Ex Parte GROKOP et al

Patent Trials and Appeals Board

Jun 25, 2019

13619143 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/619,143 09/14/2012
15093 7590 06/27/2019
Kilpatrick Townsend & Stockton/Qualcomm
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
FIRST NAMED INVENTOR
Leonard Henry GROKOP
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.
112845 (843265) 3524
EXAMINER
QUIGLEY, KYLE ROBERT
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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):
ipefiling@kilpatricktownsend.com
ocpat_uspto@qualcomm.com
qcomins t@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEONARD HENRY GROKOP and BHUW AN DHINGRA 1
Appeal2018-007403
Application 13/619,143
Technology Center 2800
Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-30. We have jurisdiction under 35 U.S.C.
§ 6(b ). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to methods for detecting motion
states ( e.g., "walk," "run," "auto move," "auto stop") of a mobile device in
connection with vehicular travel. E.g., Spec. ,r 3, ,r 5, claim 1. Claim 1 is
reproduced below from page 17 (Appendix A - Claims) of the Appeal Brief:
1 The real party in interest is identified as Qualcomm Incorporated. App.
Br. 2.
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Application 13/619,143
1. A method for detecting motion states of a mobile device m
connection with vehicular travel comprising:
obtaining motion data from one or more motion-detecting
devices of the mobile device; and
at the mobile device, filtering the motion data to determine
motion states, the motion states comprising one or more
pedestrian motion states and one or more vehicular motion
states, the one or more pedestrian motion states comprising a
walk state, and the one or more vehicular motion states
comprising a vehicular stop state;
wherein the walk state indicates that the mobile device is in
motion indicative of a user walking with the mobile device and
the vehicular stop state indicates that the mobile device is in
motion indicative of the mobile device being in a stationary
vehicle;
wherein the motion states are obtained for respective time
intervals during which the motion data is obtained from the one
or more motion-detecting devices;
wherein, during the filtering, transitions from the one or more
pedestrian motion states to the one or more vehicular motion
states are restricted to transitions from the walk state to the
vehicular stop state and transitions from the one or more
vehicular motion states to the one or more pedestrian motion
states are restricted to transitions from the vehicular stop state
to the walk state; and
determining a present motion state of the mobile device based
on the filtering.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 1-30 under 35 U.S.C. § 101 as directed to patent-ineligible
subject matter;
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2. Claims 1-5, 7-20, 22-25, and 27-30 under 35 U.S.C. § I02(a) as
anticipated by Setoguchi (WO 2011/083572 Al, published July 14, 2011)2;
3. Claims 6, 21, and 26 under 35 U.S.C. § I03(a) as unpatentable
over Setoguchi and Ma (US 2011/0070863 Al, published Mar. 24, 2011).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejection under§ 101. Accordingly, we affirm that rejection for reasons set
forth below, in the Final Action, and in the Examiner's Answer. See
generally Final Act. 5-7, 20-28; Ans. 3-9. However, as set forth below, we
reverse the Examiner's rejections under§§ 102 and 103.
Rejection 1
The Appellants argue claims 1-30 as a group. See App. Br. 6-11.
We address claim 1 below, and the remaining claims will stand or fall with
claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Determining whether a claimed invention is directed to patent-eligible
subject matter is a two-step process that requires (1) evaluating whether the
claim is directed toward a patent-ineligible concept, i.e., a law of nature,
natural phenomenon, or abstract idea; and, if so, (2) determining whether the
claim's elements, considered both individually and as an ordered
combination, transform the nature of the claim into a patent-eligible
2 The Examiner and the Appellants cite US 2013/0179107 Al (published
July 11, 2013) as an English-language equivalent of WO 2011/083572 Al.
We do the same in this decision.
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application. See Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18
(2014).
As to step (1) of Alice, the Examiner determines that claim 1 is
directed to the abstract ideas of "an algorithm for determining a motion state
of a mobile device (a mathematical algorithm)." Final Act. 5-6. In the
Answer, the Examiner further explains that "[t]he recited 'filtering the
motion data to determine motion states' amounts to the recitation of a
probabilistic mathematical approach for determining the motion states. As
such, the Claims recite the abstract idea of a mathematical algorithm."
Ans. 3 (internal citations and quotations omitted).
As to step (2) of Alice, the Examiner determines:
The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional element( s) or combination of
elements in the claim( s) other than the abstract idea per se
amount( s) to no more than: mere instructions to implement the
idea on a computer, and/or recitation of generic computer
structure that serves to perform generic computer functions that
are well-understood, routine, and conventional activities
previously known to the pertinent industry. . . . Viewed as a
whole, these additional claim element( s) do not provide
meaningful limitation( s) to transform the abstract idea into a
patent eligible application of the abstract idea such that the
claim( s) amounts to significantly more than the abstract idea
itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101
as being directed to non-statutory subject matter.
Final Act. 6-7.
The Appellants argue that the Examiner reduced the claims "to a high
level concept disembodied from the specific limitations recited," and that the
claims are not directed to an abstract idea because the claims are not similar
to the claims of, e.g., Electric Power Group v. Alstom S.A., 830 F.3d 1350
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(Fed. Cir. 2016). App. Br. 7-8. The Appellants also argue that, even if
directed to an abstract idea, the claims "amount to significantly more than
the judicial exception." Id. at 9. In particular, the Appellants analogize the
claimed subject matter to the claims at issue in Bascom Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), and
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir.
2016), and argue that the claims "perform an operation in an unconventional
and inventive way." App. Br. 8-10.
Legal Framework
In determining whether a claim falls within a category excluded from
eligible subject matter, our inquiry focuses on the Supreme Court's two-step
framework described in Mayo and Alice, set forth above. Alice, 573 U.S. at
217-18 ( 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." See Alice, 573 U.S. at 219. Concepts determined
to be abstract ideas, and thus patent ineligible, include mathematical
concepts. E.g., Parker v. Flook, 437 U.S. 584, 594--95 (1978). However,
not every claim that recites a mathematical concept is patent ineligible. In
Diamond v. Diehr, 450 U.S. 175, 191 (1981), the claim at issue recited a
mathematical formula, but the Supreme Court held that "[a] claim drawn to
subject matter otherwise statutory does not become nonstatutory simply
because it uses a mathematical formula." 450 U.S. at 176; see also id. at 191
("We view respondents' claims as nothing more than a process for molding
rubber products and not as an attempt to patent a mathematical formula.").
The Supreme Court also indicated that a claim "seeking patent protection for
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that formula in the abstract ... is not accorded the protection of our patent
laws, ... and this principle cannot be circumvented by attempting to limit
the use of the formula to a particular technological environment." Id. (citing
Flook and Gottschalkv. Benson, 409 U.S. 63 (1972)); see also, e.g., id. at
187 ("It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.").
If the claim is "directed to" an abstract idea, we 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). "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]."' Id. ( quoting Mayo, 566 U.S. at 77).
The USPTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h) (9th ed.
2018)).
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:
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(3) adds a specific limitation beyond the judicial exception that is 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 Guidance 52, 55-56.
Judicial Exception (Guidance step (1))
Consistent with the Examiner's analysis, claim 1 recites steps of
"obtaining motion data" and "filtering the motion data" to "determin[ e] a
present motion state." The Specification makes clear that "filtering motion
data" to "determin[ e] a present motion state" necessarily involves the use of
mathematical models, probability distributions, and/or mathematical
equations/relationships. See Spec. ,r 30 ( describing models and probability
distributions), ,r 33 (describing Hidden Markov Models (HMM)), ,r,r 39--40
(describing a transition probability matrix), ,r 53 (providing equations for
"improv[ ing] drive detection"), Fig. 2A ( depicting elements for "Statistical
Models" and "Compute Likelihoods"), Fig. 2B ( depicting elements for
"Statistical Models," "Compute Likelihoods," and "HMM Algorithm"),
Fig. 3 (similar). The Appellants do not contend otherwise. The claim
limitations, under their broadest reasonable interpretation consistent with the
Specification, recite the application of mathematical concepts to generic
motion data to make a determination (motion state). In accordance with the
Guidance, step ( 1 ), we conclude that claim 1 recites mathematical concepts
and thus recites an abstract idea.
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Integration into a Practical Application (Guidance step (2))
Turning to step (2) of the Guidance, we determine that claim 1, as a
whole, does not integrate the judicial exception into a practical application.
Integration into a practical application requires an additional element or a
combination of additional elements in the claim to "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." Guidance 53-54; see also id. at 55
(setting forth exemplary considerations indicative that an additional element
or combination of elements may have integrated the judicial exception into a
practical application).
As set forth above, the claims recite steps of obtaining generic motion
data and performing mathematical operations on that data to make a
determination. The "wherein" clauses of claim 1 appear to simply define
certain terms ( e.g., "walk state," "vehicular stop state"), state the "time
intervals" for which motion states are obtained, or place limits on the
mathematical models used ("during the filtering, transitions ... are
restricted"). 3 Those limitations do not integrate the judicial exception into a
practical application.
Although the Appellants are correct that a claim is not necessarily
"directed to" abstract subject matter merely because mathematical concepts
3 Restriction of transitions may be achieved, for example, simply by using a
mathematical model that sets the probability of certain transitions to 0. E.g.,
Spec. ,r 40 Table 1, ,r 41 ("[ A ]11 transition probabilities from the auto states
to the pedestrian states are O except for transitions between walk and
autoStop .... ").
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are required to complete the claimed method, see App. Br. 6-7; see also
Diehr, 450 U.S. at 187; Thales Visionix Inc. v. United States, 850 F.3d 1343,
1349 (Fed. Cir. 2017) ("That a mathematical equation is required to
complete the claimed method and system does not doom the claims to
abstraction."), we view the claims at issue in this case to be similar to the
claims held ineligible in Flook. The claims in Flook required ( 1) collecting
data (i.e., "[d]etermining the present value of [a] process variable" such as
temperature), (2) subjecting the data to a mathematical operation to
"[ d]etermin[ e] a new alarm base," and (3) on the basis of the result of that
operation, making a determination. See 437 U.S. at 585, 597. Claim 1
similarly requires (1) collecting data ("obtaining motion data"),
(2) subjecting the data to a mathematical operation ("filtering the motion
data to determine motion states"), and (3) on the basis of the results of that
operation, making a determination ("determining a present motion state ...
based on the filtering").
Unlike the patent-eligible claims at issue in Diehr, which included a
step of physically opening a molding press in response to a comparison of
data, claim 1 does not require that anything (physical or otherwise) occur
after the determination of a motion state is made. The fact that claim 1 itself
does not expressly recite the mathematical operations that are applied to the
collected data, see App. Br. 7 ("The present claims do not recite any
mathematical formulas."), does not preclude the claims from being directed
to abstract mathematical concepts. See Bancorp Servs., LLC v. Sun Life
Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1280 (Fed. Cir. 2012)
(holding ineligible claims that did not expressly recite mathematical
formulas and explaining, "[a]s the formulae in the specification indicate, the
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determination of [ values recited by the claims], and their subsequent
manipulation, is a matter of mere mathematical computation.").
In the Reply Brief, the Appellants argue for the first time that "claim 1
recites an improvement in how motion states are detected, based on a
specific way of filtering motion data." See Reply Br. 2. That argument is
untimely because it was not presented in the Appeal Brief, and the
Appellants have not attempted to show good cause for presenting it for the
first time in the Reply Brief. See 37 C.F.R. § 4I.41(b)(2).
But even if it were timely, it would be unpersuasive because it does
not specifically identify an improvement, reflected in the claims, that might
render the claimed subject matter patent eligible. See Reply Br. 2. To the
extent that the Appellants are arguing that improvements lie in the
mathematical concepts themselves, e.g., setting certain probabilities in a
mathematical model to zero, the Supreme Court has held that "the novelty of
the mathematical algorithm is not a determining factor at all." See Flook,
437 U.S. at 591-92; see also id. at 594--95 ("Respondent's application
simply provides a new and presumably better method for calculating alarm
limit values."); cf In re Gitlin, No. 2018-1461 (Fed. Cir. June 13, 2019), slip
op. at 5 ("But merely calling for a mathematical concept to be performed
more efficiently or with a particular input does not amount to an application
of the mathematical concept that is patent-eligible.").
On this record, we are not persuaded that claim 1 integrates the
judicial exception into a practical application. Thus, claim 1 is directed to
the recited abstract idea.
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Inventive Concept (Guidance steps (3) and (4))
Turning to steps (3) and ( 4) of the Guidance, the Appellants have not
shown error in the Examiner's determination that the limitations of claim 1
beyond the abstract idea itself are well understood, routine, and
conventional.
As set forth above, the claims recite steps of obtaining data and
subjecting the data to mathematical operations ( filtering the motion data to
determine motion states). The "wherein" clauses of claim 1 appear to
simply define certain terms (e.g., "walk state," "vehicular stop state"), state
the "time intervals" for which motion states are obtained, or place limits on
the mathematical models used ("during the filtering, transitions ... are
restricted").
We do not agree with the Appellants that Bascom dictates reversal in
this case. See App. Br. 9-10. Critical to eligibility determination in Bascom
was the "non-conventional and non-generic arrangement of known,
conventional pieces," as described by the specification. See Bascom, 827
F.3d at 1350. Although the Appellants assert that claim 1 performs an
operation in an unconventional and inventive way, the Appellants do not
persuasively identify anything comparable to the evidence in Bascom to
support their position; on the contrary, the Appellants' arguments are more
akin to a recitation of the claim language and a naked assertion that the
subject matter is unconventional. See App. Br. 9-10. The Appellants'
arguments concerning Amdocs are essentially the same and, therefore,
likewise unpersuasive. See id. at 10-11.
As indicated above, the Appellants' argument that the subject matter
of claim 1 is unconventional and/or an improvement in a way that renders it
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eligible under § 101 is unpersuasive. Beyond certain aspects of the
mathematical concepts themselves ( e.g., setting certain probabilities in a
probability table and/or mathematical model to zero, see App. Br. 10-11),
the Appellants do not persuasively identify any aspect of claim 1 that was
not well understood, routine, and conventional. However, "[i]t has been
clear since Alice that a claimed invention's use of the ineligible concept to
which it is directed cannot supply the inventive concept that renders the
invention 'significantly more' than that ineligible concept." BSG Tech LLC
v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
On this record, we are not persuaded that any step of claim 1 beyond
those encompassing the abstract idea itself recites subject matter that is not
well understood, routine, and conventional.
In summary, we have carefully considered the Appellants' arguments
but are not persuaded of reversible error in the Examiner's rejection of
claim 1 under § 101.
Rejections 2 and 3
All claims on appeal, either directly or through claim dependency,
include the following limitation or a similar limitation:
wherein, during the filtering, transitions from the one or more
pedestrian motion states to the one or more vehicular motion
states are restricted to transitions from the walk state to the
vehicular stop state and transitions from the one or more
vehicular motion states to the one or more pedestrian motion
states are restricted to transitions from the vehicular stop state
to the walk state ....
App. Br. 17 ( claim 1) ( emphases added). By its plain language, that clause
(1) "restrict[ s ]" transitions from a pedestrian state to a vehicular state to a
transition from the "walk" state to the "vehicular stop" state, and
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(2) "restrict[ s ]" transitions from a vehicular state to a pedestrian state to a
transition from the "vehicular stop" state to the "walk" state. Id.
Those limitations are illustrated by the "restrictive transition model,"
Spec. ,r 37, depicted in Figure 4, reproduced below.
Figure 4 represents "a restrictive transition model, in that the number of
states are finite, all of the states are known, and the transitions between each
state are also clearly defined." Id. The double-sided arrows represent
allowed transitions and show that "any transition[]" is allowed in the
"pedestrian non-auto states." Id. For example, a transition from "rest" to
any of "stand," "run," "walk," "sit," or "fiddle" is allowed. Id. However,
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the only transition allowed from a pedestrian state to an auto state is "walk"
to "auto stop," and the only transition allowed from an auto state to a
pedestrian state is "auto stop" to "walk." That is so because, according to
the inventors, a person carrying a mobile device is most likely to at least
briefly walk after exiting a stopped car, as opposed to, e.g., transitioning
directly from sitting in a stopped car to running. Cf id. ,r,r 39--41. The
transitions are thus "restricted." Restriction of transitions may be achieved,
for example, simply by using a mathematical model that sets the probability
of certain transitions to 0. E.g., id. ,r 40 Table 1, ,r 41 ("[ A ]11 transition
probabilities from the auto states to the pedestrian states are O except for
transitions between walk and autoStop . ... ").
The Examiner finds that ,r,r 59---60 of Setoguchi disclose state
transition restrictions that fall within the scope of the claims. Final Act. 7-9.
The Examiner interprets the claims as reading on methods in which
transitions from, e.g., "vehicle stop" to "walk" occur in some, but not
necessarily all, instances. See id.; see also Ans. 15.
Largely for reasons stated by the Appellants, see App. Br. 11-14;
Reply Br. 3--4, we are not persuaded by that rationale. The Examiner has
not persuasively identified any portion of Setoguchi that discloses
"restrict[ing]" the state transition that can be made. Paragraph 60 of
Setoguchi discloses transitioning from a vehicle stop (i.e., "boarding state")
to a walk state, for example, when "walking is ... performed immediately
after dropping off from a vehicle." Setoguchi ,r 60. Rather than disclosing
that such is the only permissible transition (i.e., a restriction) from a vehicle
state to a pedestrian state, Setoguchi discloses that transitions from a vehicle
stop state to a pedestrian "stationary state" are also permitted after a delay of
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"several seconds." Id. Thus, while Setoguchi recognizes that certain state
transitions are more likely than others, see id. ,r,r 58---60 ( describing
"correct[ions] using a transition probability model"), the Examiner has not
adequately established that Setoguchi teaches "restrict[ing]" transitions "to
transitions from the vehicular stop state to the walk state," as required by the
claims, given that Setoguchi ,r 60 indicates that transitions from a vehicle
stop state to a pedestrian stationary state are allowed in Setoguchi' s method.
This distinction over the prior art is made on the basis of aspects of the claim
encompassing abstract ideas as discussed above with respect to Rejection 1
( e.g., probabilities in a mathematical model), and novelty does not
necessarily indicate subject matter eligibility under§ 101. See Flook, 437
U.S. at 591-92 ("[T]he novelty of the mathematical algorithm is not a
determining factor at all.").
A preponderance of the evidence does not support the Examiner's
finding that Setoguchi anticipates claims 1-5, 7-20, 22-25, and 27-30. The
Examiner's analysis of claims 6, 21, and 26 does not remedy the error
identified above. See Final Act. 18. We reverse Rejections 2 and 3.
CONCLUSION
We AFFIRM the Examiner's rejection of claims 1-30 under 35
U.S.C. § 101.
We REVERSE the Examiner's rejections of claims 1-30 under 35
U.S.C. §§ 102 and 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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