TEXAS INSTRUMENTS INCORPORATED

Patent Trials and Appeals BoardOct 23, 2020

2019006555 (P.T.A.B. Oct. 23, 2020)

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. 13/745,714 01/18/2013 Sourabh Ravindran TI-71562 1047 23494 7590 10/23/2020 TEXAS INSTRUMENTS INCORPORATED P O BOX 655474, MS 3999 DALLAS, TX 75265 EXAMINER LEE, PAUL D ART UNIT PAPER NUMBER 2862 NOTIFICATION DATE DELIVERY MODE 10/23/2020 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 SOURABH RAVINDRAN Appeal 2019-006555 Application 13/745,714 Technology Center 2800 BEFORE ROMULO H. DELMENDO, KAREN M. HASTINGS, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–11 under 35 U.S.C. § 101 as being directed to judicially excepted subject matter. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Texas Instruments Incorporated. Appeal Br. 2. Appeal 2019-006555 Application 13/745,714 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A device for counting steps, the device comprising: a three-axis accelerometer; and a processor coupled to the three-axis accelerometer and configured to receive three-axis data, from the three-axis accelerometer, that includes data for each of a plurality of axes, perform a first polynomial filter operation on the data for each of the axes of the three-axis data to generate filtered samples for each of the axes, sum an absolute value of a filtered sample from each of the axes of the three-axis data to combine the three-axis data into a combined data stream, perform a second polynomial filter operation on the combined data stream to generate a filtered combined data stream, identify positive slope regions, in the filtered combined data stream, that have a positive slope and a magnitude that exceeds a positive amplitude threshold value, identify negative slope regions, in the filtered combined data stream, that have a negative slope and a magnitude that exceeds a negative amplitude threshold value, and count each occurrence of an identified positive slope region that is separated by an identified negative slope region as a step. OPINION Preliminary comment The 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019), hereinafter “2019 Revised 101 Guidance,” supersedes the earlier guidance that was in effect at the time the Appeal Appeal 2019-006555 Application 13/745,714 3 Brief was filed June 1, 2018; Reply Br. filed October 24, 2018. Id. at 51 (“Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”) Accordingly, we will not analyze the sufficiency of the Examiner’s rejection against the Office’s previous guidance. Rather, our analysis will comport with the 2019 Revised 101 Guidance. Introduction 35 U.S.C. § 101 provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.” In that regard, illustrative claim 1 (above) covers a “device” and is thus statutory subject matter for which a patent may be obtained.2 Likewise claim 4 is directed to a “method”; that is, a process (corresponding to the device of claim 1) and is thus statutory subject matter for which a patent may be obtained. These are not in dispute (e.g., Ans. 3). However, the § 101 provision “contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). 2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which requires determining whether a “claim is to a statutory category.” Id. at 53. See also sentence bridging pages 53 and 54 (“consider[ ] whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. [§] 101 . . . .”). Appeal 2019-006555 Application 13/745,714 4 In that regard, notwithstanding, independent claim 1 is statutory subject matter (as are the claims depending therefrom), the Examiner has raised a question of patent-eligibility on the ground that they are directed to an abstract idea. Alice identifies a two-step framework for determining whether claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217. Alice step one – the “directed to” inquiry According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept” (Id. at 218 (emphasis added)). The Examiner determined, inter alia, that the claims are “directed to an abstract idea,” highlighting portions of the claims that recite performing polynomial filter operations on the data. Final Act. 2. See also id. at 3: The steps of identifying positive slope regions and negative slope regions amount to an abstract idea 'of itself' for organizing information that can be performed mentally abstract, similar to collecting data, recognizing certain data within the collected data set, and storing that recognized data in a memory (see Content Extraction & Transmission v. Wells Fargo Bank, N.A., 776 F. 3d 1343 (Fed. Cir. 2014)), and organizing information through mathematical correlations (see Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F. 3d 1344 (Fed. Cir. 2014)). The claims do not impose any requirements that would make the steps impossible to carry out manually, as the mathematical calculation steps and slope identification steps can be carried out by a human using pen and paper. Therefore the claims are directed to an abstract idea covering both mathematical relationships and an idea of 'itself' (abstract ideas have been identified by the courts by way of example, including fundamental economic practices, certain methods of organizing Appeal 2019-006555 Application 13/745,714 5 human activities, an idea 'of itself,' and mathematical relationships/formulas (see Alice Corp., 134 S. Ct. at 2355-56)). With respect to claim 1, Appellant contends, inter alia, that the invention of claim 1 (as well as claim 6) is directed to a statutory device that includes a three-axis accelerometer and a processor. Appeal Br. 4, 7. Appellant also contends that claim 4 likewise uses a three-axis accelerometer and a processor and displays a step count. Appeal Br. 5, 6. See also Reply Br. at 2 (“not only is the processed output step count in claim 1 not just a different representation of the same number [as in Gottschalk v. Benson, 409 U.S. 63 (1972)], it represents an improvement to the technical field of identifying and counting steps in pedometers that use three–axis accelerometers, which are real physical devices”) and Spec. ¶ 14 (“Most pedometers on the market give accurate step counts when clipped to the user’s belt . . . but do not give an accurate step count when strapped to the wrist.”). The present invention relates to a computer-implemented device and process that takes into account the “complex motion waveform due to swinging motion of the arm in addition to the generally up and down motion of the torso and hips” (Spec. ¶ 17). Accordingly, there is a dispute over what the claims are directed to. Are they directed to “an abstract idea” because of “the mathematical processing steps in claim 1” (Ans. 3) or are they directed to a device for counting (physical) steps and method for counting steps that process the data from a three-axis accelerometer to provide a more accurate (physical) step count over prior art devices and methods (Appeal Br. 4-7, Spec. ¶¶ 14, 17, 41)? Appeal 2019-006555 Application 13/745,714 6 Claim Construction3 We consider claim 1 as a whole4 giving it the broadest reasonable construction5 as one of ordinary skill in the art would have interpreted it in light of the Specification6 at the time of filing. Claim 1 describes a “device for counting steps” using a “three-axis accelerometer” and “a processor” (see claim 1). Specifically, according to claim 1, “a processor” is coupled to the three-axis accelerometer and receives and analyzes the data performing 3 “[T]he important inquiry for a § 101 analysis is to look to the claim.” Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that ‘claim construction is not an inviolable prerequisite to a validity determination under § 101.’ However, the threshold of § 101 must be crossed; an event often dependent on the scope and meaning of the claims.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48 (Fed. Cir. 2015). 4 “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). 5 2019 Revised 101 Guidance, page 52, footnote 14 (“If a claim, under its broadest reasonable interpretation . . . .”) (Emphasis added.) 6 “First, it is always important to look at the actual language of the claims. . . . Second, in considering the roles played by individual limitations, it is important to read the claims ‘in light of the specification.’” Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1378 (Fed. Cir. 2017) (R. Linn, dissenting in part and concurring in part), citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), among others. Appeal 2019-006555 Application 13/745,714 7 polynomial filter operations for each axis, summing absolute values of the filtered samples into a combined data stream, performing a second polynomial filter operation on the combined data stream, identifying positive and negative slope regions and counting “each occurrence of an identified positive slope region that is separated by a negative slope region as a step”. According to the Specification, current devices and methods have various disadvantages including not taking into account “much more complex motion waveform due to swinging motion of the arm in addition to the generally up and down motion of the torso and hips” when worn on the human wrist (e.g., Spec. ¶ 17). Consistent with the intrinsic evidence, we reasonably, broadly construe claim 1 (as well as claim 6) as being directed to a “device for counting steps”, that is, physical steps of a human using “a three-axis accelerometer” and “a processor” as claimed; that is, a device and method (claim 4) for more accurately counting physical steps via a pedometer. Thus the claims are directed to more than what the Examiner describes; that is, to processing three-axis data in a specific way – for each physical step – so as to provide a more accurate step determination (e.g., Spec. ¶¶ 17, 41). Cf. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016) (The claim uses limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice.) Appeal 2019-006555 Application 13/745,714 8 The Abstract Idea7 The claims recite steps of, e.g., “perform[ing] a first polynomial filter operation,” and “sum[ming] an absolute value of a filtered sample from each of the axes of the three-axis data to combine the three-axis data into a combined data stream.” Those limitations involve mathematical operations. Thus, in accordance with the Guidance, step (1), we determine that claim 1 recites a mathematical concept, and therefore recites an abstract idea. See Guidance 52, 55–56. Improvement in the Functioning of a device and method for counting steps8 Although the claims recite an abstract idea as set forth above, we determine that the claims are not “directed to” an abstract idea because we 7 See Step 2A of the 2019 Revised 101 Guidance. Step 2A determines “whether a claim is ‘directed to’ a judicial exception,” such as an abstract idea. 84 Fed. Reg. at 53. Step 2A is a two prong inquiry. 8 See Prong Two (“If the Claim Recites a Judicial Exception, Evaluate Whether the Judicial Exception Is Integrated Into a Practical Application”) of Step 2A of the 2019 Revised 101 Guidance. “A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” 2019 Revised 101 Guidance, 84 Fed. Reg. at 54. One consideration, implicated here, that is “indicative that an additional element (or combination of elements) may have integrated the exception into a practical application” (id. at 55) is if “[a]n additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field” (id.). Appeal 2019-006555 Application 13/745,714 9 find that the abstract idea is integrated into a practical application under Step 2A, Prong 2 of the Guidance. The Examiner’s characterization of what the claim is directed to is inaccurate. The Examiner indicated that the claim is directed to “mathematical relationships/formulas” and an idea ‘of itself’”. Ans. 4. The claimed device and process, however, requires a three-axis accelerometer without which there cannot be any three-axis data to process. The claim calls for a combination of the three axis accelerometer and a processor to process said data in a specific way to count physical human steps. The preponderance of the evidence supports Appellant’s de facto position that the combination of the three-axis accelerometer and the processor specially processing the 3-axis data as claimed adds significantly more than the abstract idea the claims are alleged to be directed to so as to transform the abstract idea into an inventive concept. Generally Appeal Br., Reply Br., Spec. e.g., ¶¶ 14, 17. “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 Tex., LLC v. DIRECTTV, 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. 2016)); see also Enfish, 822 F.3d at 1335. As the Federal Circuit stated in Ancora Technologies, Inc. v. HTC America, Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018): We examine the patent’s “‘claimed advance’ to determine whether the claims are directed to an abstract idea.” Finjan, Inc. v. Blue Coat System, Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018). “In cases involving software innovations, this inquiry often turns on Appeal 2019-006555 Application 13/745,714 10 whether the claims focus on ‘the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.’” Id. (quoting Enfish, 822 F.3d at 1335–36); see BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1285–86 (Fed. Cir. 2018). Computers are improved not only through changes in hardware; “[s]oftware can make non-abstract improvements to computer technology . . . .” Enfish, 822 F.3d at 1335; see Finjan, 879 F.3d at 1304. We have several times held claims to pass muster under Alice step one when sufficiently focused on such improvements. The Specification’s description of the problem and solution shows the advance over the prior art by the claimed invention is in more accurately counting physical steps using a three-axis accelerometer and processor such that it functions to compensate for swinging motions of a human’s arms. In our view, the claim as a whole reflects a specific asserted improvement in technology, rooted in computer technology, over that which was available in the prior art. See Spec., ¶¶ 14–20. Accordingly, we find the Appellant’s arguments persuasive that the claimed subject matter is not directed to merely performing mathematical processes but to a technical improvement persuasive, given the present record. Specific asserted improvements, when claimed, can render claimed subject matter not directed to an abstract idea. Cf. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016) (“When looked at as a whole, claim 1 is directed to a patentable, technological improvement over the existing, manual 3–D animation techniques.”) It should be noted that we have addressed purported specifically asserted improvements in technology under step one of the Alice framework. This is consistent with the case law. See Ancora, 908 F.3d at 1347 (“We have several times held claims to pass muster under Alice step one when Appeal 2019-006555 Application 13/745,714 11 sufficiently focused on such improvements.”). It can be discussed under step two of the Alice framework as well. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354–55 (Fed. Cir. 2014). “[R]ecent Federal Circuit jurisprudence has indicated that eligible subject matter can often be identified either at the first or the second step of the Alice/Mayo [framework].” 2019 Revised 101 Guidance, 84 Fed. Reg. at 53; see also id. n.17. In any case, there is sufficient evidence in the record before us that the claimed subject matter reflects a specific asserted improvement in technology over that which was practiced in the art and for that reason we determine that independent claim 1 (as well as claim 6 and method claim 4), and the claims depending therefrom, are not directed to an abstract idea. Accordingly, within the meaning of the 2019 Revised 101 Guidance, we find there is an integration into a practical application. For the foregoing reasons, the Examiner’s determination under Alice step one is not sustainable. Consequently, we do not reach the merits of Examiner’s determination under Alice step two. The rejection is not sustained. CONCLUSION The decision of the Examiner to reject claims 1–11 is reversed. More specifically: The rejection of claims 1–11 under 35 U.S.C. § 101 as being directed to judicially excepted subject matter is reversed. Appeal 2019-006555 Application 13/745,714 12 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–11 101 1–11 REVERSED