Ex Parte MUECK et al

Patent Trial and Appeal Board

Feb 27, 2019

14851710 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/851,710
114746 7590
Apple Inc. -- FKM
150 Broadway
Suite 702
FILING DATE
09/11/2015
03/01/2019
New York, NY 10038
FIRST NAMED INVENTOR
Markus MUECK
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.
30134/01703 (P6837USC2) 2834
EXAMINER
NGUYEN, DINH
ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
mmarcin@fkmiplaw.com
preisch@fkmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKUS MUECK, MAR TIN HANS,
MAIK BIENAS, and ANDREAS SCHMIDT
Appeal 2018-005361 1
Application 14/851, 710
Technology Center 2600
Before ALLEN R. MACDONALD, JEREMY J. CURCURI, and
JAMES B. ARPIN, Administrative Patent Judges.
ARPIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants2 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 44--62 and 64, all of the claims pending in the application. Final
1 In this Decision, we refer to Appellants' Appeal Brief, filed October 30,
2017 ("Br."), and Reply Brief, filed April 27, 2018 ("Reply"); the Final
Office Action, mailed May 30, 2017 ("Final Act."); the Examiner's Answer,
mailed February 27, 2018 ("Ans."); and the Specification, filed September
11, 2015 ("Spec."). Rather than repeat the Examiner's findings and
determinations and Appellants' contentions in their entirety, we refer to
these documents.
2 Appellants indicate the real party-in-interest is Apple Inc. Br. 2.
Appeal 2018-005361
Application 14/851, 710
Act. 2. Claims 1--43 and 63 are canceled. Id. We have jurisdiction under
35 U.S.C. § 6(b). 3
We reverse.
STATEMENT OF THE CASE
The Specification states that:
The present invention relates generally to the field of
wireless communication networks. More particularly, in one
exemplary aspect, the present invention is directed to methods
and apparatus for operation of a Single Frequency Network
(SFN) using signal "shaping" to enable resolving individual
signal components, such as for services including location
determination.
Spec., 1:16-20; see id. at 23:10-24:22, Fig. 3B. Claims 44, 53, and 58 are
independent. Br. 24 (claim 44), 25 (claim 53), 26 (claim 58) (Claims App.).
Claims 43-52 and 64 depend directly from claim 44, claims 54--57 depend
directly from claim 53, and claims 59---62 depend directly from claim 58. Id.
at 14--27. Claim 44, reproduced below, is illustrative.
44. A non-transitory computer readable apparatus
comprising a storage medium storing at least one computer
program, the program comprising instructions which, when
executed by a processing device, enable location
determination within a wireless network, the instructions
compnsmg;
first instructions adapted to separate a data stream into a
unique component and a common component;
second instructions adapted to derive from the unique
component a parameter related to a physical path; and
3 We do not address the Examiner's objection to claims 44 and 50 in this
decision, as such objections are not proper subject matter for appeal. See
Final Act. 7-8; Br. 3 n.1.
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Application 14/851, 710
third instructions adapted to generate an indication of a
physical location.
Id. at 24 ( disputed limitation emphasized).
REFERENCES AND REJECTIONS
The Examiner relies upon the following references in rejecting the
pending claims:
Name
Ogino4
Yang
Publ. No. Publ. Date
US 2002/0004398 Al Jan. 10, 2002
US 2009/0005084 Al Jan. 1, 2009
Filing Date
Feb. 13,2001
June 28, 2007
Claims 44---62 and 64 stand rejected as unpatentable under 35 U.S.C.
§ 101 as directed to patent ineligible subject matter. 5 Final Act. 8-9.
Claims 44--51, 53-56, 58---62, and 64 stand rejected as unpatentable under 35
U.S.C. § I02(b) as anticipated by Ogino. Id. at 10-14. Claims 52 and 57
stand rejected as unpatentable under 35 U.S.C. § I03(a) as rendered obvious
over the combined teachings of Ogino and Yang. Id. at 14--15.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
4 All reference citations are to the first named inventor only.
5 The Examiner made two separate rejections under 35 U.S.C. § 101, but
withdrew the patent eligibility rejection of claims 44--52 and 64, which
claims the Examiner incorrectly found to include "a transitory signal" within
their scope. Final Act. 8-11; Ans. 2. Appellants incorrectly contend that the
Examiner withdrew both rejections under 35 U.S.C. § 101. Reply 2.
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Application 14/851, 710
A. Issues
ANALYSIS
1. Does the Examiner err in finding that the pending claims are
directed to a judicial exception of an abstract idea?
2. Does the Examiner err in finding Ogino discloses each and every
element of the independent claims?
We have reviewed the Examiner's rejections in light of Appellants'
Appeal and Reply Brief arguments that the Examiner has erred.
B. Patent Eligible Subject Matter
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court's two-step framework, described in Mayo and Alice.
Id. at 217-218 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first
determine what concept the claim is "directed to." Alice, 573 U.S. at 219
("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
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Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219--220; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--595 (1978));
and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S.
17 5, 192 (1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing
India rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56
U.S. 252, 267-268 (1854))); and manufacturing flour (Benson, 409 U.S. at
69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
-if the claim is "directed to" an abstract idea, we then tum to the
second step of the Alice and Mayo framework, where "we must examine 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." Alice, 573 U.S. at 221 ( quotation marks omitted); see
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016)
("Because the claims are not directed to an abstract idea under step one of
the Alice analysis, we do not need to proceed to step two of that analysis.").
"A claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Alice, 573 U.S. at221 (quoting Mayo, 566
U.S. at 77).
1. Subject Matter Eligibility Guidance
The Office recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
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Reg. 50 (Jan. 7, 2019). 6 Under that guidance, we first look to whether the
claim recites:
(1) Step 2A - Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain
methods of organizing human interactions, such as a fundamental
economic practice, or mental processes); and
(2) Step 2A-Prong Two: additional elements that integrate the
judicial exception into a practical application (see MPEP7 § 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 are 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.
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
at 56 ("Step 2B: If the Claim Is Directed to a Judicial Exception, Evaluate
Whether the Claim Provides an Inventive Concept").
6 This guidance supersedes previous guidance memoranda. See 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 51 ("All
US PTO personnel are, as a matter of internal agency management, expected
to follow the guidance.").
7 All Manual of Patent Examining Procedure (MPEP) citations herein are to
MPEP Rev. 08.2017, January 2018.
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2. Alice/Mayo Step 1
Applying step 1 of the Alice/Mayo analysis, the Examiner concludes
the claims are directed to a process comprising a series of steps
of separating a data streams into a unique component and a
common component; deriving from the unique component a
parameter related to a physical path; generating an indication of
a physical location. The claimed invention is directed to an
abstract idea because it is simply the organization and
comparison of data which can be performed mentally, which is
an idea of itself It is similar [to] concepts that have been
identified as abstract by the courts, such as using categories to
organize, store and transmit information, or comparing new and
stored information and using rules to identify options.
Final Act. 9 ( emphasis added). In particular, the Examiner explains
the claimed method is directed to an abstract idea because, for
example, one can read a piece of document (i.e., a data stream)
or a paragraph (i.e., a data stream) that filled with data such as
words, characters, numbers comprising such as Os and 1 s, Xs and
Os, etc. and to instruct himself using the mind (i.e., merely
thinking) to separate by recognizing different elements in the
paragraph and call different elements as a unique component and
a common component with some information and/or data
regarding a location or a place then arrive (derive) a physical path
related to a physical location or place, and generate in mind a
location of such place. It is further determined that the claimed
method can be considered an abstract idea as identified by the
courts as "certain methods of organizing human activity" and
"an idea of itself" and that would be equivalent to the court cases
such as Collecting information, analyzing it, and displaying
certain results of the collection and analysis [ Electric Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)]), and
Collection, storage, and recognition of data ([Smart Systems
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364
(Fed. Cir. 2017)]), etc. Clearly, the entire process as recited in
the claim 44 is directed to an abstract idea.
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Ans. 3 (emphases added). Thus, the Examiner concludes that the method
steps and instructions recited in the independent claims are directed to
mental processes or to certain methods of organizing human interactions.
Appellants contend that:
A data stream is not some abstract notion but, rather, any quantity
exhibiting variation in time or space, such as digital or analog
signals. In short, a data stream is a physical entity, and not a
product of mere human thinking. Further, the processing device
of claim 44 does not implement a generic computer function such
as an idea that could be done by human analog because a human
cannot receive a data stream and separate the data stream into a
unique component and a common component, nor can human
analog produce the remaining limitations of claim 44.
Br. 9 ( emphasis added). The Examiner has attempted to identify a substitute
for each of the components in the claims, e.g., a document or paragraph for
the "data stream" and words, characters, or numbers therein for the
"common" and "unique" components, to explain how the recited method
steps and instructions could be performed by the human mind. Although
these substitutes may provide an example of the separating step, for the
reasons given by Appellants, we are not persuaded that the Examiner has
demonstrated that the remaining steps of deriving a parameter from the
unique component or generating a physical location from the parameter are
mental processes, i.e., concepts performed in the human mind, such as an
observation, evaluation, judgment, or opinion. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. at 52.
Additionally or alternatively, the Examiner concludes that the claims
are directed to "certain methods of organizing human interactions." Ans. 3.
Nevertheless, we are not persuaded that the Examiner has demonstrated that
determining the physical location of a user's device, separate and apart from
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the location of other persons or places, or both, is an example of "Certain
methods of organizing human activity- ... managing personal behavior or
relationships or interactions between people (including social activities,
teaching, and following rules or instructions)." 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. at 52 (emphasis added); see Br. 4--
5; see also Spec., 20:22-24 ("Once the UE has determined the distinct CIR,
the UE can estimate relative distances from each BS, and subsequently can
triangulate to generate an estimate of its location."). Thus, we are not
persuaded that the Examiner has demonstrated that the claims are directed to
an abstract idea. Consequently, the Examiner erred in finding the recited
computer-readable media, methods, and devices are patent ineligible, and we
do not sustain the Examiner's rejection of independent claims 44, 5 3, and
58, or the claims dependent therefrom, under 35 U.S.C. § 101.
C. Failure to Demonstrate Anticipation by Ogino
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628,631
(Fed. Cir. 1987). The elements must be arranged as required by the claim,
but this is not an ipsissimis verb is test. See In re Bond, 910 F .2d 831, 832
(Fed. Cir. 1990). Nevertheless,
unless a reference discloses within the four comers of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the
thing claimed and, thus, cannot anticipate under 35 U.S.C.
§ 102.
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Net Money!N, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008);
accord In re Arkley, 455 F.2d 586 (CCPA 1972).
With respect to claim 44, the Examiner finds that Ogino discloses
"second instructions adapted to derive from the unique component a
parameter related to a physical path." Final Act. 11; Ans. 17. In particular,
the Examiner finds that
as noted in the Final action, Ogino discloses second instructions
adapted to derive from the unique component a parameter ([fig
11] BS_ID) related to a physical path ([0065] mobile station can
easily identify the sector that is transmitting the PN sequences it
received and obtain the sector ID). That is, mobile station can
identify the sector and obtain its ID such as the BS_ID related to
a particular base station. As shown in Figure 11, each base
station at a different location transmitting in different paths the
PN sequences. Hence the BS_! Dis the unique component and
a parameter itself related to a physical path as claimed.
Ans. 17 ( emphasis added). Thus, the Examiner finds that the unique
component and the parameter derived from the unique component are
disclosed by the same element used in Ogino' s location system.
Appellants disagree and contend that:
In the Examiner's Answer, for the first time in prosecution, the
Examiner has provided a further explanation as to why the
Examiner believes these portions of Ogino teach the above
recited portion of claim 44. Specifically, the Examiner asserts
that since the mobile station can identify the sector that is
transmitting and obtain its ID such as the BS_ID related to a
particular base station and each base station is at a different
location transmitting in different paths the PN sequences, the
BS_ID is the unique component and a parameter itself related to
a physical path. (See [Ans. 17].)
Reply 4 ( emphasis added). Specifically, Appellants contend that:
It appears that the Examiner's analysis ignores the recited
relationship between ["the unique component" and "a parameter
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related to a physical path."] Further, "the unique component"
and "a parameter related to a physical path" are two distinct
claim elements and thus, the Examiner's reliance on a single
element (BS_ID) to teach two distinct claim elements fails to
demonstrate that Ogino teaches each and every element of claim
44 because the BS ID cannot be both, "the unique component"
and "a parameter related to a physical path."
Id. at 5. We agree.
The Examiner fails to demonstrate that "the unique component" and
"a parameter related to a physical path" both may read on Ogino' s disclosure
of the "BS_ID." Further, the language of each independent claim recites
that the "parameter related to a physical path" is derived from "the unique
component." Br. 24 (Claims App.). The Examiner fails to point to any
language in the claims stating or teaching from the Specification disclosing
that the parameter derived from the unique component may be the same as
the unique component. Because Appellants used different terms: "unique
component" and "parameter related to a physical path," in each of the
independent claims and describe the parameter as derived from the unique
component, and because the Examiner fails to demonstrate that the
Specification discloses that these terms may be the same thing, we are not
persuaded that the Examiner demonstrates that Ogino discloses this element
of the independent claims. 8
8 Ogino 's sector IDs or "reference time offsets associated with the sector
IDs" may disclose a "parameter" derived from the "unique component," i.e.,
the BS_ID, as recited in the independent claims. See Ogino ,r 65.
Nevertheless, the Examiner does not make either of these arguments or
demonstrate that either argument with respect to the "second instruction" of
claim 44 supports a determination that Ogino discloses each and every
element of the independent claims. See Ans. 18-19. We decline to perform
the analysis necessary to test such a determination here.
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Accordingly, we do not sustain the Examiner's anticipation rejections
of independent claims 44, 53, and 58. See Br. 22. The dependent claims are
not argued separately, and the rejections of those claims are not sustained for
the same reasons given for independent claims. See id.
D. Failure to Demonstrate Obviousness Over Ogino and Yang
The Examiner relies on the anticipation rejections with respect to
independent claims 44 and 53 based on Ogino to support its obviousness
rejections of dependent claims 52 and 57, respectively, based on the
combined teachings of Ogino and Yang. Final Act. 14--15. For the reasons
set forth above, we are not persuaded that Ogino anticipates claim 44 or 53.
Thus, we are not persuaded that the Examiner demonstrates that the
combined teachings of Ogino and Yang render claims 52 and 57 obvious,
and we do not sustain the Examiner's obviousness rejections of those claims.
CONCLUSIONS
(1) The Examiner erred in rejecting claims 44--62 and 64 under
35 U.S.C. § 101, as directed to patent-ineligible subject matter.
(2) The Examiner erred in rejecting claims 44--51, 53-56, 58-62, and
64 under 35 U.S.C. § 102(b), as anticipated by Ogino.
(3) The Examiner erred in rejecting claims 52 and 57 under 35 U.S.C.
§ 103(a), as rendered obvious by the combined teachings of Ogino and
Yang.
( 4) On this record, claims 44--62 and 64 are not unpatentable.
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DECISION
We reverse the Examiner's rejections of claims 44---62 and 64.
REVERSED
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