Ex Parte Abrahamsson et alDownload PDFPatent Trial and Appeal BoardFeb 3, 201713663552 (P.T.A.B. Feb. 3, 2017) Copy Citation 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. 13/663,552 10/30/2012 Magnus ABRAHAMSSON SALBP0307USA 7596 58342 7590 02/07/2017 WARREN A. SKLAR (SOER) RENNER, OTTO, BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE 19TH FLOOR CLEVELAND, OH 44115 EXAMINER CESE, KENNY A ART UNIT PAPER NUMBER 2668 NOTIFICATION DATE DELIVERY MODE 02/07/2017 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): ipdocket @ rennerotto. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MAGNUS ABRAHAMS SON, GUNNAR KLINGHULT, ANDREAS KRISTENS SON, and MARTIN NYSTROM Appeal 2016-001206 Application 13/663,552 Technology Center 2600 Before ALLEN R. MacDONALD, MICHAEL M. BARRY, and JOHN R. KENNY, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-001206 Application 13/663,552 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1—15. Claims 16 and 17 have been withdrawn from consideration. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claims Exemplary claims 1 and 9 under appeal read as follows (emphasis added): 1. Method for calibration of a sensor unit or a sensor functionality in an electronic device comprising the steps: - detecting the position of the electronic device - capturing an image of the environment around the electronic device; - detect the presence of at least one identifiable object in the image captured; - determining the heading of a user of the electronic device by comparing the position of the object in relation to the position of the user; - using the heading of the user in order to calibrate one or more sensor devices or sensor functionalities in the electronic device. 9. A calibration device for calibration of a sensor device or a sensor functionality in a portable terminal, comprising: a position detection device for determining the location of the portable terminal; an image capturing device for capturing an image of the environment around the portable terminal; a processing unit configured to analyze the captured image so as to detect the presence of at least one identifiable object in the image; and 2 Appeal 2016-001206 Application 13/663,552 wherein the processing unit is configured to determine the heading of the user by comparison of the position of the at least one identifiable object in relation to the position of the user and to use the heading in order to calibrate one or more sensor devices or sensor functionalities in the portable terminal. Rejections on Appeal The Examiner rejected claims 9—15 under 35 U.S.C. § 112, second paragraph, as being indefinite.1 The Examiner rejected claims 1—15 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Lee (US 2011/0053642 Al; pub. Mar. 3, 2011) and Chen et al (US 2010/0321489 Al; pub. Dec. 23, 2010).2 Appellants ’ Contentions 1. Appellants contend that the Examiner erred in rejecting claim 9 under 35 U.S.C. § 112, second paragraph, because: It is initially noted that the burden is initially on the Examiner to show that the claims are indefinite. Upon satisfactorily showing the claims are indefinite, the burden then shifts to the applicant. Here, the Examiner has not shown that the claims are indefinite. Specifically, the claims are rejected without any reasoning in support of the rejection. Thus the burden has not shifted to the applicant and therefore applicant need not produce evident that the claims are definite. Regarding the term “processing unit” and §112, paragraph 6, in the response to the Office Action dated July 25, 1 Separate patentability is not argued for claims 10-15. Except for our ultimate decision, the § 112, second paragraph, rejection of these claims is not discussed further herein. 2 Separate patentability is argued for claims 1 and 5—8. Separate patentability is not argued for claims 2—\ and 9-15. Except for our ultimate decision, the § 103 rejection of these claims is not discussed further herein. 3 Appeal 2016-001206 Application 13/663,552 2014, applicants amended the claims to remove any reference to “means” and indicated that that the claims should not be interpreted under §112, paragraph 6. App Br. 8. Here, the term at issue is “processing unit”. The specification refers to the processing unit in a number of paragraphs (see, e.g., paragraphs [0026]-[0041] of the application as filed, referring to the processing unit as a CPU). A processing unit is a well-known term for describing a device that processes instructions, e.g., a microprocessor, an application-specific integrated circuit (ASIC), dedicated logic circuits, etc. A person having ordinary skill in the art, in view of the specification, would be readily understand that the term connotes sufficient, definite structure to one of skill in the art to preclude application of 35 U.S.C. §112, sixth paragraph. App Br. 9. 2. Appellants contend3 that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: [T]he Examiner interprets the direction indicator described in paragraph [0135] as a heading of the user. Such interpretation, however, is unreasonable for at least the following reasons. . . . [T]he direction indicator simply indicates how the mobile terminal should be moved to enable the object having the object information to appear in the camera preview image. . . . The direction indicator will indicate how the mobile terminal should be moved, but not a heading of the mobile terminal. App Br. 15—16. No teaching is found in paragraph [0032] of using the heading of the user in order to calibrate one or more sensor devices or sensor functionalities in the electronic device. 3 Contentions 2 and 3 are determinative as to the § 103 rejection on appeal. Therefore, Appellants’ other § 103 contentions are not discussed herein. 4 Appeal 2016-001206 Application 13/663,552 App Br. 17. Further, and to the extent the Examiner interprets the “camera” of Lee as a sensor to be calibrated, there is no reasonable basis to apply the teachings of Chen to calibrate the camera of Lee. More specifically, Chen relies on sensors that provide accurate measurements (e.g., accelerometers, gyroscopes, etc.) to calibrate the camera. The direction indicator of Lee, as discussed above, does not provide actual measured data of the mobile terminal, but instead provides data how the mobile phone should be moved. The user may not move the mobile terminal as indicated by the indicator, or may move it somewhat different from that provided by the indicator. Accordingly, relying on the direction indicator as a means for calibration presents the problem of not having a true measurement. . . . Thus, there is no reasonable basis for the person having ordinary skill in the art to modify the system of Lee based on the calibration method of Chen. App Br. 18. 3. Appellants further contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: Regarding the Examiner’s interpretation of the term “calibrate” and the application of this definition to the system of Lee, Appellants respectfully disagree with the Examiner’s position. More particularly, the Examiner asserts that the system of Lee “calibrates the camera by adjusting the heading indicator of the camera even when the heading indicator is ignored” [Ans. 6, last paragraph] In other words, the act of providing an “updated direction” is interpreted by the Examiner as a “calibration”. Such interpretation is overbroad. Many devices provide information to a user, yet the simple act of providing information is not reasonably interpreted as a “calibration”. For example, a speedometer provides the speed of a vehicle, and a tire pressure gauge provides the air pressure of a tire. Under the Examiner’s interpretation of the term “calibrate”, each time the 5 Appeal 2016-001206 Application 13/663,552 speedometer provides a different speed or each time the tire pressure gauge provides a different pressure reading, the respective devices are “calibrated”. A lay person let alone a person having ordinary skill in the art would readily understand that such interpretation is unreasonable. In other words, the Examiner’s interpretation of the term is not the broadest reasonable interpretation to the term as understood by one having ordinary skill in the art in view of the specification. Therefore, the Examiner’s rationale in support of the rejection is flawed. Reply Br. 4—5. Issues on Appeal Did the Examiner err in rejecting claim 9 as being indefinite? Did the Examiner err in rejecting claim 1 as being unpatentable under 35 U.S.C. § 103(a) because the combination of Lee and Chen fail to teach or suggest the argued limitations? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. As to Appellants’ above contentions 2 and 3 (covering the § 103 rejection of claim 1), we agree. Appellants’ contention 2 is to the effect that Examiner has failed to provide a proper articulated reason for why “to apply the teachings of Chen to calibrate the camera of Lee.” App. Br. 18. In response, the Examiner abandons the reasoning of the Final Action as to the calibrating, and instead newly construes the broadest reasonable interpretation of the term “calibrate” as “any adjustment to a device, taking into account external factors or a comparison.” Ans. 6. The Examiner also 6 Appeal 2016-001206 Application 13/663,552 newly finds that Lee, as opposed to Chen, as originally found, shows calibrating the sensor using this new interpretation. Ans. 6. In response to the Examiner’s new finding, Appellants’ contention 3 argues essentially that the Examiner’s new construction of “calibrate” presents no evidentiary basis to show that the new interpretation is reasonable. Particularly, Appellants argue “[s]uch interpretation is overbroad.” In support, Appellants provide an example (i.e., speedometer example) to show “the simple act of providing information” is within the Examiner’s definition and “is not reasonably interpreted as a ‘calibration.’” Reply Br. 5. We agree. We turn to the dictionary to construe the disputed claim term. To determine the ordinary meaning of the term “calibrate,” we seek the relevant dictionary definitions consistent with the Specification. Random House provides a relevant definition as “to determine, check, or rectify the graduation of (any instrument giving quantitative measurements).” The Random House Dictionary of the English Language, 296 n. 1 (2nd Ed. Unabridged; 1987). This definition is consistent with the specification, in which calibration is done to “compensate” (Spec. 7:1; 9:32) or “reset” (Spec. 8:3; 9:18) measurement devices. We do not find where the Examiner sets forth a basis (evidentiary or otherwise) for construing the term “calibrate” as being so broad as to include “any adjustment to a device.” We decline to adopt the Examiner’s broader interpretation of the term as we do not find any dictionary definition or definition in Appellants’ Specification that supports this broader interpretation. Rather, based on the relevant dictionary definitions, we conclude one of ordinary skill would understand that calibration is limited to 7 Appeal 2016-001206 Application 13/663,552 the adjustment of the graduation of a measurement device. Using the appropriate interpretation of “calibrate,” we conclude there is no basis in the record for the Examiner’s finding that “[t]he Lee system calibrates the sensor . . . Ans. 6. As to Appellants’ above contention 1, we disagree. First, contrary to Appellants’ argument that “the claims are rejected without any reasoning, in support of the rejection'’'’ (App. Br. 8), Appellants follow this argument by addressing (Id.) the Examiner’s “processing unit” reasoning at page 7—8 of the Final Action. Therefore, we conclude that the Examiner has presented a prima facie case in support of the indefiniteness rejection. Second, Appellants assert that “applicants . . . indicated that that the claims should not be interpreted under §112, paragraph 6.” That Appellants have so indicated is not controlling. As Appellants acknowledge, the test is from the perspective of those skilled in the art, not Appellants, i.e., “whether ‘those skilled in the art would understand what is claimed when the claim is read in light of the specification.’” App. Br. 7, citation omitted. More importantly, if what Appellants explicitly indicate they intend to claim is different than what an artisan would understand the claim to be, then the claim is not “distinctly claiming the subject matter which the inventor . . . regards as the invention” as required by § 112, second paragraph. Third, the presumption against invocation can be overcome and 35 U.S.C. § 112, sixth paragraph applied if the “claim term fails to ‘recite [] sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (enbanc) (quoting Watts 8 Appeal 2016-001206 Application 13/663,552 v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). We agree with the Examiner’s conclusion that the “processing unit” invokes 35 U.S.C. § 112, sixth paragraph. Appellants cite to nothing to show the term “processing unit” is an art-recognized structure to perform the particularly claimed functions “to analyze,” “to determine,” and “to use.” Nor do Appellants point out how claim 9 recites any other structure that would perform these claimed functions. We agree with the Examiner’s conclusion that the “processing unit” invokes 35 U.S.C. § 112, sixth paragraph. Turning now to Appellants’ disclosure, while we agree with Appellants that “[a] processing unit is a well-known term for describing a device that processes instructions” (App. Br. 9), this is not sufficient. Rather, a more particular disclosure that teaches how to perform the claimed functions is also required. An indefiniteness rejection under § 112, second paragraph, is appropriate if the specification discloses no corresponding algorithm associated with a computer or processor. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333, 1337—38 (Fed. Cir. 2008). Our review of Appellants’ disclosure does not find the required corresponding algorithm, nor do we conclude that an artisan would understand the claimed functions to be inherent to the well-known processing unit. We agree with the Examiner’s conclusion that the claimed “processing unit” is indefinite under 35 U.S.C. § 112, second paragraph. Appellants point out that in the Examiner’s Answer, as to “the rejection of claims 9-15 under 35 USC §112, second paragraph, it is unclear if the rejection of these claims is maintained or withdrawn.” Reply Br. 2. We agree. Therefore, out of an abundance of caution, we designate our 9 Appeal 2016-001206 Application 13/663,552 affirmance of the § 112, second paragraph, rejection as a new ground of rejection. 37 C.F.R. § 41.50(b) This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. CONCLUSIONS (1) Appellants have established that the Examiner erred in rejecting claims 1—15 as being unpatentable under 35 U.S.C. § 103(a). (2) The Examiner did not err in rejecting claim 9—15 as being indefinite under 35 U.S.C. § 112, second paragraph. (3) On this record, claims 1—8 have not been shown to be unpatentable. 10 Appeal 2016-001206 Application 13/663,552 (4) Claims 9-15 are not patentable. DECISION The Examiner’s rejections of claims 1—15 as being unpatentable under 35 U.S.C. § 103(a) are reversed. The Examiner’s rejection of claims 9—15 as being indefinite under 35 U.S.C. § 112, second paragraph, is 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-IN-PART 37 C.F.R, $ 41.50(b) 11 Copy with citationCopy as parenthetical citation