Hiroshi Usuda et al.

Patent Trials and Appeals Board

Nov 4, 2019

13567647 - (D) (P.T.A.B. Nov. 4, 2019)

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.
13/567,647 08/06/2012 Hiroshi Usuda SONYJP 3.3-322
RE CONT 1
6651
15028 7590 11/04/2019
SONYJP
Lerner, David, Littenberg, Krumholz & Mentlik, LLP
20 Commerce Drive
Cranford, NJ 07016
EXAMINER
CAMPBELL, JOSHUA D
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
11/04/2019 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):
eOfficeAction@lernerdavid.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte HIROSHI USUDA, EIJI MIYAZAKI,
and SHINJI YAMACHIKA1
________________

Appeal 2017-009494
Application 13/567,647
Technology Center 3900
________________

Before BRADLEY W. BAUMEISTER, SHARON FENICK, and
RUSSELL E. CASS, Administrative Patent Judges.

FENICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 25–27 and 29–35, which are all claims pending.
Appeal Br. 2.2 We have jurisdiction under 35 U.S.C. § 6(b)(1). An oral

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant lists Sony Corporation as the real party in
interest. Appeal Brief filed March 7, 2017 (“Appeal Br.”) 1.
2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents: the Final Action mailed August 24, 2016 (“Final
Action”); the Examiner’s Answer mailed May 5, 2017 (“Ans.”); and the
Reply Brief filed June 29, 2017 (“Reply Br.”).
Appeal 2017-009494
Application 13/567,647

2
hearing was conducted on June 24, 2019. A transcript of the oral hearing
has been made of record (“Tr.”). We AFFIRM.
Introduction
The instant application is a continuation reissue application of
Application 12/455,319 (issued as US RE43,657 on Sept. 11, 2012), which
is a reissue application of Application 10/493,403 (“the ’403 Application”)
(issued as US 7,225,101 B2 on May 29, 2007 (“the ’101 patent”)). Final
Action 2. Applicant furnished the ’101 patent as the Specification (“Spec.”)
for this application. See 37 C.F.R. § 1.173(a)(1).
According to Appellant, the claimed subject matter relates to signal
compensation in an electronic device. Spec. 1:8–12. Specifically, Appellant
discloses:
[I]n a primary aspect of the present invention, an electronic
device includes an angular velocity sensor that outputs a first
signal in accordance with a rotational angular velocity, means for
storing in advance data of a second signal normally output by the
angular velocity sensor that is in a stationary state, means for
detecting a stationary state, means for extracting the difference
between the first signal and the second signal when the stationary
state is detected, means for compensating for the first signal
based on the extracted difference signal, and a display unit that
scrolls and displays an image based on the compensated signal.
Id. 1:49–60.
Claims 25 and 34 are independent. Independent claim 25, reproduced
below, illustrates the claimed invention:
25. An electronic device comprising:
an angular velocity sensor that outputs a first signal in
accordance with a rotational angular velocity;
Appeal 2017-009494
Application 13/567,647

3
a memory for storing in advance data of a second signal
output by the angular velocity sensor which is in a stationary
state;
an acceleration sensor that is used to detect a stationary
state of the device in space; and
a processor operable to:
determine data for adjusting the first signal using
the data of the second signal stored in advance in the
memory when the stationary state is detected based on a
difference between the first signal and the second signal;
and
adjust the first signal based on the determined data
for adjusting.
Appeal Br. 15 (Claims Appendix).
Rejections
Claims 25–27 and 29–35 stand rejected under 35 U.S.C. § 251 as an
improper recapture of broadened claimed subject matter surrendered in the
application for the patent upon which the reissue is based. Final Action 4–9.
Claims 25–27 and 29–35 stand rejected under 35 U.S.C. § 101 as
directed to nonstatutory subject matter. Final Action 9–13.
Claims 27 and 35 stand rejected under 35 U.S.C. § 112 as failing to
comply with the written description requirement. Final Action 14–15.
I. Rejection Under 35 U.S.C. § 251
Appellant argues that the Examiner has erred in rejecting claims 25–
27 and 29–35 as improperly recapturing subject matter surrendered in the
application for patent upon which the present reissue application is based.
Final Action 4–9.
Our reviewing court instructs that:
Under the recapture rule, a patentee is precluded “from regaining
the subject matter that [the patentee] surrendered in an effort to
Appeal 2017-009494
Application 13/567,647

4
obtain allowance of the original claims.” When that has
occurred, the patent is invalid. We apply the recapture rule as a
three-step process: (1) first, we determine whether, and in what
respect, the reissue claims are broader in scope than the original
patent claims; (2) next, we determine whether the broader aspects
of the reissue claims relate to subject matter surrendered in the
original prosecution; and (3) finally, we determine whether the
reissue claims were materially narrowed in other respects, so that
the claims may not have been enlarged, and hence avoid the
recapture rule.
North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d
1335, 1349 (Fed. Cir. 2005) (citations omitted).
A. First step of three-step recapture rule process — determination
of “whether, and in what respect, the reissue claims are broader in
scope than the original patent claims”
The claims that issued in the ’101 patent comprise “means for
extracting as a difference signal the difference between the first signal and
the second signal” and “means for adjusting the first signal based on the
extracted difference signal.” US Patent 7,225,101 B2, 12:12–15.
The Examiner finds that “determined data that is based on the
difference between the two signals” (as the Examiner characterizes the
corresponding limitations in the current application) “is most certainly
broader and not the same than determined data that is explicitly the
difference between the two signals.” Final Action 5–6. The Examiner
further notes that the declaration filed by the applicant in the instant
application specifies that the reissue claims filed are of broader scope than
the previously issued claims, because the term “difference signal” has been
removed. Id. at 6 (citing the Declaration under 37 C.F.R. § 1.175, filed
Dec. 18, 2014). Appellant’s counsel additionally conceded at the oral
hearing, while arguing that the claims are materially narrowed in some
Appeal 2017-009494
Application 13/567,647

5
respects, that “we agree that it is still a quote/unquote broadening reissue
because . . . there’s no longer the specific claim language of extract[ing] a
differen[ce] signal.” Tr. 16:1–3; see also Tr. 18:14–22.
With respect to the first step of the recapture rule process, we find that
the claims sought in this reissue are broader, in that they do not require
“extracting as a difference signal” the difference between the first signal and
the second signal, but rather only require the calculation of determined data
that is based on that difference.
B. Second step of three-step recapture rule process –
determination of “whether the broader aspects of the reissue claims
relate to subject matter surrendered in the original prosecution”
With respect to the second step of the recapture rule process, we look
to the entire prosecution history of the ’101 patent. See MBO Laboratories,
Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1318 (Fed. Cir. 2010).
While recapture cases often involve situations in which claim amendments
were made to overcome prior art, “[a]rguments made to overcome prior art
can equally evidence an admission sufficient to give rise to a finding of
surrender.” Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1481 (Fed. Cir.
1998). Any argument that the applicant of the ’101 patent relied upon to
overcome an art rejection binds the applicant for the reissue patent,
regardless of whether the Office adopted the argument in allowing the
claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271 (Fed.
Cir. 2012).
The Examiner contends that, during the prosecution of the application
that issued as the ’101 patent, “Applicant explicitly argued . . . that the
limitations regarding adjusting the first signal based on the extracted
difference signal was the reason the claims should overcome the applied
Appeal 2017-009494
Application 13/567,647

6
prior art references.” Final Action 6–8 (citing ’403 Application, Arguments
filed Jan. 3, 2007, p. 3). In the ’403 Application, Applicant argued, with
respect to a rejection based in part on Takashi et al. (JP 2000-65576 A,
published March 3, 2000), that “the Takashi reference does not teach
‘adjusting the first signal based on the extracted difference signal.’ Instead,
Takashi uses separate ‘earth magnetism sensors’ to compensate for the drift
that can occur in the device’s angular velocity sensor.” ’403 Application,
Arguments filed Jan. 3, 2007, p. 3. Thus, the Examiner concludes that the
Applicant’s surrender encompasses any claims that do not include the
specific limitation used to overcome the art of record, that of “adjusting the
first signal based on the extracted difference signal.” Final Action 6–8;
Ans. 9.
Appellant argues that the surrender that occurred through this
argument was narrower. Appellant argues that “[i]n contrast to [the
’403 Application’s] claim 1, Takashi compensated for drift in an angular
velocity sensor using output of [] separate ‘earth magnetism sensors,’
meaning that it did not adjust based on a difference between a first signal
and second signal of the same angular velocity sensor.” Appeal Br. 11.
Appellant appears to argue that, in drawing a distinction over Takashi’s use
of separate earth magnetism sensors, applicant surrendered claim scope
relating to use of separate earth magnetism sensors to adjust the first signal,
rather than any claim scope that does not include the argued limitation.
Appeal Br.10–11; Reply Br. 7–8.
Appellant’s arguments do not track the distinction made in the file
history of the ’403 Application. The applicant there did not only argue that
the claims were distinguished from Takashi because they did not use earth
Appeal 2017-009494
Application 13/567,647

7
magnetism sensors, but also because they did use “the extracted difference
signal.” ’403 Application, Arguments filed Jan. 3, 2007, p. 3.
In Hester, a patent issued for a cooker for cooking large quantities of
food. Hester, 142 F.3d at 1474. During prosecution, the applicant
repeatedly distinguished the claims, which specified “cooking solely with
steam,” from a prior art cooker that cooked through a combination of steam
and another cooking method. Id. at 1475–76. Applicant also distinguished
based on a limitation that specified cooking with “two sources of steam.” Id.
The Federal Circuit, in the second step of the three-step recapture-rule
process, found that the repeated arguments based on these two claim
limitations to distinguish from the prior art constituted an admission that the
limitations were “necessary to overcome the prior art.” Id. at 1482.
Because of this, the Hester applicant, “through [an] admission effected by
way of his repeated prosecution arguments, surrendered claim scope that
does not include these limitations.” Id. The Federal Circuit described the
surrendered subject matter as “cooking other than solely with steam and with
at least two sources of steam” — basing this description on the claim
limitations relied upon, rather than the prior art being distinguished. Id.
Similarly, we agree with the Examiner that, while Applicant’s
arguments in the ’403 Application discussed Takashi’s use of earth
magnetism sensors, Applicant did not focus solely on the lack of earth
magnetism sensors in the claims. Instead, the ’403 Application Applicant
argued also that the distinction was based on the limitation of “adjusting the
first signal based on the extracted difference signal.”
Following Hester, we find that the surrendered subject matter is an
electronic device other than one with a processor operable to adjust the first
Appeal 2017-009494
Application 13/567,647

8
signal based on an extracted difference signal. Additionally, we find that the
reissue claim relates to the surrendered subject matter because it eliminates
the claim language in the original claim relating to the surrendered subject
matter which was relied on by the ’403 Application Applicant.
C. Third step of three-step recapture rule process – determination
of “whether the reissue claims were materially narrowed in other
respects, so that the claims may not have been enlarged, and hence
avoid the recapture rule”
With respect to the third step, the Examiner finds that
[s]imply stated, new claims 25–27 and 29–36 omit the language
of the limitations in question requiring “adjusting the first signal
based on the extracted difference signal” . . . in an attempt to
broaden said limitations and thus would amount to impermissible
recapture due to the omission of surrender-generating
limitations.
Final Action 9.
In In re Youman, our reviewing court noted that a broadening
modification relating to surrendered subject matter area should be “evaluated
to determine if it materially narrows . . . such that surrendered subject matter
is not entirely or substantially recaptured.” In re Youman, 679 F.3d 1335,
1345 (Fed. Cir. 2012) (citation omitted). Thus, in a case where a limitation
is added during prosecution to overcome prior art, the elimination of the
added limitation in its entirety would be a recapture of surrendered subject
matter. Id. at 1345. However, “if the patentee modifies the added limitation
such that it is broader than the patented claim[,] yet still materially narrows
relative to the original claim [without the added limitation], the recapture
rule does not bar reissue.” Id. at 1347.
We agree with Appellant that the appealed claims present a similar
situation. Appeal Br. 11; Reply Br. 8–9. To determine whether a modified
Appeal 2017-009494
Application 13/567,647

9
limitation is materially narrowing, we use as a ceiling “any recapture of
surrendered subject matter that was in the prior art of the original
prosecution.” In re Youman, 679 F.3d at 1347 (citing In re Mostafazadeh,
643 F.3d 1353, 1356–57 (Fed Cir. 2011)). Thus, “[w]here the modified
limitation was contained in the prior art relied on by the examiner in the
original prosecution . . . the limitation is not materially narrowing.” Id.
Here, the Examiner does not compare the surrendered claim scope to the
scope of the claims in this reissue application to determine whether a
material narrowing occurred, or make a determination that the modified
limitation in the reissue claims was contained in the prior art relied on by the
Examiner during the original prosecution.
We agree with the Appellant that the prior art relied on by the
examiner in the original prosecution did not include the modified limitation
in the reissue claim requiring a “determin[ation] of data for adjusting the
first signal . . . based on a difference between the first signal and the second
signal” or the “adjust[ing of] the first signal based on the determined data for
adjusting.” See Appeal Br. 10–11 (discussing the prior art distinguished
over in the prosecution of the ’403 Application). The Examiner has not
established that the modified limitation, even if broader than the original
claim language, fails to materially narrow the surrendered claim scope.
Therefore, we determine that claim 25 avoids the recapture rule, and
reverse the Examiner’s rejection under 35 U.S.C. § 251 as improper
recapture of broadened claimed subject matter. Independent claim 34, and
dependent claims 26, 27, 29–33, and 35 are rejected by the Examiner and
argued by Appellant on the same basis, and for the same reasons, we reverse
the rejection under 35 U.S.C. § 251 of these claims as well.
Appeal 2017-009494
Application 13/567,647

10
II. Rejection Under 35 U.S.C. § 101
A. Principles of Law
SECTION 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), and
Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
accordance with that framework, we first determine what concept the claim
is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims
before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561
U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
Appeal 2017-009494
Application 13/567,647

11
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; 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.”). Having said that, the Court
also indicated that a claim “seeking patent protection for 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 Benson and
Flook); see, 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 turn 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 (citation 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. (alterations in original) (quoting Mayo, 566 U.S. at 77).
Appeal 2017-009494
Application 13/567,647

12
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
USPTO SECTION 101 GUIDANCE
In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of 35 U.S.C.
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”). Under the 2019
Guidance, we first look to whether the claim recites the following:
(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)).
2019 Guidance, 84 Fed. Reg. 52–55.
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:
(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.
2019 Guidance, 84 Fed. Reg. 56.
Appeal 2017-009494
Application 13/567,647

13
B. Analysis
Applying the Revised Guidance to the facts on this record, we find
that Appellant’s claims 25–27 and 29–35 are directed to patent-ineligible
subject matter.
Step 2A, Prong 1
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites 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). 84 Fed. Reg. 52–55.
The Examiner finds that the claims recite the concept of “determining
how to adjust and adjusting a signal based on the analysis of collected
information,” a concept the Examiner identifies as related to organizing
information through mathematical correlations (as in Digitech Image Techs.,
LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)), and
also to comparing new and stored information and using rules to identify
options (as in SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F.
App’x 950 (Fed. Cir. 2014)). Final Action 10. We agree and find that the
Examiner’s identified concepts reasonably can be characterized as mental
processes, even if they invoke a computer and its basic functionality. See
SmartGene, 555 F. App’x 950 at 954–955.
Appellant argues that the Federal Circuit in Digitech “specifically
noted” that the claims did not require input from a physical device and were
not tied to a specific structure or machine. We address this argument under
our prong 2 determination. Appeal Br. 4.
Appeal 2017-009494
Application 13/567,647

14
Additionally, Appellant contends that “the [Federal Circuit’s] limited
ruling in SmartGene does not apply to Applicants’ current claims, which
recite features that do not constitute routine operations a person performs
without a computer.” Id. at 5. With respect to this argument, we note that
whether a computer would be necessary to perform such steps is not
dispositive, as we treat “analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category.” Electric Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (emphasis added).
“[M]erely presenting the results of abstract processes of collecting and
analyzing information, without more . . . is abstract as an ancillary part of
such collection and analysis.” SAP Am. Inc. v. InvestPic, LLC, 898 F.3d
1161, 1167 (Fed. Cir. 2018) (quoting Electric Power, 830 F.3d at 1354).
Claim 25 recites limitations including the following: “storing in
advance data of a second signal output by the angular velocity sensor which
is in a stationary state,” “determine data for adjusting the first signal using
the data of the second signal stored in advance in the memory when the
stationary state is detected based on a difference between the first signal and
the second signal,” and the “adjust the first signal based on the determined
data for adjusting.” These limitations, under their broadest reasonable
interpretation, recite mental processes.
For example, “storing in advance data of a second signal output by the
angular velocity sensor which is in a stationary state” can be performed by a
mental observation. “[D]etermining] data for . . . based on a difference
between the first signal and the second signal” reasonably can be
characterized as the creation of new data based on two existing pieces of
Appeal 2017-009494
Application 13/567,647

15
data, and “adjust[ing] the first signal based on the determined data for
adjusting” reasonably can be characterized as changing one data value based
on another, which can be done by mental calculation or evaluation.
Accordingly, we conclude the claims reasonably can be characterized as
reciting observing and evaluating information in steps, which are essentially
mental processes, and, thus, an abstract idea.
Thus, we concur with the Examiner that the claim recites one or more
patent-ineligible abstract ideas, and we are not convinced of error by
Appellant’s arguments.
Step 2A, Prong 2
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that integrate the judicial
exception into a practical application. 84 Fed. Reg. 52–55.
Appellant argues, regarding Digitech, that the claims require input
from a physical device because “independent claims 25 and 34 are each tied
to the operation and use of a particular set of sensors.” Appeal Br. 4.
Additionally, Appellant argues that “the subject matter of the claims has
been practically applied to improve the operation of specific devices.” Id. at
6–7. “Put another way,” Appellant argues, “the methods and configurations
recited in Applicant’s claims improve the functioning of devices that use
angular velocity sensors.” Id. at 8.
We acknowledge that claim 25 recites additional limitations that
contain elements that arguably are beyond the above-noted mental
processes. More specifically, claim 25 recites a memory and processor
performing the discussed patent-ineligible ideas. These elements are readily
Appeal 2017-009494
Application 13/567,647

16
available computing elements using their already available basic functions as
tools. See SAP Am., Inc. v. InvestPic LLC, 898 F. 3d 1161 (Fed. Cir. 2018).
Additionally, claim 25 recites “an angular velocity sensor that outputs
a first signal in accordance with a rotational angular velocity.” However, the
recitation of this sensor does not meaningfully integrate the abstract ideas
into a practical application because the limitation reasonably can be
characterized as merely constituting insignificant pre-solution activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g); see Ans. 7.
While Appellant argues that the claim “improves the operation of
specific devices,” the claim itself merely describes reading data, storing data,
and adjusting data, and Appellant does not meaningfully show how, in the
claim, this adjustment is practically applied to improve the operation of
specific devices.
More generally, then, Appellant does not persuade us that claim 25 is
directed to an improvement in the functioning of a computer or to any other
technology or technical field. MPEP § 2106.05(a). Nor has Appellant
persuasively demonstrated that claim 25 is directed to a particular machine
or transformation. MPEP § 2106.05(b), (c). Nor has Appellant persuasively
demonstrated that claim 1 adds any other meaningful limitations. MPEP
§ 2106.05(e). Accordingly, Appellant has not persuaded us that claim 25
integrates the recited abstract ideas into a practical application within the
meaning of the 2019 Guidance. 84 Fed. Reg. 52–55.
Appeal 2017-009494
Application 13/567,647

17
Step 2B
Under step 2B of the 2019 Guidance, we next analyze whether claim
2 adds any specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field. 84 Fed. Reg. 56; MPEP §
2106.05(d).
Appellant argues
[Appellant] submit[s] that the independent claims include claim
limitations that comprise “significantly more” than a mere
abstract idea and are not merely generic computing structures to
implement the abstract idea. For example, claim 25 recites a
specific configuration of sensors within a device, which is non-
abstract. The compensation of a sensor output, so as to prevent
failure due to sensor drift, is necessarily rooted in data processing
technology, however the claims go beyond simply claiming steps
of data processing, as the claims set forth an improved electronic
device. The same can be said for independent claim 35.
Appeal Br. 8–9.
The Examiner disagrees, finding that “[o]nce the inputs are received
from the sensors in the conventional manner . . . the sensors are no longer
used and perform no additional steps” and “the structure presented in the
claims of conventional well-known sensors connected to a processor and a
memory appears to be nothing more than a general purpose computer.”
Ans. 7. We agree. We additionally note that the specification discloses that
“the present invention is applicable to any device using an angular velocity
sensor.” Spec. 11:54–56.
For these reasons, we determine that claim 25 does not recite
additional elements that amount to significantly more than the judicial
exception within the meaning of the 2019 Guidance. 84 Fed. Reg. 52–55;
MPEP § 2106.05(d).
Appeal 2017-009494
Application 13/567,647

18
Accordingly, we sustain the Examiner’s rejection of claim 25 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. We,
likewise, sustain the section 101 rejection of claims 26, 27 and 29–35, not
argued separately by Appellant. Appeal Br. 9.
III. Rejection Under 35 U.S.C. § 112
The Examiner rejects claims 27 and 35 under 35 U.S.C. § 112 as
failing to comply with the written description requirement. Final Action 14–
15. Claim 27 depends from claim 26, which, in turn, depends from
claim 25. Claims 26 and 27 are reproduced here, with the disputed
limitation emphasized:
26. The electronic device according to Claim 25, wherein when
the stationary state has been detected, the processor determines
the data for adjusting the first signal using the data of the first
signal output from the angular velocity sensor and the second
signal stored in advance in the memory.
27. The electronic device according to Claim 26, wherein when
the stationary state has been detected, the processor determines
as the data for adjusting based on a displacement of an output
voltage per unit time of the acceleration sensor.
Appeal Br. 15 (Claims Appendix) (emphasis added).
The Examiner finds that
[t]he specification . . . appears to only specifically disclose an
embodiment wherein the first signal is adjusted or compensated
by the difference signal that is obtained by extracting the
difference between the first and second signals representing
outputs of the angular velocity sensor, not the acceleration sensor
(see column 9, line 14-column 10, line 34 of [the] ’101 [patent].
Final Action 14.
Appeal 2017-009494
Application 13/567,647

19
Appellant contends that
claims 27 and 35 do not require that the acceleration sensor
output itself be used to adjust or compensate the first signal.
Instead, the acceleration sensor output, as recited in claims 27
and 35, is being used to determine the “second signal,” and it is
the “second signal” that will then be used to adjust the first
signal.
Appeal Br. 13; see also Reply Br. 10–11.
Appellant argues that the written description support is found in the
Specification’s indication that “the disclosed electronic device may
determine if it is in a stationary state based on the output of an acceleration
sensor.” Appeal Br. 13 (citing Spec. 8:34–46, 9:24–50). Appellant provides
the same reasoning for claim 35.
However, claim 27 describes that the processor “determines as the
data for adjusting based on . . . the acceleration sensor” and that this occurs
“when the stationary state has been detected.” Thus, the Appellant’s
discussion of the use of the acceleration sensor to detect a stationary state
does not support the further use of data from the acceleration sensor,
including “determin[ing] as the data for adjusting” based on acceleration
sensor data. Claim 35 contains similar limitations.
For these reasons, we are not persuaded of error in the Examiner’s
§ 112 rejection of claims 27 and 35.
CONCLUSION
We reverse the rejection of claims 25–27 and 29–35 under 35 U.S.C.
§ 251.
We affirm the rejection of claims 25–27 and 29–35 under 35 U.S.C.
§ 101.
We affirm the rejection of claims 27 and 35 under 35 U.S.C. § 112.
Appeal 2017-009494
Application 13/567,647

20
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
25–27, 29–
35
251 25–27, 29–
35
25–27, 29–
35
101 25–27, 29–
35

27, 35 112 27, 35
Overall
Outcome
25–27, 29–
35

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED