Ex Parte Czompo et al

Patent Trial and Appeal BoardAug 4, 2017

13309519 (P.T.A.B. Aug. 4, 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. 13/309,519 12/01/2011 Joseph CZOMPO Q110598Ulvk 1555 73859 7590 08/08/2017 Silicon Valley Patent Group LLP Attn: Client QCM 4010 Moorpark Avenue Suite 210 San Jose, CA 95117 EXAMINER BARBEE, MANUEL L ART UNIT PAPER NUMBER 2864 NOTIFICATION DATE DELIVERY MODE 08/08/2017 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): ocpat_uspto@qualcomm.com qualcomm_PAIR @ s vpatentgroup. com B WYMAN @ S VP ATENTGROUP. COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH CZOMPO, ASHUTOSH JOSHI, SHANTA PAVAN NAMBURI, and DISHA AHUJA Appeal 2016-007041 Application 13/309,5191 Technology Center 2800 Before JEFFREY T. SMITH, BRIAN D. RANGE, and JENNIFER R. GUPTA, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—35. We have jurisdiction. 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is QUALCOMM Incorporated. Appeal Br. 4. Appeal 2016-007041 Application 13/309,519 STATEMENT OF THE CASE2 Appellants describe the invention as relating to an apparatus and method for providing an improved heading estimate of a mobile device. Abstract. In particular, the described invention makes use of inertial data for the device (i.e., measurements of acceleration) to determine whether or not a device is mounted in a vehicle. Spec. 110. The location reference system may be adjusted depending on whether or not the device is mounted. Spec. 1110, 97. Claim 1 is illustrative of the claimed subject matter: 1. A method in a mobile device to detect if the mobile device is unmounted, the method comprising: receiving, in the mobile device, accelerometer measurements; determining, by the mobile device, an average of the accelerometer measurements; computing a parameter based on the accelerometer measurements and the average; computing a variance of the parameter; comparing the variance to a threshold; and declaring, by the mobile device, the mobile device is unmounted based on the variance being greater than the threshold. Appeal Br. 37 (Claims App’x). Claim 4 is similar but is directed to an apparatus and also recites, for example, “an inertial measurement unit comprising an accelerometer.” Id. at 38. 2 In this opinion, we refer to the Final Office Action dated May 22, 2015 (“Final Act.”), the Appeal Brief filed November 6, 2015 (“Appeal Br.”), the Examiner’s Answer dated May 6, 2016 (“Ans.”), and the Reply Brief filed July 6, 2016 (“Reply Br.”). 2 Appeal 2016-007041 Application 13/309,519 The patent application addressed in this decision is related to Patent Application No. 13/309,520 addressed by our decision in Appeal 2016- 007288. REJECTION On appeal, the Examiner maintains rejection of claims 1—35 as unpatentable under 35 U.S.C. § 101. Final Act. 2; Ans. 2. ANALYSIS The Examiner rejects all claims on appeal as unpatentable under 35 U.S.C. § 101 based upon the claims being directed to abstract ideas. Final Act. 2; Ans. 2. The Examiner states, for example, that “Claim 1 ... is directed to determining, by the mobile device, an average of the accelerometer measurements; computing a parameter based on the accelerometer measurements and the average; computing a variance of the parameter; and comparing the variance to a threshold.” Ans. 3. The Examiner then states that “each of claims 1—35 include limitations that involve a mathematical relationship or formula, which are abstract ideas.” Id. at 6. Appellants argue that the claims on appeal are not directed to an abstract idea and also argue that the claims recite elements that amount to significantly more than an abstract idea. Appeal Br. 27—29. Appellants further argue that the claims are “rooted in location determination technology to overcome a problem specifically arising with location determination devices. . . .” Id. at 35—36 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); see also Reply Br. 7 3 Appeal 2016-007041 Application 13/309,519 (comparing claims at issue to those of Enfish LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016))3. On the present record, Appellants’ arguments persuade us of Examiner error. The Examiner bears the initial burden of presenting a prima facie case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). To determine whether an invention claims ineligible subject matter requires the application of the two-step test first introduced in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012) and further explained in Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014). The first step requires a determination as to whether the claims at issue are directed to a patent-ineligible concept such as an abstract idea. See Alice, 134 S. Ct. at 2355. The second step requires examination of “the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Id. at 2357 (quoting Mayo 132 S. Ct. at 1294, 1298). For the first step, the Examiner indicates the claims are directed to “the abstract idea of computing a variance of the parameter and comparing the variance to a threshold.” Final act. 2. As to the second step, the Examiner has not adequately explained why the recitations of the claims fails to describe an inventive concept sufficient to transform the alleged abstract idea into a patent-eligible application. In other words, the Examiner has not adequately explained why the recitations of the claims as a whole are directed to abstract ideas rather than being more akin to claims our 3 Although decided after this matter’s briefing, we also make note of our reviewing court’s decision in Thales Visionix Inc. v. U.S., 850 F.3d 1343 (Fed. Cir. 2017) (holding that claims directed to system for tracking object’s motion with two inertial sensors were patent eligible). 4 Appeal 2016-007041 Application 13/309,519 reviewing court has previously deemed patent eligible. See, e.g., DDR Holdings, LLC, 773 F.3d at 1257 (holding claims patent eligible where they were “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks”); see also Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355, n.3 (2014) (“patent claims must be considered as a whole”) (internal quotation marks and citation omitted). Accordingly, we do not sustain the Examiner’s rejection. DECISION For the above reasons, we reverse the Examiner’s rejection of claims 1-35. REVERSED 5