Ex Parte Caballero et alDownload PDFPatent Trial and Appeal BoardMay 15, 201712204739 (P.T.A.B. May. 15, 2017) Copy Citation 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. 12/204,739 09/04/2008 Ruben Caballero P6822US1 5535 65015 7590 05/17/2017 Trev7 T aw frmim EXAMINER 870 Market Street, Suite 984 SAN FRANCISCO, CA 94102 PATEL, NEHA ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 05/17/2017 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): docket @ treyzlawgroup. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RUBEN CABALLERO and ROBERT J. HILL Appeal 2015-005372 Application 12/204,739 Technology Center 3600 Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL1 The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1—3, 5—7, 10-12, 14, 15, and 17—24. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Throughout this opinion, we refer to the Appellants’ Appeal Brief (“Appeal Br.,” filed July 1, 2014) and Specification (“Spec.,” filed Sept. 4, 2008), and to the Examiner’s Answer (“Ans.,” mailed July 17, 2014) and Final Action (“Final Act.,” mailed Dec. 31, 2013). 2 According to the Appellants, the real party in interest is Apple, Inc. Appeal Br. 2. Appeal 2015-005372 Application 12/204,739 STATEMENT OF THE CASE The Appellants’ invention “relates to electronic devices, and more particularly, to circuitry for determining the location of electronic devices.” Spec. 2. Claims 1,6, 18, and 21 are the independent claims on appeal. Claim 1 (Appeal Br. 26 (Claims App.)) is illustrative of the subject matter on appeal, and is reproduced below: 1. A portable electronic device having a housing, comprising: a global navigation satellite system receiver that produces satellite location data from received satellite signals; an accelerometer in the housing that detects movement of the portable electronic device and that produces corresponding accelerometer signals; a sensor with a magnetic element that measures how the portable electronic device is oriented with respect to the Earth's magnetic field and that produces corresponding compass signals; and processing circuitry in the housing that computes where the portable electronic device is geographically located based on the satellite location data, the accelerometer signals, and the compass signals, wherein the processing circuitry in the portable electronic device uses at least the compass signals to compute a geographic location of the portable electronic device and wherein the processing circuitry in the portable electronic device uses the compass signals at least to compute a heading change of the portable electronic device. REJECTIONS I. Claims 7, 14, and 17 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 2. 2 Appeal 2015-005372 Application 12/204,739 II. Claims 7, 14, and 17 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Id. at 3. III. Claims 1, 5—7, 10—12, 14, 15, 17, 18, 21, and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over by Batcheller et al. (US 2007/0020588 Al, pub. Jan. 25, 2007) (“Batcheller”). Id. at 4. IV. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Batcheller and Croyle et al. (US 6,308,134 Bl, iss. Oct. 23, 2001) (“Croyle”). Id. at 19. V. Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Batcheller and Singh (US 2008/0224659 Al, pub. Sept. 18,2008). Id. at 21. VI. Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Batcheller and Mealy et al. (US 2008/0215286 Al, pub. Sept. 4, 2008) (“Mealy”). Id. at 22. ANALYSIS Rejection I— Written Description3 To satisfy the written description requirement, the specification must describe the invention in sufficient detail so “‘that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought,’” {In re Alonso, 545 F.3d 1015, 1019 (Fed. Cir. 2008) (quotingLockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)), i.e., “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date” (Ariad 3 The rejections are addressed in the order presented in the Final Action. 3 Appeal 2015-005372 Application 12/204,739 Pharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing Vas—Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed.Cir.1991)). The Examiner rejects dependent claims 7, 14, and 17 on the ground that the Specification does not provide a written description disclosure to support the limitation of “at least one sensor comprises at least two sensors.” See Final Act. 2. The Examiner finds that “[wjhile box 41 of fig. 2, shows sensors, it does not support ‘at least one sensor comprises at least two sensors.’” Ans. 7. We disagree. The Specification discusses, at page 14, “sensors 41 such as proximity sensors and ambient light sensors.” Figure 2 further shows a schematic diagram of the device with a box 41 indicating “sensors (e.g., single and multi-axis sensors for measuring angular orientation and acceleration).” Thus, we agree with the Appellants that the Specification provides adequate support to reasonably convey to one of skill in the art that the Appellants had possession of the claimed invention of two sensors at the time the present application was filed. See Appeal Br. 17—18.4 Based on the foregoing, we are persuaded of error in the Examiner’s rejection, and we do not sustain the Examiner’s rejection of claims 7, 14, and 17 under 35U.S.C. § 112, first paragraph. Rejection II—Indefiniteness The Examiner further rejects dependent claims 7, 14, and 17 as being indefinite on the ground that “[i]t is unclear, in the instance[] when ‘at least one sensor’ is interpreted as one sensor, how can it comprise^ at least two 4 As the Examiner notes (Ans. 7), Figure 4 does not show a box 41, but Figure 2 does. As such, we consider the Appellants’ argument as directed to Figure 2. 4 Appeal 2015-005372 Application 12/204,739 sensors? Similarly, in the instance[] when ‘at least one sensor’ is interpreted as two sensors, how can it comprise^ three sensors? etc.” Final Act. 3; Ans. 7. We agree with the Appellants that the claims are not indefinite. We agree that one of ordinary skill in the art would understand that “at least one sensor” can include one or more, i.e., two, three, etc., sensors. Appeal Br. 18, 20—21. The Examiner’s concerns appear to be directed to matters of claim breadth, not indefiniteness. “Breadth is not indefiniteness.” In re Gardner, All F.2d 786, 788 (1970). Therefore, we are persuaded of error in the Examiner’s rejection, and we do not sustain the Examiner’s rejection of dependent claims 7, 14, and 17 under 35 U.S.C. § 112, second paragraph. Rejection III— Obviousness: Claims 1, 5-7, 10-12, 14, 15, 17, 18, 21, and 24 Claims E 5—7, 10-12, 14, 15, 18, 21, and 24 The Appellants contend that the Examiner’s rejection of claim 1 is in error because Batcheller does not “anticipate” the “‘processing circuitry in the housing that computes where the portable electronic device is geographically located,’ as recited in claim 1.” Appeal Br. 10. Specifically, the Appellants argue that the application of Batcheller “computes where the mobile sensor 10 was geographically located,” rather than computing where the device is geographically located, as recited in claim 1. Id. at 11. The Appellants further argue that one skilled in the art would be taught away from combining Batcheller’s handheld computing device 30 and the accelerometer in mobile sensor 30 in a single housing. See id. at 12—13. We 5 Appeal 2015-005372 Application 12/204,739 have reviewed the Appellants’ arguments as presented in the Appeal Brief and find them unpersuasive of error on the part of the Examiner. The Examiner finds, in relevant part, that Batcheller teaches a portable housing device comprising an accelerometer and a sensor within the housing and a processing circuitry that computes where the device is geographically located. See Final Act. 5—6 (citing Batcheller || 30, 54—63, 71, Fig. 6). The Examiner acknowledges that Batcheller does not disclose the housing incorporating the accelerometer and processing circuity within, but determines “it would have been obvious to use a single housing design in the device of Batcheller,” because it would “provide^ improvements in efficiency and cost.” Id. at 6—7. We find unpersuasive the Appellants’ argument that Batcheller does not teach computing where the sensor is located. See Appeal Br. 11. As the Appellants acknowledge {id. at 11—12), Batcheller discloses that sensor data regarding the movement of the body, including GPS data, can be transferred real-time to the computing device to provide immediate feedback including “a realistic graphical depiction of the flight in progress.” Batcheller || 24, 71, 76—77. Thus, we find adequately supported the Examiner’s finding that Batcheller teaches circuitry that computes where the device is geographically located. We also find unpersuasive the Appellants’ argument that one of ordinary skill in the art would be led away from modifying Batcheller to combine the handheld device 30 and the mobile sensor 10 into a single housing because Batcheller discloses that having a processing power of a desktop computer takes the burden away from the mobile sensor “thus reducing the cost and complexity of the mobile sensor 10.” Appeal Br. 12. 6 Appeal 2015-005372 Application 12/204,739 Batcheller’s acknowledgement of an advantage of a desktop computer does not lead one away from using a portable computer. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.”). Batcheller considers that the handheld device with the processor “would be co-located with the mobile sensor 10,” and would have an application similar to that of the desktop computer. Batcheller 177. Batcheller further considers the advantages of doing so in “allowing the pilot to view their ongoing flight from any angle and to display analytical information during the flight” (id) and in “providing] real-time, immediate feedback to the operator or instructor on an ongoing flight or trip” (id. 124). Thus, Batcheller does not criticize, discredit, or otherwise discourage having the processing circuitry in one housing. See Gurley, 27 F.3d at 553. Similarly, we find unpersuasive the Appellants’ argument that one of skill in the art would be taught away from modifying Batcheller to combine the device and sensor into a single housing because doing so “would render Batcheller inoperable for its intended purpose as the device could not be both mounted to the aircraft while simultaneously presenting flight information to a pilot operating the aircraft.” Appeal Br. 13. As noted above, Batcheller discloses the device being co-located with the sensor with the advantages of allowing the pilot to view data and of providing real-time data to the operator or instructor on an ongoing flight or trip. Batcheller 1124, 77. We do not see, and the Appellants do not indicate, where Batcheller discloses that the sensor must be mounted to the aircraft such that it cannot be viewable by the operator or instructor. Rather, Batcheller 7 Appeal 2015-005372 Application 12/204,739 discloses that “[t]he mobile sensor is contained in an enclosure 19,” (id. 122), and that a user turns the mobile sensor on to begin operating the sensor and presses the record button to begin acquiring data (id. 147), indicating that the sensor must be reachable and viewable by a user. Combining the sensor and device into one unit would not render Batcheller inoperable for the purpose of using the sensor to collect data and analyzing and displaying flight information to the operator or instructor. Cf. Appeal Br. 13. Thus, we are not persuaded of error on the part of the Examiner, and we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103. The Appellants rely on the arguments presented for claim 1 to contest the Examiner’s rejection of claims 5—7, 10—12, 14, 15, 18, 21, and 24. See Appeal Br. 13—14, 16—17. Thus, for the same reasons as for claim 1, we also sustain the rejection of claims 5—7, 10-12, 14, 15, 18, 21, and 24. Claim 17 We find unpersuasive the Appellants’ argument that Batcheller does not teach “displaying navigation directions for a user,” as recited in claim 17. See Appeal Br. 19. In the Final Action (pages 13—14), the Examiner cites to paragraphs 54 through 73 as disclosing the limitations of claim 17, including displaying navigation directions. In the Answer (pages 7—8), the Examiner more specifically relies on paragraphs 75 and 76 of Batcheller and notes that the “[cjlaim does not specify what kind of navigation direction is displayed.” The cited paragraphs of Batcheller disclose that flight data is displayed in real-time on a handheld device, serving as “a visual flight aid to 8 Appeal 2015-005372 Application 12/204,739 provide additional flight data and analysis to a pilot while the flight is in progress.” Batcheller 176. The Appellants do not provide adequate evidence or technical reasoning why the visual flight aid, with flight data and analysis, does not comprise “navigation directions.” Thus, we are not persuaded of error on the part of the Examiner, and we sustain the Examiner’s rejection of dependent claim 17 under 35U.S.C. § 103. Rejection IV— Obviousness: Claims 2 and 3 Claim 2 The Appellants rely on the arguments presented for claim 1 to contest the Examiner’s rejection of claim 2. See Appeal Br. 13—14. Thus, for the same reasons we found the arguments unpersuasive for claim 1, we find them unpersuasive here and sustain the rejection of claim 2. Claim 3 We are persuaded that the Examiner erred in rejecting claim 3 under § 103(a). See Appeal Br. 16. The Examiner cites Croyle at column 10, lines 12 through 31, for disclosing an accelerometer with a vibrating element, as called for in claim 3. Final Act. 20. Yet it clearly appears from the Examiner’s discussion of Croyle that the Examiner actually intended to reference Croyle at column 9, lines 31 through 45. There, Croyle discloses the vehicle navigation system determining a zero motion state by comparing sample of the motion signals from a motion sensor such as an accelerometer with a threshold determined by the vehicle vibration characteristics. See id. However, the Examiner has not adequately explained, and we do not see from the face of the reference, how the comparison of a motion signal from 9 Appeal 2015-005372 Application 12/204,739 an accelerometer with a threshold determined by vehicle vibration characteristics discloses an accelerometer with a vibrating element. Thus, we are persuaded of error on the part of the Examiner, and we do not sustain the Examiner’s rejection of dependent claim 3 under 35 U.S.C. § 103. Rejection V— Obviousness: Claims 19 and 20 Claim 19 The Appellants rely on the arguments presented for claim 1 to contest the Examiner’s rejection of claim 19. See Appeal Br. 21. Thus, for the same reasons we found the arguments unpersuasive for claim 1, we find them unpersuasive here and sustain the rejection of claim 19. Claim 20 We are persuaded by the Appellants’ argument that the Examiner erred in rejecting claim 20 under § 103(a) because the Examiner has not adequately shown that Singh discloses displaying a map and a visual indicator of current geographic location. See Appeal Br. 23. The Examiner cites Singh, paragraph 38, for displaying a map and visual indicator of current geographic location. Final Act. 21. As the Appellants point out, paragraph 38 of Singh discloses displaying “current location operations information.” The Examiner has not adequately explained, and we do not see from the face of the reference, how displaying the “current location operations information” discloses a map and a visual indicator of current geographic location. Thus, we are persuaded of error on the part of the Examiner, and we do not sustain the Examiner’s rejection of dependent claim 20 under 35 U.S.C. § 103. 10 Appeal 2015-005372 Application 12/204,739 Rejection VI— Obviousness: Claims 22 and 23 The Appellants rely on the arguments presented for claim 1 to contest the Examiner’s rejection of claims 22 and 23. See Appeal Br. 24—25. Thus, for the same reasons we found the arguments unpersuasive for claim 1, we find them unpersuasive here and sustain the rejection of claims 22 and 23. DECISION The Examiner’s rejections of claims 7, 14, and 17 under 35 U.S.C. § 112 are REVERSED. The Examiner’s rejections of claims 1, 2, 5—7, 10-12, 14, 15, 17—19, and 21-24 under 35 U.S.C. § 103(a) are AFFIRMED. The Examiner’s rejections of claims 3 and 20 under 35 U.S.C. § 103(a) are REVERSED. 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-IN-PART 11 Copy with citationCopy as parenthetical citation