Ex Parte Singer et al

Patent Trial and Appeal BoardApr 22, 2016

12765725 (P.T.A.B. Apr. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 121765,725 04/22/2010 David William Singer 65656 7590 04/26/2016 KILPATRICK TOWNSEND & STOCKTONLLP/Apple TWO EMBARCADERO CENTER 8THFLOOR SAN FRANCISCO, CA 94111-3834 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. 9091l-P7855US1-848231 1029 EXAMINER SAEED, USMAAN ART UNIT PAPER NUMBER 2169 NOTIFICATION DATE DELIVERY MODE 04/26/2016 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): ipefiling@kilpatricktownsend.com j lhice@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID WILLIAM SINGER, JOHN SAMUEL BUSHELL, THAL-WEY THEN, and CHRISTOPHER LANCE FLICK 1 Appeal2014-006725 Application 12/765,725 Technology Center 2100 Before: DEBRA K. STEPHENS, JASON V. MORGAN, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL Introduction Appellants appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1, 2, 4--9, 11, 27-29, 36, 37, 42, and 44--52. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. Technology The application relates to tagging a media file with location information, such as GPS information. App. Br. 4 (citing Spec. i-f 31 ). Some 1 According to Appellants, the real party in interest is Apple Inc. App. Br. 3. Appeal2014-006725 Application 12/765,725 embodiments of the disclosed invention try to help conserve battery life by only getting a GPS location if the device has moved more than a specified distance. See Spec. i-f 46. Representative Claim Claim 1 is representative and reproduced below with its key limitation emphasized: 1. A non-transitory machine-readable medium having executable instructions to cause one or more processing units to perform a method of generating a media file having timed location metadata, the method comprising: capturing, with an electronic device having a lens, a recording of media over a period of time, wherein the electronic device is moving among a plurality of different positions during the recording; measuring, by a motion sensor of the electronic device, movement of the electronic device; for each of a plurality of intervals during the recording: determining, with the electronic device, a distance that the electronic device moves during the interval based on data measured by the motion sensor; at a variable time determined based on the distance moved by the electronic device, determining, with positioning circuitry of the electronic device, a position associated with the captured media, the position corresponding to one of the plurality of different positions; and storing, with the electronic device, the captured media and the plurality of determined positions in the media file comprising at least two tracks, wherein the captured media is stored in a first track and the plurality of determined positions are stored in a second track, wherein each portion of the media captured during each of the plurality of intervals corresponds to one of the plurality of determined positions. 2 Appeal2014-006725 Application 12/765,725 Rejection The Examiner rejects claims 1, 2, 4--9, 11, 27-29, 36, 37, 42, and 44-- 52 under 35 U.S.C. Â§ 103 as being unpatentable over Breed et al. (US 2009/ 0140887 Al, published June 4, 2009) in view of Date et al. (US 2009/ 0228508 Al, published Sept. 10, 2009). 2 Final Act. 4. ISSUE Did the Examiner err in finding Breed in view of Date teaches or suggests "at a variable time determined based on the distance moved by the electronic device, determining, with positioning circuitry of the electronic device, a position associated with the captured media" as recited in claim 1? ANALYSIS Claims 1, 2, 4-9, 11, 27-29, 36, 37, 42, and 44-52 Claim 1 requires "determining, with the electronic device, a distance that the electronic device moves during the interval based on data measured by the motion sensor," which is separate and apart from the limitation "at a variable time determined based on the distance moved by the electronic device, determining, with positioning circuitry of the electronic device, a position associated with the captured media." Appellants point out that the Examiner treats the "at a variable time" clause italicized above as part of the first limitation ("determining ... a distance") rather than the second where it belongs ("determining ... a 2 The Examiner withdrew the rejections of claims 46-48 based on 35 U.S.C. Â§ 112. Ans. 3. 3 Appeal2014-006725 Application 12/765,725 position"). App. Br. 10. We agree with Appellants that the Examiner erred in this regard. Final Act. 5; see also Ans. 7. Furthermore, the Examiner has not provided sufficient evidence that Breed teaches or suggests "at a variable time determined based on the distance moved." The Examiner cites paragraph 560 of Breed as saying a clock provides "a time base or time reference" (Final Act. 6), but the Examiner fails to show that Breed's clock's time base or time reference teaches or suggests a variable time determined based on distance moved. Similarly, the Examiner cites paragraph 103 of Breed as disclosing "variable values and time" (Final Act. 5), yet in context (i.e., an equation "based on the environmental variable values and time"), Breed's "variable" modifies only "values" rather than "time." Thus, the Examiner has not persuasively shown that any such time is "determined based on the distance moved." Appellants' arguments are persuasive with respect to this limitation. Accordingly, we do not sustain the Examiner's rejection of claim 1, and claims 2, 4--9, 11, 27-29, 36, 37, 42, and 44--52, which contain similar recitations. See App. Br. 11; 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013). DECISION For the reasons above, we reverse the Examiner's decision rejecting claims 1, 2, 4--9, 11, 27-29, 36, 37, 42, and 44--52. REVERSED 4