Ex Parte Brumback et al

Patent Trial and Appeal Board

Jul 24, 2017

14029763 (P.T.A.B. Jul. 24, 2017)

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.
14/029,763 09/17/2013 Christine Boomer Brumback FTBTP003 9779
119042 7590 07/26/2017
Weaver Austin Villeneuve & Sampson LLP; FITBIT
ATTN: FITBIT, INC
P.O. BOX 70250
Oakland, CA 94612-0250
EXAMINER
ULRICH, NICHOLAS S
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
07/26/2017 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):
uspto@wavsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTINE BOOMER BRUMBACK,
DAVID WAYNE KNIGHT, JAMES PARK,
ANDREW COLE AXLEY, and SHELTEN GEE JAO YUEN
Appeal 2017-003373
Application 14/029,763
Technology Center 2100
Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1—30, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Fitbit, Incorporated.
App. Br. 3.
Appeal 2017-003373
Application 14/029,763
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention relates to a “biometric
monitoring device with a display.” Abstract; see Spec. ]Hf 5—66.2 The
Specification explains that the “display may, in response to receiving page
advance requests from a user, advance through a plurality of different data
display pages, at least some of which show aspects of biometric data
recorded by the device.” Id. The Specification further explains that the
“biometric monitoring device may also, based on the biometric data, modify
the sequential display order of the data display pages.” Id.
Exemplary Claims
Independent claims 1 and 21 exemplify the subject matter of the
claims under consideration and read as follows:
1. A biometric monitoring device comprising:
one or more biometric sensors;
a display; and
one or more processors and a memory communicatively
connected with the one or more biometric sensors and the
display, wherein the memory stores instructions to cause the
one or more processors to:
receive data from the one or more biometric
sensors,
2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed September 17, 2013; “Final Act.” for the Final Office
Action, mailed July 8, 2015; “App. Br.” for the Appeal Brief, filed July 20,
2016; “Ans.” for the Examiner’s Answer, mailed November 3, 2016; and
“Reply Br.” for the Reply Brief, filed December 20, 2016.
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Application 14/029,763
determine a device state for the biometric
monitoring device based on the data from the one or
more biometric sensors, and
select a screen associated with the device state for
display on the display in response to receipt of a user
input.
21. A storage device comprising computer-executable
instructions that, when executed, cause one or more
processors to:
receive data from one or more biometric sensors of a
biometric monitoring device;
determine a device state for the biometric monitoring
device based on the data from the one or more biometric
sensors; and
select a screen associated with the device state for display
on a display of the biometric monitoring device in response to
receipt of a user input by the biometric monitoring device.
App. Br. 16, 21 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability, the Examiner relies on the following
prior art:
Lakovic et al. (“Lakovic”)
Yuen et al. (“Yuen”)
Prykari et al. (“Prykari”)
Low et al. (“Low”)
Bernini et al. (“Bernini”)
US 2010/0331145 Al
US 2012/0084053 Al
US 2012/0112908 Al
US 2013/0080811 Al
US 2013/0198685 Al
Dec. 30, 2010
Apr. 5, 2012
May 10, 2012
Mar. 28, 2013
(filed Sept .23,2011)
Aug. 1,2013
(filed July 27, 2012)
The Rejections on Appeal
Claims 21—30 stand rejected under 35U.S.C. § 101 as directed to
non-statutory subject matter. Pinal Act. 13.
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Claims 1—3, 5, 9, 11—13, 15, 19, 21—23, 25, and 29 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Lakovic and Yuen. Final
Act. 14—17.
Claims 4, 14, and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lakovic, Yuen, and Prykari. Final Act. 17—18.
Claims 6, 7, 10, 16, 17, 20, 26, 27, and 30 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Lakovic, Yuen, and Bernini. Final
Act. 18-21.
Claims 8, 18, and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lakovic, Yuen, and Low. Final Act. 21—22.
ANALYSIS
We have reviewed the rejections of claims 1—30 in light of
Appellants’ arguments that the Examiner erred. For the reasons explained
below, we disagree with Appellants’ assertions regarding error by the
Examiner. We adopt the Examiner’s findings in the Final Office Action
(Final Act. 13—22) and Answer (Ans. 2—7). We add the following to address
and emphasize specific findings and arguments.
The § 101 Rejection of Claims 21—30
Appellants note that the Examiner relies on the Board’s precedential
decision Ex parte Mewherter, 107 USPQ2d 1857, 1861—63 (PTAB 2013),
to support the § 101 rejection of claims 21—30 and that Mewherter addressed
claims reciting a “machine-readable storage medium.” App. Br. 7.
Appellants argue error in the § 101 rejection because a “storage device” as
recited in claims 21—30 is narrower than a “storage medium” and “due to
this narrowness, avoids encompassing non-transitory storage media such as
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carrier waves.” Id. at 8; see Reply Br. 3—5. Based on a dictionary definition
of “device,” Appellants argue that a “device” is a “thing,” and “things” are
“by their very nature, not ‘transitory.’” App. Br. 7—8; Reply Br. 5.
Appellants’ arguments do not persuade us of Examiner error because
the Examiner determines that the Specification fails to define “storage
device” to exclude a transitory storage medium and the broadest reasonable
interpretation of “storage device” includes a transitory storage medium.
Ans. 3. Although not binding on this panel, we note that other Board panels
have sustained § 101 rejections of claims reciting a “computer-readable
storage device,” a “program storage device,” and a “storage device” based
on reasoning similar to the Examiner’s reasoning here. See, e.g., Ex Parte
Hunt, Appeal 2016-006675, 2017 WL 1279529, at *3 (PTAB Mar. 22,
2017); Ex Parte Bernelas, Appeal 2015-006381, 2016 WL 6125122, at *3
(PTAB Sept. 20, 2016); Ex Parte Brodeur, Appeal 2012-011945, 2015 WL
907468, at *2 (PTAB Feb. 27, 2015); see also Ex Parte Katsikas, Appeal
2015-002172, 2016 WL 4446787, at *4 n.6 (PTAB Aug. 19, 2016);
Ex Parte Dayka, Appeal 2013-002073, 2015 WL 1941106, at *4 n.l (PTAB
Apr. 20, 2015); Ex Parte Hamilton, Appeal 2012-006024, 2014 WL
4631433, at *5 (PTAB Sept. 10, 2014) (entering new ground of rejection
under § 101); and Ex Parte Mcdonough, Appeal 2011-013619, 2014 WL
1274030, at *4 n.l (PTAB Mar. 27, 2014). Thus, we sustain the § 101
rejection of claims 21—30 as directed to non-statutory subject matter.
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The § 103(a) Rejection of Claims 1—3,
5, 9, 11-13, 15, 19, 21-23, 25, and 29
Motivation to Combine: Advantages
Achieved by the Combination
Appellants argue that the Examiner erred in rejecting independent
claim 1 because the proposed modification of “Lakovic to allow for
automatic determination of a workout state based on biometric sensor data as
taught by Yuen” rests on an invalid or insufficient foundation. App. Br. 10
(quoting Final Act. 15). More specifically, Appellants assert that the
“Examiner does not explain how, precisely, this modification would be
implemented in a way that makes sense” to achieve the advantages identified
by the Examiner, e.g., reducing manual inputs and saving user time. Id.
at 10-11. Appellants also assert that it “does not make sense to trigger the
‘start’ of the athletic performance data recording in Lakovic’s device based
on an automatically determined mode” because “this robs the user of the
ability to precisely control when the workout starts and stops” and makes “it
difficult or impossible for the user to be able to compare data from the start
or end of the workout with data elsewhere in the workout. . . .” Id.
at 11-12.
In addition, Appellants contend that the proposed modification
requires the user to “first engage in behavior . . . that produces biometric
sensor data,” “stop engaging in the behavior long enough to [manually] link
to the external sensors,” and “[a]fter linking the sensor(s), the user would
then need to start the workout behavior again.” App. Br. 11. Appellants
also contend that it is: (1) “unclear what connection having ‘more accurate
automated calculations of device state’ has to the claimed subject matter”;
(2) “unclear how tying the selection of screens to an automated
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determination of device state . . . would make such an automated
determination ‘more accurate’”; and (3) “unclear how an automated
determination of device state . . . could be ‘more accurate’ than an athlete’s
manual indication that they are engaging in a workout or are stopping their
workout.” Id. at 12—13; see Reply Br. 13.
Appellants’ arguments do not persuade us of Examiner error. The
Examiner explains that “modifying Lakovic with Yuen provides for
automatically invoking” the Run mode and “then further receiving user input
to begin recording an athletic performance.” Ans. 4—5; see Final Act. 15;
see also Reply Br. 15. During normal operation of Lakovic’s device, a user
manually scrolls through several options, e.g., by pushing a button, before
reaching the Run option. Lakovic Figs. 86b, 86c; see id. H 89, 91—92; see
also id. Figs. 86d, 86e, 127, 129. After the user reaches the Run option and
manually selects it, e.g., by pushing another button, the device enters the
Run mode. Id. 1104, Fig. 86b. The device then prompts the user to link
with sensors by displaying the Walk to Connect screen. Id. H 105, 109,
Figs. 86a, 86d, 86e. As the user walks, the device (1) detects and
automatically links with a first sensor, (2) displays the Sensor Found screen,
(3) detects and automatically links with a second sensor, and (4) displays the
Ready screen after sensor linking. Id. H 105-09, Figs. 86a, 86d, 86e. The
Ready screen includes a Start or Go option. Id. H 105, 109, Figs. 86a, 86d,
86e. If the user manually selects that option, the device begins recording
athletic performance data and displays the Run Layout screen, which may
include the pace per mile, total workout time, and total distance. Id.
105-09, 115, Figs. 86a, 86d, 86e, 88c, 88d; see Ans. 5.
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The proposed modification replaces manual scrolling to reach the Run
option and manual selection of the Run option with entering the Run mode
automatically based on biometric sensor data. Ans. 4—5; see Final Act. 15.
Thus, the modification automates the manual process of switching to the
Run mode. Ans. 6. Accordingly, the modification reduces manual inputs
and saves user time by entering the Run mode automatically rather than
requiring the user to (1) manually scroll through several options to reach the
Run option and (2) manually select the Run option to enter the Run mode.
Ans. 4—5; see Final Act. 15. But after entering the Run mode automatically,
the user controls when data recording commences by manually selecting the
Start or Go option. Ans. 5; see Final Act. 15; see also Reply Br. 15. Thus,
the modification does not rob the user of the ability to precisely control
when the workout starts and stops.
Contrary to Appellants’ assertions, the Examiner has explained how a
person of ordinary skill in the art would have implemented the proposed
modification in a way that makes sense. Ans. 4—5; see Final Act. 15.
Consequently, the Examiner has provided “articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” See
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Appellants assert that entering the Run mode automatically may
“actually be slower or more cumbersome” because “it may take several
seconds or several minutes of data collected during an activity before a
device could ‘automatically’ determine what the activity was and place the
device into a corresponding mode.” Reply Br. 8—9. Appellants do not direct
us to evidence supporting that assertion and instead rely on attorney
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argument. Attorney argument “cannot take the place of evidence.” See In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Appellants assert that Lakovic discloses a shortcut option for a user to
enter the Run mode with a single button press. Reply Br. 9. But the
existence of that shortcut option does not undermine the desirability of the
proposed modification with respect to normal operation of Lakovic’s device.
As for Appellants’ contention that the modification requires the user
to discontinue activity “long enough to [manually] link to the external
sensors,” the Examiner finds that “[t]here is nothing taught by Lakovic that
indicates that a user must stop to link sensors” and Lakovic instead teaches
“that a user is instructed to move in order to link a shoe-based sensor.”
Ans. 4 (citing Lakovic ^fl[ 105-06).
Appellants argue that “the link process for sensors . . . needs to be
interactive to allow the user to confirm that the sensor in question has been
properly linked.” Reply Br. 10. We disagree. Lakovic discloses that, as the
user walks in response to the Walk to Connect screen, the device (1) detects
and automatically links with a first sensor, (2) displays the Sensor Found
screen, (3) detects and automatically links with a second sensor, and
(4) displays the Ready screen after sensor linking. Lakovic ^fl[ 105-09,
Figs. 86a, 86d, 86e. For example, the user interfaces in Figures 86a, 86d,
and 86e do not include an option between the Walk to Connect screen and
the Ready screen that allows a user to manually confirm sensor connection.
Id. Figs. 86a, 86d, 86e.
Appellants assert that “Lakovic allows the user to complete the link
process before actually starting the workout in question by selecting the
‘start’ option” to “ensure[] that the desired sensors are linked.” Reply Br. 10
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(citing Lakovic 1105). That assertion rests on a misunderstanding of
Lakovic. Lakovic’s device displays the Ready screen after sensor linking.
Lakovic H 104—09, Figs. 86a, 86d, 86e. The Ready screen includes a Start
or Go option. Id. H 105, 109, Figs. 86a, 86d, 86e. If the user manually
selects that option, the device begins recording athletic performance data and
displays the Run Layout screen. Id. H 105-09, 115, Figs. 86a, 86d, 86e,
88c, 88d. Thus, selecting the Start or Go option does not cause the device to
link with the desired sensors.
In addition, Appellants’ contentions that it is unclear how the
proposed modification affects accuracy do not identify Examiner error. See
Ans. 5—6. The Federal Circuit has recognized “the Board’s practice to
require an applicant to identify the alleged error in the examiner’s rejections
. . . .” In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (citing Ex parte
Frye, Appeal No. 2009-006013, 2010 WL 889747 (BPAI Feb. 26, 2010)
(precedential)). Further, the applicable rules require that the arguments in an
appeal brief “explain why the examiner erred as to each ground of rejection
contested by appellant.” 37 C.F.R. § 41.37(c)(l)(iv).
Appellants’ contentions that it is unclear how the proposed
modification affects accuracy also overlook Yuen’s disclosure. In particular,
Yuen explains that “data from one or more physiological sensors may . . .
enhance the accuracy of identifying the user state and/or improve the
confidence of the correctness/accuracy of the identified user state.” Yuen
1126.
And even if, contrary to Yuen’s disclosure, the proposed modification
does not enhance accuracy, reducing manual inputs and saving user time
provide a sufficient basis for the modification. “[A]ny need or problem
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known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining” references. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007). “[T]he desire to enhance
commercial opportunities by improving a product or process is universal
. . . DyStar Textilfarben GmbHv. C.H. Patrick Co., 464 F.3d 1356, 1368
(Fed. Cir. 2006); see In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
“[A]n implicit motivation to combine” may result from a desire to make a
product or process “stronger, cheaper, cleaner, faster, lighter, smaller, more
durable, or more efficient.” DyStar, 464 F.3d at 1368.
Motivation to Combine: Combination of
Known Methods That Yields a Predictable Result
Appellants note that the Examiner finds that the proposed
modification “is a combination of known methods that yields a predictable
result.” App. Br. 13; see Final Act. 15. Appellants respond by arguing that
the resulting device would “be less appealing to the intended market”
because the modification would (1) “interfere with the user experience,”
(2) “render the user experience . . . more convoluted,” and (3) “offer a
degraded user experience as compared with the ‘stock’ version of Lakovic’s
device . . . .” App. Br. 13; see Reply Br. 15.
Appellants’ arguments do not persuade us of Examiner error because
the Examiner explains that the proposed modification automates the manual
process of switching to the Run mode. Ans. 6. Appellants’ arguments do
not direct us to evidence that automating the manual process of switching
would negatively affect the user experience. App. Br. 13; Reply Br. 15.
Moreover, Yuen discloses automatic mode switching along with optional
manual mode switching. See, e.g., Yuen || 175, 251. Because the user may
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still switch modes manually, the proposed modification would not affect the
user experience as urged by Appellants.
Further, the Examiner finds that “the known method of utilizing
sensor data to invoke a mode or state change of a device would be a
predictable method to change the mode or state of a device.” Ans. 6; see
Yuen || 15, 20, 175, 251. We are persuaded the claimed subject matter
exemplifies the principle that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR, 550 U.S. at 416.
Summary for Independent Claim 1
For the reasons discussed above, Appellants’ arguments have not
persuaded us that the Examiner erred in rejecting claim 1 for obviousness
based on Lakovic and Yuen. Hence, we sustain the rejection of claim 1.
Independent claims 11 and 21 and Dependent
Claims 2, 3, 5,9,12,13,15,19,22,23,25, and 29
Appellants do not make any separate patentability arguments for
independent claims 11 and 21 or dependent claims 2, 3, 5, 9, 12, 13, 15, 19,
22, 23, 25, and 29. App. Br. 13—14; Reply Br. 5—16. Because Appellants do
not argue the claims separately, we sustain the obviousness rejection of
claims 2, 3, 5, 9, 11—13, 15, 19, 21—23, 25, and 29 for the same reasons as
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The § 103(a) Rejections of Claims 4,
6—8, 10, 14, 16—18, 20, 24, 26—28, and 30
Claims 4, 6—8, and 10 depend from claim 1; claims 14, 16—18, and 20
depend from claim 11; and claims 24, 26—28, and 30 depend from claim 21.
App. Br. 17—23 (Claims App.). Appellants assert that these dependent
claims “stand or fall with independent claim 1 ” and do not make any
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separate patentability arguments for them. App. Br. 14—15. Because
Appellants do not argue the claims separately, we sustain the obviousness
rejections of claims 4, 6—8, 10, 14, 16—18, 20, 24, 26—28, and 30 for the
same reasons as claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s decision to reject claims 1—30.
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). See
37 C.F.R. § 41.50(f).
AFFIRMED
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