Ex Parte Sheng

Patent Trial and Appeal Board

Jun 29, 2018

13824538 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/824,538 03/18/2013
14868 7590 07/03/2018
Patent Docketing
200 Bellevue Parkway, Suite 300
Attention: Docketing
Wilmington, DE 19809
FIRST NAMED INVENTOR
Hua Sheng
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
HCL60074US02 2624
EXAMINER
PEREZ BERMUDEZ, Y ARITZA H
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
docketing@interdigital.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HUA SHENG
Appeal2017-007252
Application 13/824,53 81
Technology Center 2800
Before KAREN M. HASTINGS, BEYERL YA. FRANKLIN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant requests our review under 35 U.S.C. § 134 of the Final
Rejection of claims 1-13 and 17-37 under 35 U.S.C. § 101 as directed to
non-statutory subject matter. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Hillcrest Laboratories, Inc. is identified as the real party in interest. Appeal
Br. 3.
2 The Examiner withdrew the § 103 rejections made in the Final Action
(Ans. 2).
Appeal2017-007252
Application 13/824,538
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
A method for estimating a yaw angle of a body reference
system of a device relative to a gravitational reference system,
using motion sensors and a magnetometer attached to the
device, the method comprising:
receiving measurements from the motion sensors and
from the magnetometer;
determining a measured 3-D magnetic field, a roll angle,
a pitch angle and a raw estimate of yaw angle of the device in
the body reference system based on the received measurements;
extracting a local 3-D magnetic field from the measured
3-D magnetic field; and
calculating a tilt-compensated yaw angle of the body
reference system of the device in the gravitational reference
system based on the extracted local 3-D magnetic, the roll
angle, the pitch angle and the raw estimate of yaw angle using
at least two different methods, wherein an error of the roll angle
estimate, an error of the pitch angle estimate, and an error of the
extracted local 3-D magnetic field affect the error of the tilt-
compensated yaw angle differently for the at least two different
methods.
Appeal Br. 20 (Claims Appendix).
Independent claims 1, 31 and 34 are similarly directed to calculating
"a tilt-compensated yaw angle ... based on ... the raw estimate of yaw
angle using at least two different methods" (Appeal Br. 20 & 25-26, Claims
Appendix). Although Appellant separately addresses each of the
independent claims, Appellant does not present any new arguments for
independent claims 31 and 34 (Appeal Br. 7-12). With respect to dependent
claims 2-14, 17-30, 32, 33, and 35-37, Appellant present arguments under a
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Application 13/824,538
separate header that do not more than point to the features in the claims. A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See 3 7
C.F .R. § 41.31 ( c )(1 )(iv). Accordingly, we have selected independent claim
1 as representative. Claims 2-13 and 17-37 stand or fall with claim 1.
ANALYSIS
The rejection under 35 US.C. § 101 as directed to non-statutory subject
matter.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014 ), identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355. In that regard, the Examiner finds
the claim elements of "determining a measured 3-D magnetic field, a roll
angle, a pitch angle and a raw estimate of yaw angle in the body reference
system based on the received measurements; extracting a local 3-D magnetic
field from the measured 3-D magnetic field; and calculating a tilt-
compensated yaw angle" to be abstract ideas directed to mathematical
relationships/formulas and concluded that the subject matter of the claims is
directed to the judicial exception of abstract ideas. Final Act. 18-19.
The Appellant challenges the Examiner's articulation of what the
claims are directed to, but the challenge is unfounded. See Appeal Br. 7-8.
For example, the fact that the claims are drafted to correcting an estimated
yaw angle using "real-world measurements" (id.) is not dispositive. The
question is what the claims are "directed to."
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[T]he "directed to" inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether "their
character as a whole is directed to excluded subject matter."
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v. Merial L.L.C.,
818 F.3d 1369, 1375, 2016 WL 1393573, at *5 (Fed. Cir. 2016)
(inquiring into "the focus of the claimed advance over the prior
art").
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). "The
'abstract idea' step of the inquiry calls upon us to look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas v.
DIRECTTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). "In
determining the eligibility of [Appellant's] claimed process for patent
protection under§ 101, the[] claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
The claims are directed to calculating a tilt-compensated yaw angle
based on a raw estimate of the yaw angle, magnetic field and sensor
measurements. As set out in the Background section of Appellant's
Specification, it is conventional to correct "the hard- and soft-iron effects ...
using plural magnetic field measurements" (i-f 11 ). Accordingly, the claims
as a whole, in light of the Specification, are directed to calculating a
mathematical value or angle, which is consistent with the Examiner's
position of Appellant's claims being directed to the abstract idea of
mathematical relationships/formulas (Final Act. 2--4; Ans. 3--4).
Appellant argues that the Examiner has failed to establish that the
claims are directed to a patent-ineligible subject matter because the
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Application 13/824,538
Examiner "throughout the prosecution history" does not mention any prior
court decision directed to abstract ideas that include a mathematical
relationship/formula similar to the abstract idea identified by the Examiner
from the claimed subject matter (Reply Br. 2-3).
The prosecution history does not support Appellant's argument. The
Appellant acknowledges that the Examiner recites prior case law stating that
"[t]he final Office Action cites the analysis on pages 294--295 of In re
Schrader"3 (App. Br. 10 citing to Final Act. 5), wherein Appellant argues
that In re Schrader is not relevant case law for the current application
because "there is nothing in common between Appellant's claim 1 and the
claims in In re Schrader, which relate to a method of competitively bidding
on a plurality of items" (App. Br. 11 ). The Examiner explains that the
Federal Circuit in In re Schrader found the claims to be directed to the non-
statutory subject matter of mathematical algorithms or mathematical
calculation steps (Ans. 12). The Examiner then explains that Appellant's
claims are also directed to non-statutory subject matter in view of the
similarity between those claims and the claims in In re Schrader (Ans. 12).
In addition, the Examiner identifies each of the claim elements, except
the step of obtaining the measurements, as being directed to an abstract idea
involving mathematical relationships/formulas which the Examiner notes is
"analogous to e.g. an algorithm for calculating parameters indicating an
abnormal condition (In re Grams )"4 (Final Act. 18; see also Answer 6).
3 In re Schrader, 22 F.3d 290 (Fed. Cir. 1994).
4 In re Grams, 888 F.2d 835 (Fed Cir. 1989).
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Consequently, the Examiner provided Appellant with adequate notification
of prior court decisions with similar abstract ideas.
Appellant further argues that the claims are distinguished from those
of in Grams because "Appellant's claimed combinations are not similar to
Grams," "are not directed to solving a math problem," and "the method of
Grams could also be performed using pen and paper" (Reply Br. 3, emphasis
omitted).
Appellant's arguments are unpersuasive. Regardless of whether
Appellant's claimed invention can be performed with pen and paper, the
dispositive issue remains whether the claims are directed to the identified
abstract idea of mathematical relationships/formulas. A procedure for
solving a given type of mathematical problem is known as an "algorithm".
Gottschalk v. Benson, 409 U.S. 63, 65, 93 S. Ct. 253, 254, 34 L. Ed. 2d 273
(1972). The Examiner asserts that the claims of the current application are
similar to those from Grams, wherein the claims were upheld as being
directed to the abstract idea of a mathematical algorithm (Ans. 6: see also
Final Act. 18-19). The claims in Grams comprise steps of obtaining
parameters/measurements and then performing a series of mathematical
calculations in order to determine a mathematical result (deviation from
normal condition). Id. at 837. In Grams, "the only physical step involves
merely gathering data for the algorithm" In re Grams, 888 F. 2d. at 839.
The subject matter of claim 1, like Grams, also comprises steps of obtaining
parameters/measurements and then performing a series of mathematical
calculations in order to determine a mathematical result (corrected yaw
angle). The remaining steps of claim 1, the Examiner explains (Ans. 4), are
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disclosed in the Specification as comprising merely the performance of
mathematical calculations:
"According to the original disclosure of the invention the
determination of measured 3-D magnetic field is being determined by
calculations, and it is a vector value based on measurements received,
(paragraph 0037, 0235, 0239), similarly the roll pitch and raw
estimate yaw are determined by calculations using parameters that are
constants or determined during calibration procedures (paragraph
0235) and the calculating a tilt-compensated step is being achieved by
mathematical calculations paragraphs (0014---0016, 0237)."
In addition, Appellant's argument that the claims solve the problem of
correcting the yaw angle using magnetic field measurements without being
"time and memory consuming" (Reply Br. 6 citing Spec. i-f 11) indicates that
the claims are directed to solving the mathematical problem of improving
mathematical calculations used to determine a corrected yaw angle.
Consequently, we conclude that the Examiner correctly found the
claims to be directed to the abstract idea of mathematical
relationships/formulas.
Step two is "a search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice, 134 S. Ct. at 2355 (alteration in original) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)).
In this regard, the Examiner determined that, generically linking the
use of a judicial exception to a particular technological environment or field
of use is insufficient because ( 1) the claims do "not include additional
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elements that are sufficient to amount to significantly more than the judicial
exception and (2) the step of receiving measurements using the additional
elements of motion sensors and the magnetometer is a mere data gathering
recited at a high level of generality, which is an insignificant extra-solution
activity using conventional equipment (Final Act. 18-19). "The presence of
a physical step in the claim to derive data for the algorithm will not render
the claim statutory." In re Grams, 888 F.2d at 840. "[N]otwithstanding that
the antecedent steps are novel and unobvious, they merely determine values
for the variables used in the mathematical formulae used in making the
calculations. [They] do not suffice to render the claimed methods,
considered as a whole, statutory subject matter." Id. at 840, quoting In re
Richman, 563 F.2d 1026, 1030 (CCPA 1977).
The claims of the current application employ conventional devices
(motion sensors and magnetometer) for performing their common functions
without reciting any additional steps beyond data gathering and determining
values for use in calculating the yaw angle. The Specification supports the
view that the use of motion sensors and a magnetometer to obtain
measurements and correct a yaw angle is conventional. Appellant
acknowledges that "correcting for 'the hard- and soft-iron effects' was
previously done by 'using plural magnetic field measurements', which can
be 'time and memory consuming.' (See specification, [0011 ])" (Reply Br.,
para. bridging 6-7). The Specification also discloses that the "term 'motion
sensors' means any sensing element(s) that can provide a measurement of
roll and pitch, and at least a relative yaw (i.e., a raw estimate of yaw)" (see,
e.g., Spec. i-f 210). Cf Alice, 134 S. Ct. 2358 (citation omitted). "[T]he mere
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recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention. Stating an abstract idea 'while adding
the words "apply it'' is not enough for patent eligibility." Id. In addition,
the Specification recites that "so-called nine-axis sensors" comprising "3-
axis gyroscopes, 3-D accelerometer and 3-D magnetometer" are
"increasingly popular and widespread" (see, e.g., Spec. i-f 3).
Appellant argues that the claims comprise significantly more than
the abstract idea because "the ordered combination of receiving
measurements and then correcting some of the measurements by first
correcting the measured magnetic field and then correcting the raw estimate
of the yaw angle in the body reference system by calculating a tilt-
compensation yaw angle in a gravitational reference system recites an
inventive concept" (Appeal Br. 9).
Appellant's Specification does not support this assertion. "[A]n
inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces." Bascom Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). That
inventive concept must recite an invention that is not merely routine or
conventional in order to comprise significantly more than the abstract idea.
Id. at 1348. As discussed supra, the process of obtaining measurements of a
magnetic field (Spec. i-f 7), correcting those magnetic measurements for
hard-iron and soft-iron effects and using those corrected measurements to
obtain a corrected yaw angle is conventional (Spec. i-f 8-11 ).
In addition, while in Bascom the claims recite "a specific, discrete
implementation of the abstract idea of filtering content" (Bascom, 827 F .3d
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at 1350), the claims of the current application broadly recite calculating the
yaw angle "using at least two different methods" wherein the details of what
those methods entail are left unspecified. Notably the claims end with
calculating the yaw angle using the unspecified "at least two different
methods" and do not recite any use or transmission/output of the yaw angle
after the calculation is performed. Therefore, a preponderance of the
evidence supports the Examiner's position that the inventive concept urged
by Appellant is routine and conventional and insufficient to constitute
significantly more than the abstract idea of mathematical
relationships/formulas (Ans. 8-9).
Finally, Appellant argues that the claims comprise significantly more
than the abstract idea because "Appellant's claims have been found to be
novel and non-obvious over any prior art" (Reply Br. 4). However, a
finding of novelty or nonobviousness does not necessarily lead to the
conclusion that subject matter is patentable eligible. "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). The question in step two of the Alice framework is not
whether an additional feature (i.e., the calculation) is novel but whether the
implementation of the abstract idea involves "more than [the] performance
of 'well-understood, routine, [and] conventional activities previously known
to the industry."' Content Extraction and Transmission LLC v. Wells Fargo
Bank, Nat. Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) (quoting Alice,
134 S. Ct. at 2359) based upon whether "[t]aking the claim elements
separately, the function performed by the computer at each step of the
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process is '[p]urely conventional."' Alice, 134 S. Ct. at 2359 (citing Mayo,
566 U.S. at 66). Cf Alice, 134 S. Ct. at 2359 ("Considered 'as an ordered
combination,' the computer components of petitioner's method 'ad[ d]
nothing ... that is not already present when the steps are considered
separately.").
In Appellant's claims, the motion sensors and magnetometer perform
the generic functionality of obtaining measurements. Regardless of whether
the mathematical function itself is novel, the functionality performed by the
sensors and magnetometer is conventional. As such, the novelty of the
claims does not comprise significantly more than the abstract idea because
Appellant's Specification and claims support a view that the sensors and
magnetometer act merely as a platform or conduit for the data-manipulating
abstract idea. Cf In re TL! Communications LLC Patent Litigation, 823
F.3d 607, 612 (Fed. Cir. 2016).
For the foregoing reasons, the Appellant has not shown error in the
Examiner's Alice step two determination that the claims do not include an
element or combination of elements sufficient to ensure that in practice they
amount to significantly more than the ineligible concept itself.
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The remaining arguments have been carefully considered but are
unpersuasive as to error in the rejection. 5
The rejection of claims 1-13 and 17-37 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter is sustained.
DECISION
The decision of the Examiner to reject claims 1-13 and 17-37 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
5 To the extent Appellant presents new arguments in the Reply Brief, we will
not consider them. Any argument not presented in the Appeal Brief will not
be considered when filed in a Reply Brief, absent a showing of good cause
explaining why the argument could not have been presented in the Appeal
Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) ("the reply brief [is not] an opportunity to make arguments that
could have been made in the principal brief on appeal to rebut the
Examiner's rejections, but were not."); compare also Optivus Tech., Inc. v.
Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument
raised for the first time in the Reply Brief is considered waived); see also 3 7
C.F.R. § 41.41(b)(2) (2013). Appellant has not shown good cause why any
new arguments could not have been presented in the Appeal Brief.
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