Ex Parte Janardhanan et al

Patent Trial and Appeal Board

Aug 21, 2018

13302329 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/302,329 11/22/2011
23494 7590 08/23/2018
TEXAS INSTRUMENTS IN CORPORA TED
PO BOX 655474, MIS 3999
DALLAS, TX 75265
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Jayawardan Janardhanan
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.
TI-70222 2253
EXAMINER
ANDERSON, LYNNE D
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY AW ARDAN JANARDHANAN, SANDEEP RAO,
and GOUTAM DUTTA
Appeal2017-011080
Application 13/302,329 1
Technology Center 2800
Before KAREN M. HASTINGS, MONTE T. SQUIRE, and
SHELDON M. McGEE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's final rejection of claims 1, 3-21, 23-38, and 40-49 under
35 U.S.C. § 101. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Texas Instruments Incorporated is identified as the real party in interest.
Br. 2.
2 The rejection under 35 U.S.C. § 112 was withdrawn by the Examiner (see,
Advisory Action mailed Dec. 13. 2016, p. 9).
Appeal2017-011080
Application 13/302,329
THE INVENTION
Claim 21, reproduced below, is illustrative of the subject matter on
appeal.
21. An electronic circuit for use with an accelerometer,
the electronic circuit comprising:
a nonvolatile memory having stored representations of
instructions to generate a signal stream representing magnitude
of acceleration, to electronically correlate a sliding window of
the signal stream with itself to produce peaks at least some of
which represent walking steps, and to electronically execute a
periodicity check to compare different step periods, and to
update a walking-step count;
a sensor input port;
a display port; and
a processor circuit programmably operable in response to
the instructions in said nonvolatile memory for at least addition
and multiplication and conditional operations responsive to said
sensor input port, thereby to effectuate the instructions and
drive said display port;
wherein the periodicity check includes such instructions
to electronically record relative times of successive peaks, and
execute a search of pairs of the times over those peaks to find a
succession of peaks that are at an equal interval from each
other based on the relative times, and to generate an estimate
of walking-step length as a function of that interval.
Br. 23 (Claims Appendix) ( emphasis added).
Independent claim 1 is directed to a system for pedestrian use
comprising an accelerometer and an electronic circuit operable to perform
instructions substantially identical to that of claim 21 (Br. 20 (Claims
Appendix)). Independent claim 38 is similarly directed to a process
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implemented using an electronic circuit substantially the same as in claims 1
and 21 (Br. 26 (Claims Appendix)).
While Appellants address each independent claim in a separate
section of the brief, the arguments presented are substantially the same for
each of claims 1, 21, and 38 (Appeal Br. 7-18). We therefore select claim 21
as representative.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by the Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). After considering
the evidence presented in this Appeal and each of Appellants' arguments, we
are not persuaded that Appellants identify reversible error. Thus, we affirm
the Examiner's rejection for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 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
determined that the claims are directed to calculating a result based on
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Application 13/302,329
performing mathematical calculations, and therefore concluded that the
subject matter of the claims is directed to the judicial exception of abstract
ideas. Ans. 3-5; Final 3-5.
Appellants challenge the Examiner's articulation of what the claims are
directed to by arguing that each claim recites an electronic circuit which as a
machine is eligible subject matter, but the challenge is unfounded. See Appeal
Br. 12-13; Reply Br. 2-3. For example, the fact that the preamble of the claim
21 indicates that it is for use with an accelerometer is not dispositive. The
question is what the claims are "directed to."
[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). In
this, as Appellants do not adequately dispute the Examiner's analysis that
the claims are directed to application of the mathematical operations
described in the Specification (Ans. 13, pointing out how the Specification
"is replete with mathematical formulae such as, for example, Equations (3)-
(9K)"). "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. DirecTV, 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.
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2016)). "In determining the eligibility of respondents' claimed process for
patent protection under§ 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
Accordingly, the claims as a whole, in light of the Specification, are
directed to performing mathematical calculations using theoretical
parameters to accurately predict the pedestrian walking step length and
count on an accelerometer, which is consistent with the Examiner's position
that the claim is directed to mathematical calculations ( e.g., Final 4--6; Ans.
5-9, 12-17).
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 (such as improving accelerometer technology) is insufficient
because there are no additional elements that are sufficient to amount to
significantly more than the judicial exception because the only additional
elements are all generic elements or conventional equipment required by the
claimed abstract idea at a high level of generality ( e.g., Ans. 11 ).
The Specification does not support Appellants' argument that the
additional elements comprise significantly more than the abstract idea of
performing mathematical calculations as part of a calibration process. The
claims employ conventional devices ( accelerometer, electronic circuit,
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Application 13/302,329
memory, display port, processor circuit) for their common functions.
Appellants do not sufficiently dispute the Examiner's determination that
these are conventional components of a pedestrian step counting system. Cf
Alice, 134 S. Ct. 2358 (citation omitted). "[T]he mere 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.
The Appellants further argue that the claims comprise significantly
more than mathematical calculations because an electronic circuit is a
machine, and "generating a signal stream" is not mathematical in nature, and
updating a step count is a tangible result (Br. 12). Appellants, however, do
not persuasively argue why the additional elements of the claim (beyond
calculating) are not routine or conventional. Appellants do not respond to
the Examiner's discussion of how the ideas in the claims are comparable to
those in Parker v. Flook, 437 U.S. 584 (1978) and in Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) "as it appears that the
claim is reciting the collection, and analysis of received data, and display of
the analyzed data, as evidenced by the specification as originally filed" (Ans.
15). The Court based its determination that the claims were non-statutory in
Flook upon the conclusion that "[ r ]espondent' s application simply provides
a new and presumably better method for calculating alarm limit values,"
citing "if a claim is directed essentially to a method of calculating, using a
mathematical formula, even if the solution is for a specific purpose, the
claimed method is nonstatutory. In re Richman, 563 F .2d 1026, 1030
(1977)." Id. at 595-596. Therefore, the limitations of Appellants' claims
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are non-statutory because, like the claims in Flook, the limitations of
Appellants' claims are directed to mathematical calculations using
theoretical parameters to determine values of estimated walking-step length
as a function of a specified time interval. Accordingly, Appellants'
arguments that the claims comprise significantly more than the abstract idea
are not persuasive.
It is noted that the claims in Thales Visionix Inc. v. United States, 850
F.3d 1343 (Fed. Cir. 2017) were held to be patent eligible and were directed
to reducing errors in measuring the relative position and orientation of a
moving object on a moving reference frame (id. at 1348--49). However, the
claims in Thales differ from Appellants' claims in that they comprise "the
unconventional utilization of inertial sensors" (id. at. 1349) operating in a
"non-conventional manner" (id. at 1349--50), whereas Appellants' claims
comprise conventional processors, memory, and measurement equipment.
Therefore, the claims in Thales were found to be patent eligible because the
claims recited an "unconventional configuration of sensors" (id. at 1349), or
non-generic machines, being used in an unconventional manner, while, as
correctly pointed out by the Examiner, Appellants' claims comprise generic
electronic/computer systems (Ans. generally).
Moreover, our reviewing court recently reaffirmed that if the focus of
the claims "is on selecting certain information, analyzing it using
mathematical techniques, and reporting or displaying the results of the
analysis," that is all abstract and is patent ineligible subject matter. SAP
America v. Investpic, LLC, 890 F.3d 1016, 1021 (Fed. Cir. 2018). Similarly
to SAP America, the focus of the claimed subject matter here is not to any
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improved computer, but to an improved mathematical analysis to estimate
walking step length.
Thus, a preponderance of the evidence supports the Examiner's
conclusion that the limitations in Appellants' claims are directed to an
abstract idea and are non-statutory.
For the foregoing reasons, Appellants have 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 to be upon the ineligible concept itself.
The remaining arguments have been carefully considered but are
unpersuasive as to error in the rejection.
The rejection of claims 1, 3-21, 23-38, and 40-49 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter is sustained.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 3-21, 23-
3 8, and 40-49 are 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
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