Ex Parte Xiao et al

Patent Trials and Appeals Board

Jun 26, 2019

14501725 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/501,725 09/30/2014
65015 7590 06/28/2019
Treyz Law Group
15279 N. Scottsdale Rd., Suite 250
Scottsdale, AZ 85254
FIRST NAMED INVENTOR
Xiao Xiao
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.
P23823US1 2363
EXAMINER
KELLEY, STEVEN SHAUN
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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):
docket@treyzlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAO XIAO, HUNG A. PHAM, and
SUNNY K. CHOW1
Appeal 2018-006711
Application 14/501,725
Technology Center 2600
Before ST. JOHN COURTENAY III, MARC S. HOFF, and
MATTHEW J. McNEILL, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final
rejection of claims 1-4, 7, and 9-19, which are all the claims pending in this
application. App. Br. 5-13. Claims 5, 6, 8, and 20 are canceled. Regarding
dependent claim 4, see n.3 infra. We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is Apple Inc. App. Br. 2.
Appeal 2018-006711
Application 14/501,725
STATEMENT OF THE CASE2
Introduction
Appellants' claimed invention relates generally "to electronic devices
with motion sensor circuitry for detecting and characterizing a user's
movement." Spec. 1, 11. 8-10.
Exemplary Claim
1. A portable electronic device, comprising:
a motion sensor that produces motion sensor data;
wireless communications circuitry that receives location
information; and
[L 1] processing circuitry that determines the user's
cadence based on the motion sensor data and that determines
whether the user is running without using the location
information by comparing the user's cadence to a cadence
threshold,
[L2] wherein when the processing circuitry determines
that the user is not running, the processing circuitry uses the
motion sensor data and the location information to determine
whether the user is walking or cycling,
wherein the processing circuitry determines an average
speed of the user based on the location information, and
wherein the processing circuitry determines whether the user is
walking or cycling by comparing the user's average speed to a
speed threshold.
App. Br. 14, "Claims Appendix." (Emphasis added regarding contested Ll
and L2 limitations).
2 We herein refer to the RCE Non-Final Office Action, mailed Sept. 25,
2017 ("Non-Final Act."); Appeal Brief, filed Feb. 21, 2018 ("App. Br."), the
Examiner's Answer, mailed Apr. 13, 2018 ("Ans."), and Reply Brief, filed
June 13, 2018 ("Reply Br.").
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Rejections 3
A. Claims 1-3, 7, 9, 11-12, 15-17, and 19 are rejected under 35
U.S.C. § 103 as being obvious over the combined teachings and suggestions
of Kahn et al. (US 2009/0290718 Al, published Nov. 26, 2009) ("Kahn"),
Siliski et al. (US 2015/0011249 Al, published Jan. 8, 2015) ("Siliski"), and
further in view of either one ofCzompo et al. (US 2013/0102323 Al,
published Apr. 25, 2013) (hereinafter "Czompo") or Zhou et al. (US
2011/0294520 Al, published Dec. 1, 2011) (hereinafter "Zhou"). Non-Final
Act. 2.
B. Claims 10 and 18 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings and suggestions of Kahn, Siliski,
Czompo or Zhou, and Webb et al. (US 2015/0223016 Al, published Aug. 6,
2015) ("Webb"). Non-Final Act. 9.
C. Claims 13 and 14 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings and suggestions of Kahn, Siliski,
3 Al though claims 1-4, 7, and 9-19 are included in the list of rejected claims
on the Non-Final Office Action Summary page, we find no detailed
statement of rejection to review for dependent claim 4 in the Non-Final
Action, mailed Sept. 25, 2017. Nor does the Examiner indicate in the record
that claim 4 is allowable or "objected to." See Id. Therefore, the status of
claim 4 is unclear on appeal. (We note the Examiner relies on claim 4 in the
Zhou reference and paragraph 53 of Zhou as evidence. See Non-Final Act.
5, 7). For such claims of undetermined status, the Board has no adverse
decision establishing a prima facie case under 35 U.S.C. § 132(a) to review,
and thus we have no jurisdiction under 35 U.S.C. §6(b) as to any claims that
were not rejected. Accordingly, dependent claim 4 is not before us on
appeal.
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Application 14/501,725
Czompo or Zhou, and Pijl et al. (US 2015/0173037 Al, published June 18,
2015) ("Pijl"). Non-Final Act. 10.
Issues on Appeal
1. Did the Examiner err in concluding that claims 1-3, 7, 9, 11, 12,
15-17, and 19 are obvious over the cited combination of Kahn,
Siliski, and Czompo or Zhou, under 35 U.S.C. § 103?
2. Did the Examiner err in concluding that claims 10 and 18 are obvious
over the cited combination of Kahn, Siliski, Czompo or Zhou, and
Webb under 35 U.S.C. § 103?
3. Did the Examiner err in concluding that claims 13 and 14 are obvious
over the cited combination of Kahn, Siliski, Czompo or Zhou, and Pijl
under 35 U.S.C. § 103?
Claim Grouping
Based upon Appellants' arguments, we decide the appeal of Rejection
A of claims 1-3, 7, 9, 11, 12, 15-1 7, and 19 on the basis of representative
independent claim 1. We address remaining Rejections B and C, infra. See
37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
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We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's responses to Appellants'
arguments. Appellants have not proffered sufficient arguments and evidence
to persuade us of error regarding the Examiner's underlying factual findings
and ultimate legal conclusion of obviousness for all claims 1-3, 7, and 9-19
on appeal. In our analysis below, we highlight and address specific findings
and arguments for emphasis.
Rejection A of Independent Claims 1, 7 and 15
Issue: Under 35 U.S.C. § 103, did the Examiner err by finding Kahn,
Siliski, and Czompo or Zhou collectively teach or suggest the contested
limitations Ll: "processing circuitry that determines the user's cadence
based on the motion sensor data and that determines whether the user is
running without using the location information by comparing the user's
cadence to a cadence threshold," and
L2: "wherein when the processing circuitry determines that the user is
not running, the processing circuitry uses the motion sensor data and the
location information to determine whether the user is walking or cycling,"
within the meaning of representative independent claim 1? 4 (Emphasis
added).
Appellants note that claim 1 recites processing circuitry that makes
two distinct determinations: (1) "In the first determination, the processing
circuitry determines whether the user is running based on the motion sensor
4 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. Morris, 127 F.3d at
1054.
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data without using location information." (2) "In the second determination,
which occurs 'when the processing circuitry determines that the user is
not running,' the processing circuitry determines whether the user is
walking or cycling based on the motion sensor data and the location
information." App. Br. 5-6 ( emphasis added).
Appellants contend:
Kahn describes a single step in which the system uses
motion data to determine if the user is walking, jogging,
or sprinting (para. 36 of Kahn). Kahn does not describe a
second step, which occurs after the system determines that the
user is not running, in which motion data and location
information are used to determine if the user is walking or
cycling. Kahn does not even acknowledge that motion data may
look similar for certain activities, let alone for walking and
cycling ( cycling is not mentioned in Kahn).
App. Br. 7 ( emphasis added).
Appellants further contend that Siliski, Czompo, and Zhou fail to
make up for the deficiencies of Kahn:
Siliski is directed to Wi-Fi based positioning and using
speed as a threshold for determining when Wi-Fi or GPS should
be used to determine a user's location (para. 4 of Siliski).
Although Siliski mentions that different user activities such as
running and cycling result in different speeds of the device,
Siliski does not actually discuss classifying the user's activity and
is merely concerned with determining the speed of the device for
the purposes of selecting Wi-Fi or GPS to determine the user's
location (para. 26 of Siliski). Not only is Siliski unrelated to
classifying a user's activity, but Siliski is also silent with respect
to combining motion sensor data with location information.
Thus, even if one were to combine the location/speed
information of Siliski in the system of Kahn, the proposed
combination would still be lacking processing circuitry that uses
motion sensor data and location information to determine
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whether the user is walking or cycling, let alone processing
circuitry that performs this step after it determines that the user
is not running using motion sensor data alone.
App. Br. 7-8. (emphasis added).
In the Answer, the Examiner disagrees, and provides further
explanation in support of the rejection:
Regarding claim 1, Appellant's argue ( on page 7) that
Khan only teaches a "single step" of determining between
walking and running but does not teach the "second step" of
"after determining not running, using location data to determine
walking or cycling". As described in the Rejection, the other
references (such as Zhou and Compzo) in combination with
Khan, teach the recited "second step" and also teach
the motivation for this subsequent step ("after" Khan has
"determined not running").
Ans. 2 ( emphasis added).
As evidence, the Examiner relies on:
[S]ection [0046] of Zhou [which] teaches that GPS requires
substantial power from mobile device batteries, and section
[0053] teaches that only acceleration data may be used to
discriminate between walking and running, but that
location/speed data is required to discriminate between other
types of motion which have similar types of accelerometer data.
Ans. 2.
We note Zhou ,-J 53 expressly teaches: "accelerometer data can be
used to effectively recognize walking and running modes." The Examiner
additionally relies upon Czompo:
Similarly, Czompo teaches that motions may be classified
using only "motion" or accelerometer data, and section [0061]
teaches that the motion comparison stage 408 may "also consider
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other information 410, such as location or velocity information"
in order to determine the type of user motion.
Ans. 2.
We begin our analysis with claim construction. 5 We tum to the
Specification for context. Applying a broad but reasonable interpretation to
independent claim 1, we construe the claim language "cadence threshold'' as
a combination of recognized plain meaning terms (i.e., a pattern or rhythm
of repeated movements (cadence) at a critical rate per unit of time - a
threshold frequency), consistent with the supporting description found in the
Specification at paragraphs 36, 41, 42, 45, and 53 (emphasis added).
We reproduce the following portion of paragraph 36 of the
Specification, in context below:
Motion sensor circuitry 50 may determine which type of
activity is being performed based at least partly on motion
sensor data ( e.g., from an accelerometer or other motion
sensor). For example, motion sensor circuitry 50 may
determine a user's cadence based on motion sensor output.
Based on the user's cadence, motion sensor circuitry 50 may
determine which type of activity is being performed by the user.
5 Claim construction is an important step in a patentability determination. A
legal conclusion that a claim is obvious involves two analytical steps,
assuming the references have been properly combined under § 103. See
Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) ("Both
anticipation under § 102 and obviousness under § 103 are two-step inquiries.
The first step in both analyses is a proper construction of the claims .... The
second step in the analyses requires a comparison of the properly construed
claim to the prior art." (internal citations omitted)). Under the second step,
the Board must compare the construed claim to one or more prior art
references and make factual findings regarding the limitations contested by
Appellants. See In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
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For example, motion sensor circuitry may determine that
cadences below a given threshold correspond to walking,
whereas cadences above the given threshold correspond to
runmng.
Specification 11, 11. 18-28 ( emphasis added).
Given this construction (id.), we tum to the evidence relied upon by
the Examiner in support of the rejection. (Non-Final Act. 2-6; Ans. 2-4).
The Examiner finds the disputed "cadence threshold" limitation ( claim 1 ),
that is identically recited in independent claims 7 and 15, is taught or
suggested principally by Kahn, at paragraph 36, which describes
determining cadence and speed of the user. Non-Final Act. 3. The
Examiner also points to Zhou, at paragraph 53, which describes:
"accelerometer data can be used to effectively recognize walking and
running modes." Non-Final Act. 5.
We reproduce the cited portions in context below:
In one embodiment, the system can detect the difference
between a leisurely amble, a walk, a jog, a sprint, and other
types of steps that the user can take. The various types of
steps indicate various modes of travel. For example, a user who
is jogging has a different environment than one who is ambling,
from a noise perspective. In one embodiment, the algorithm
described in co-pending application Ser. No. 12/069,267 is
used. The algorithm in one embodiment determines the
cadence and speed of the user. For example, the optimal noise
reduction mode for a user who is running is different from the
optimal mode for a user who is walking at a slow pace. For
example, the user's speed generates wind over the microphone
and thus noise. The process then ends at block 350.
Kahn ,-J 36 (emphasis added).
One of the key challenges is how to distinguish driving
versus walking. In walking mode, talking through the mobile
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phone can be allowed, but texting while walking should be
discouraged for safety concerns. In driving mode, both talking
and texting actions should be prevented. If only GPS data are
used in activity mode recognition, it is easy to identify driving
mode when the speed is high (e.g. greater than 15 miles/hour).
However, when the moving speed is low, it is difficult to
distinguish driving, walking or running modes. On the other
hand, the accelerometer data can be used to effectively
recognize walking and running modes. But when using
accelerometer data only, it can be difficult to distinguish if the
car/user is moving at a relatively constant speed or remaining
substantially stationary.
Zhou ,i 53 ( emphasis added).
Regarding the evidence relied upon by the Examiner, we find at least
paragraph 36 of Kahn and paragraph 53 of Zhou, in combination, teach or
suggest disputed limitation L 1 of claim 1: "processing circuitry that
determines the user's cadence based on the motion sensor data and that
determines whether the user is running without using the location
information" (See Kahn, Fig. 3, element 320: "Identify user motion (walk,
run, jog, etc.") "by comparing the user's cadence to a cadence threshold''
(See Kahn ,i 36: the algorithm in one embodiment determines the cadence
and speed of the user). 6
Based upon our review of the record, we find at least paragraph 3 6 of
Kahn and paragraph 53 of Zhou, in combination, also teach or suggest
6 "Combining two embodiments disclosed adjacent to each other in a prior
art patent does not require a leap of inventiveness." Boston Scientific
Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). Moreover,
an obviousness inquiry is not limited to the prior art's preferred
embodiment. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1370
(Fed. Cir. 2007).
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disputed limitation L2 of claim 1: "wherein when the processing circuitry
determines that the user is not running, the processing circuitry uses the
motion sensor data" (See Zhou ,i 53: accelerometer data) and the location
information (See Zhou ,i 46 GPS receiver) "to determine whether the user is
walking or cycling." (emphasis added). See Zhou ,i 53, i.e., using
accelerometer data to recognize walking and running modes. See also
Zhou' s claim 4: "us[ing] a single source or multiple sources of motion data
to identify when a user of the mobile wireless computing device is
performing a task selected from the group consisting of driving, walking,
running, and remaining substantially stationary." Zhou, page 6, right
column, claim 4.
We emphasize that our reviewing court guides: "'the question under
35 USC 103 is not merely what the references expressly teach but what they
would have suggested to one of ordinary skill in the art at the time the
invention was made."' Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA
1976)). (Emphasis added); see also MPEP § 2123.
This reasoning is applicable here.
Therefore, based upon a preponderance of the evidence, Appellants
have not persuaded us of error regarding the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness for the disputed
limitations L 1 and L2 of representative claim 1. We note that remaining
independent claims 7 and 15 recite similar language of commensurate scope.
Appellants recite the similar language of independent claim 7 (App.
Br. 9), and urge that "[ c ]laims 9-14 depend from claim 7 and are allowable
at least because claim 7 is allowable." App. Br. 10. However, we find no
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deficiencies with the Examiner's rejection A of independent claims 1, 7, and
15 over the same combination of references, as discussed above.
Appellants recite the similar language of remaining independent claim
15 (App. Br. 10-11) and urge that"[ c ]laims 16-19 depend from claim 15
and are allowable at least because claim 15 is allowable." App. Br. 11.
However, we find no deficiencies with the Examiner's rejection A of
independent claims 1, 7, and 15 over the same combination of references.
Accordingly, we sustain the Examiner's Rejection A of representative
independent claim 1. Grouped claims 2, 3, 7, 9, 11, 12, 15-17, and 19 fall
with representative claim 1. See supra "Claim Grouping." See 37 C.F.R.
§ 41.37(c)(l)(iv).
Claims 10 and 18 rejected under Rejection B
Regarding claims 10 and 18 rejected under Rejection B, Appellants
recite the claim language and contend "Webb fails to make up for the
deficiencies of Khan, Siliski, Czompo, and Zhou." App. Br. 11-12.
However, we find no deficiencies with the Examiner's rejection A of
independent claims 1, 7, and 15 over the teachings and suggestions of Khan,
Siliski, and Czompo or Zhou for the reasons discussed above.
Claims 13 and 14 rejected under Rejection C
Regarding claims 13 and 14 rejected under Rejection C, Appellants
recite the claim language contend the secondary Pijl reference "fails to make
up for the deficiencies of Khan, Siliski, Czompo, and Zhou." App. Br.
12-13. However, we find no deficiencies with the Examiner's rejection A
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of independent claims 1, 7, and 15 over the teachings and suggestions of
Khan, Siliski, and Czompo or Zhou for the reasons discussed above.
Reply Brief
Appellants argue the Examiner has relied upon impermissible
hindsight in combining the cited references. Reply Br. 5. However,
Appellants do not provide any evidence sufficient to demonstrate that
combining the teachings of the cited references in the manner proffered by
the Examiner (Final Act. 3-11 ), would have been "uniquely challenging or
difficult for one of ordinary skill in the art," Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007), nor have Appellants
provided any objective evidence of secondary considerations, which our
reviewing court guides "operates as a beneficial check on hindsight," Cheese
Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341, 1352
(Fed. Cir. 2013).
Moreover, as noted above, the reason(s) or motivation(s) to combine
the references may often suggest what the inventor has done, but for a
different purpose or to solve a different problem. It is not necessary that the
prior art suggest the combination to achieve the same advantage or result
discovered by Appellant. See In re Kahn, 441 F.3d 977, 987 (Fed. Cir.
2006) (motivation question arises in the context of the general problem
confronting the inventor rather than the specific problem solved by the
invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424
F.3d 1293, 1323 (Fed. Cir. 2005) ("One of ordinary skill in the art need not
see the identical problem addressed in a prior art reference to be motivated
to apply its teachings.").
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CONCLUSION
The Examiner did not err in rejecting claims 1-3, 7, and 9-19 under
35 U.S.C. § 103 as being obvious over the combined teachings and
suggestions of the cited references.
DECISION
We affirm the Examiner's decision rejecting claims 1-3, 7, and 9-19
under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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