Ex Parte Caballero et al

Patent Trial and Appeal Board

May 15, 2017

12204739 (P.T.A.B. May. 15, 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.
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.
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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.
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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.
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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
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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.
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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
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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
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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
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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.
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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
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