fits around other components such as a display screen and
keyboard.” Hooley ¶33. The Examiner finds that Hooley discloses the
claimed mobile device with the exception that, “Hooley does not explicitly
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teach at least one combined ultrasound transmitter and button.” Final Action
4 (citing Hooley Figure 3; paragraph 33). The Examiner addresses Hooley’s
deficiency by finding that “Hotelling teaches at least one combined
ultrasound transmitter and button.” Final Action 4 (citing Hotelling ¶¶44,
93).
Appellant contends, “The Office Action only asserts that paragraphs
[0044] and [0093] of Hotelling cure these deficiencies of Hooley without
providing any explanation as to how the cited paragraphs of Hotelling cure
these deficiencies, presumably because the cited paragraphs of Hotelling do
not cure these deficiencies.” Appeal Brief 23–24. Appellant further
contends:
Paragraph [0044] of Hotelling discloses “soft or fixed
function buttons,” and paragraph [0093] of Hotelling discloses
“assign functions to various elements of the UI.” With respect to
soft buttons, Hotelling further discloses that “main menu that
includes soft buttons or icons that, when selected, activate the
device functionality associated with the soft button.” Hotelling,
¶84. However, “soft buttons or icons” or other “elements of the
UI” cannot disclose or suggest a “combined ultrasound
transmitter and button,” as recited in independent claim 26, as
the UI elements do not have a physical structure or form.
With respect to fixed function buttons, Hotelling further
discloses that “in many cell phones one fixed function button is
used for starting a call and another fixed function button is used
for ending a call.” Hotelling, ¶45. However, there is no
disclosure or suggestion in Hotelling that a fixed function button
has a physical structure or form, or that a fixed function button
can be part of a “combined ultrasound transmitter and button,”
as recited in independent claim 24.
Appeal Brief 24.
The Examiner refers to page 6 of the Answer to address Appellant’s
arguments about Hotelling in regard to claim 24, see Answer 7, and finds,
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“Hotelling reference is a prior art reference written by one of the listed
inventors/appellants, and succinctly directed to using mobile devices with
surface buttons for various tasks, and having the ability to configure buttons
to perform certain tasks.”
We find Appellant’s argument persuasive and do not agree with the
Examiner’s findings because they are not substantiated by Hotelling because
Hotelling does not disclose a combined ultrasound transmitter and button, as
recited in claim 24, that addresses the deficiencies of Hooley. We reverse
the Examiner’s obviousness rejection of independent claim 24, as well as,
dependent claim 25.

CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–7,
19, 22, 26,
27, 31, 32,
34
103 Langereis,
Hotelling, Boyle
1–3, 5–7,
19, 22, 26,
27, 31, 32,
34
23 103 Langereis, Megdal,
Boyle
23
24, 25 103 Hooley, Hotelling 24, 25
33 103 Langereis, Mason,
Hotelling, Boyle
33
Overall
Outcome
1–3, 5–7,
19–29, 31–
34

REVERSED