M¿rtensson, Linus et al.

Patent Trials and Appeals Board

Dec 9, 2019

14685710 - (D) (P.T.A.B. Dec. 9, 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.
14/685,710 04/14/2015 Linus Mårtensson PS15 0216US1 7950
58342 7590 12/09/2019
RENNER, OTTO, BOISSELLE & SKLAR, LLP
(Sony)
1621 EUCLID AVENUE
19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
LE, TOAN M
ART UNIT PAPER NUMBER
2864
NOTIFICATION DATE DELIVERY MODE
12/09/2019 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LINUS MÅRTENSSON, MAGNUS MIDHOLT,
ALEXANDAR RODZEVSKI, and HENRIK BENGTSSON
Appeal 2019-000020
Application 14/685,710
Technology Center 2800
Before BRADLEY R. GARRIS, CHRISTOPHER C. KENNEDY, and
LILAN REN, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. 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 the real party in interest as Sony Mobile
Communications Inc. Appeal Br. 2.
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Application 14/685,710

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CLAIMED SUBJECT MATTER
The claims are directed to an electronic device, or a corresponding
method, for determining user activity comprising control circuitry
configured to form a characteristic signature from first data corresponding to
a static electric field and second data corresponding to motion, wherein user
activity is determined based on a comparison of the characteristic signature
with a plurality of baseline signatures (independent claims 1, 9, 11). Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. An electronic device, comprising:
a static electric field sensor for detecting a static electric
field;
at least one other sensor for detecting one of motion or
sound; and
a control circuit operative to determine an activity
performed by a user, the control circuit configured to:
obtain first data from the static electric field sensor data
corresponding to a static electric field about the electronic
device;
obtain second data from the at least one other sensor data
corresponding to motion of the electronic device;
form from the first and second data a characteristic
signature; and
identify the user activity based on a comparison of the
characteristic signature with a plurality of baseline signatures.

REJECTIONS
The Examiner rejects claims 1–3, 5–8, 11, 12, and 14–18 under
35 U.S.C. § 102(a)(1) as anticipated by Cohn et al. (hereinafter “Cohn”) “An
Ultra-Low-Power Human Body Motion Sensor Using Static Electric Field
Sensing” UBICOMP' 12, (Sept 5 - Sept 8, 2012) (Final 6–10).
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Additionally, the Examiner rejects claims 1–20 under 35 U.S.C. § 101
on the grounds that the claimed invention is directed to an abstract idea
without significantly more (id. at 2–6).
OPINION
The § 102 Rejection
The Examiner finds that Cohn discloses the device and method of
independent claims 1 and 11 respectively including the claimed feature of
forming a characteristic signature from first data corresponding to a static
electric field and second data corresponding to motion (Final 7).
Appellant argues that Cohn fails to teach forming a characteristic
signature from static electric field data and motion data as claimed (Appeal
Br. 17–18). Appellant explains that Cohn makes clear user activity is
determined independent of any motion data from Cohn’s accelerometer by
expressly teaching “[a]lthough our signal is correlated to the data from the
accelerometer, it is important to note that we are not measuring acceleration”
(id. at 18 (quoting Cohn second page, second column (Appellant’s emphasis
omitted))). Appellant correctly points out that Cohn uses accelerometer
motion data only to verify the accuracy of the static electric field data (id.).
In response, the Examiner does not dispute Appellant’s point that the
accelerometer motion data of Cohn is used only for verifying the accuracy of
the static electric field data. Rather, the Examiner maintains the above
anticipation finding based on the proposition that “forming a characteristic
signature from the combination of the first data and the second data is not a
fusion/merge of the first and second data (e.g., no resultant data from
combination of the first and second data)” (Ans. 29) (emphases omitted).
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Appellant replies by observing that the Examiner’s definition of the
claim phrase “characteristic signature” deviates from the Specification,
which defines this phrase as “a combination of a plurality of different types
of data . . . to form a data stream that defines the characteristic signature,
where different types of data corresponding to the same instants in time may
be linked together” (Reply Br. 4–5 (quoting Spec. 8:13–21)).
Based on the record before us, Appellant convincingly establishes that
the claim feature of forming a characteristic signature requires combining
static electric field data and motion data wherein these different types of data
are linked together. On the other hand, the Examiner offers no explanation
or Specification support for the proposition that Cohn’s use of accelerometer
motion data only to verify the accuracy of the static electric field data
anticipates this claim feature. For these reasons, the Examiner’s finding of
anticipation is erroneous.
We do not sustain the § 102 rejection of claims 1–3, 5–8, 11, 12, and
14–18 as anticipated by Cohn.
The § 101 Rejection
In issues involving subject matter eligibility, our inquiry
focuses on whether the claims satisfy the two-step test set forth by the
Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S.
208 (2014). The Supreme Court instructs us to “first determine
whether the claims at issue are directed to a patent-ineligible concept”
(id. at 216–18), and, in this case, the inquiry centers on whether the
claims are directed to a judicial exception. If the initial threshold is
met, we then move to the second step, in which we “consider the
elements of each claim both individually and ‘as an ordered
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combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.”
Id. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 79, 78 (2012)). The Supreme Court describes the
second step as 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.’” Id. (quoting Mayo, 566 U.S. at 72–73).
The USPTO recently published revised guidance on the
application of § 101. USPTO’s Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Memorandum”). Under that guidance, we look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental
economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception
into a practical application (see MPEP §§ 2106.05(a)–
(c), (e)–(h)).

Only if a claim (1) recites a judicial exception and (2) does
not integrate that exception into a practical application, do we then
look to whether the claim:
(3) adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in
the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at
a high level of generality, to the judicial exception.
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See Memorandum.
The Examiner determines that the obtaining, forming, and identifying
features recited in the independent claims constitute an abstract idea because
these features are analogous to those identified as abstract ideas in
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089 (Fed. Cir. 2016)
and Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016), which involve the collection and analysis of information (Final 2–5).
Appellant disagrees with the Examiner by arguing that the claim
features in question are analogous to those identified as not directed to an
abstract idea in Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed.
Cir. 2017) (Appeal Br. 9). Specifically, Appellant points out that the court
determined the claims of Thales are not directed to an abstract idea because
they “are directed to systems and methods that use inertial sensors in a non-
conventional manner to reduce errors in measuring the relative position and
orientation of a moving object on a moving reference frame” (id. (quoting
Thales Visionix Inc., 850 F.3d at 1348–49)). Appellant argues that the
claims on appeal likewise use sensors in a non-conventional manner by
forming a characteristic signature from static electric field sensor data and
motion sensor data, thereby providing an improvement over conventional
devices that have difficulty in detecting user activity involving little motion
(id. (citing Spec. 1:23–2:4)).
The Examiner responds by arguing without meaningful
embellishment that “Thales is distinguishable because claim 1, of the current
application, is not directed to otherwise eligible subject matter” (Ans. 7).
The Examiner additionally argues without elucidation that a pencil and
paper can be used to carry out the claim feature of forming from the first and
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second data a characteristic signature and that there is no indication this
claim feature improves any technology (id. at 13). Finally, the Examiner
states without explanation that the claim feature of forming a characteristic
signature from the first and second data “is not same as fusing the first and
second data to form a characteristic signature” (id. at 14).
In reply, Appellant accurately points out that the Examiner is making
unsupported assertions in arguing a pencil and paper can be used to carry out
the claim feature in question and in arguing the claim feature does not
improve any technology (Reply Br. 2–3). In this latter regard, Appellant
correctly states “[t]he pending application clearly discloses that the use of
data from a static electric field sensor and another sensor improves detection
of user activity” (id. at 3 (citing Spec. 2:9–11)).
Regarding Revised Step 2A, Prong (1), of the Memorandum guidance,
we determine that claims 1–20 do not recite an abstract idea.
In particular, the Examiner fails to identify any claim features in the
previously cited FairWarning and Electric Power decisions that are
analogous to the claim feature of forming from the first and second data a
characteristic signature. In contrast, Appellant convincingly argues that,
analogous to the claims of the above-cited Thales decision, this claim feature
uses the first and second data in a non-conventional manner to form a
characteristic signature, thereby providing an improvement over existing
technology for identifying user activity.2 Further, as Appellant correctly

2 Appellant's argument concerning technological improvement relates to
whether additional claim elements integrate a recited judicial exception into
a practical application under Prong (2) of Step 2A. We will not assess Prong
(2) in light of our determination that the claims do not recite a judicial
exception under Prong (1).
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explains, the Examiner is merely expressing unsupported assertions in
stating that the claim feature can be practiced with pencil and paper and that
the feature yields no improvement to any technology. Additionally, for
reasons analogous to those given above, the Examiner’s characterization of
the claimed feature as “not same as fusing the first and second data to form a
characteristic signature” (Ans. 14) lacks explanatory or evidentiary support
and deviates from the Specification definition of the claim phrase
“characteristic signature.”
With further respect to the Memorandum guidance, we reiterate that
Revised Step 2A, Prong (1), identifies three judicially-accepted groupings of
abstract ideas: (1) mathematical concepts; (2) certain methods of organizing
human activity; and (3) mental processes. Here, the only abstract idea
grouping identified by the Examiner with any reasonable specificity is the
grouping of mental processes by virtue of the Examiner’s contention that the
claim feature under consideration can be practiced with pencil and paper.
As explained previously, however, the Examiner provides no evidence or
explanation in support of this contention, which is based on a
characterization of the claim feature that deviates from the Specification
definition of the claim phrase “characteristic signature.” We find no support
in the record for a determination that pencil and paper can be used to
practice the claim feature of forming from the first and second data a
characteristic signature as defined in the Specification. Moreover, our
independent analysis reveals no support for a determination that the claims
on appeal recite any of the three judicially-accepted groupings of abstract
ideas identified in the Memorandum.
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For these reasons, we find no adequate support for a determination
that the rejected claims recite an abstract idea. As a consequence, we also
do not sustain the § 101 rejection of claims 1–20.
CONCLUSION
We reverse the Examiner’s decision to reject the claims on appeal
under 35 U.S.C. § 102(a)(1) and 35 U.S.C. § 101.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5–8, 11,
12, 14–18
102(a)(1) Cohn 1–3, 5–8, 11,
12, 14–18
1–20 101 Eligibility 1–20
Overall
Outcome
1–20

REVERSED