Ex Parte Davis et al

Patent Trial and Appeal Board

Oct 30, 2018

12757251 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/757,251 04/09/2010 Clayton P. Davis
33164 7590 11/01/2018
RAYTHEON COMPANY
C/0 DALY, CROWLEY, MOFFORD & DURKEE, LLP
ONE UNIVERSITY A VENUE
SUITE 201B
WESTWOOD, MA 02090
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.
RTN-512PUS (U09002) 2303
EXAMINER
SCHINDLER, DAVID M
ART UNIT PAPER NUMBER
2858
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
docketing@dc-m.com
amk@dc-m.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLAYTON P. DA VIS, MITCHELL R. BELZER,
BENJAMIN P. DOLGIN, JAMES C. ZELLNER,
JOHN T. ISHIBASHI, and
JOSEPH C. LANDRY
Appeal2017-003401
Application 12/757 ,251
Technology Center 2800
Before RAEL YNN P. GUEST, N. WHITNEY WILSON, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
October 19, 2015 decision rejecting claims 1, 4---6, 8, 10-15, 18-20, 22, 24--
29, 31-33, 35, and 37 ("Non-Final Act."). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We affirm.
1 Raytheon Company is identified as the real party in interest (Appeal Br. 2).
Appeal2017-003401
Application 12/757 ,251
CLAIMED SUBJECT MATTER
Appellants' disclosure relates to a method of navigation which
includes receiving a magnetic field signal from a magnetic field transducer
(Abstract). The magnetic field signal is proportional to sensed magnetic
fields associated with magnetic field sources (id.). A processor processes
the magnetic field signal to determine magnetic field axes of rotation
corresponding to rotations of the sensed magnetic fields, and using the
magnetic field axes of rotation to render a position of the magnetic field
transducer (id.).
Details of the claimed invention are set forth in representative claims
1, 15, and 29, which are reproduced below from the Claims Appendix to the
Appeal Brief:
1. A method of navigation for providing a location of a rotating
object, comprising:
receiving a magnetic field signal from a rotating
magnetic field transducer, the magnetic field signal proportional
to sensed magnetic fields associated with a plurality of
magnetic field sources;
in a processor, processing the magnetic field signal to
determine a plurality of magnetic field axes of rotation
corresponding to rotations of the sensed magnetic fields;
using the plurality of magnetic field axes of rotation to
render a position of the magnetic field transducer comprising:
determining a plurality of orientations of the
magnetic field axes of rotation relative to a
predetermined coordinate system; and
using the plurality of orientations of the magnetic
field axes of rotation to render the position of the
magnetic field transducer; and
2
Appeal2017-003401
Application 12/757 ,251
performing a differential geometric technique to
minimize a loss function.
15. A navigation system to provide a location of a rotating
object, comprising:
a processor to receive a magnetic field signal from a
rotating magnetic field transducer, the magnetic field signal
proportional to sensed magnetic fields associated with a
plurality of magnetic field sources;
a memory coupled to the processor, the memory
including program instructions for providing navigation
information by:
processing the magnetic field signal to determine a
plurality of magnetic field axes of rotation corresponding to
rotations of the sensed magnetic fields;
using the plurality of magnetic field axes of rotation to
render a position of the magnetic field transducer comprising
determining a plurality of orientations of the magnetic
field axes of rotation relative to a predetermined coordinate
system; and
using the plurality of orientations of the magnetic field
axes of rotation to render the position of the magnetic field
transducer; and
performing a differential geometric technique to
minimize a loss function.
29. A computer-readable medium having encoded thereon
software for providing navigation information for providing a
location of a rotating object, said software comprising
instructions for:
determining a plurality of magnetic field axes of rotation
corresponding to rotations of magnetic fields sensed by a
rotating magnetic field transducer and associated with a
plurality of magnetic field sources; and
3
Appeal2017-003401
Application 12/757 ,251
processing the plurality of magnetic field axes of rotation
to render a position of the magnetic field transducer including:
determining a plurality of orientations of the magnetic
field axes of rotation relative to a predetermined coordinate
system; and
using the plurality of orientations of the magnetic field
axes of rotation to render the position of the magnetic field
transducer; and
performing a differential geometric technique to
minimize a loss function.
REJECTIONS
I. Claims 29, 31-33, 35, and 37 are rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
II. Claims 15, 18-20, 22, and 24--28 are rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to a judicial exception.
III. Claims 29, 31-33, 35, and 37 are rejected under 35 U.S.C.
§ 101 as being directed to a judicial exception.
IV. Claims 1, 4---6, 8, 10-15, 18-20, 22, 24--29, 31-33, 35, and 37
are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite.
V. Claims 1, 4, 5, 8, 10-15, 18, 19, 22, 24--29, 31, 32, 35, and 37
are rejected under 35 U.S.C. § I03(a) as unpatentable over Zeller2 in view of
Tunay. 3
2 Zeller et al., US 2005/0077085 Al, published April 14, 2005.
3 Tunay, US 2007/0038410 Al, published February 15, 2007.
4
Appeal2017-003401
Application 12/757 ,251
VI. Claims 6, 20, and 33 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Zeller in view of Tunay, and further in view of Gilboa. 4,5
DISCUSSION
Appellants argue the claims according to the following groupings:
(1) Claims 1, 10-15, 24--29, and 37 under§ I03(a) over Zeller in view
ofTunay.
(2) Claims 4, 8, 18, 22, 31, and 35 under§ 103(a) over Zeller in view
ofTunay.
(3) Claims 5, 19, 32 under§ I03(a) over Zeller in view of Tunay.
(4) Claims 6, 20, and 33 under§ I03(a) over Zeller in view ofTunay
and Gilboa.
( 5) Claims 15 and 29 under § 101.
(6) Claims 1, 4--8, 10-15, 18-20, 22, 24--29, 31-33, 35, and 37 under
§ 112, second paragraph as indefinite.
(Appeal Br. 6-7).
Claim 1 as unpatentable over Zeller in view of Tunay. Appellants
indicate that claims 1, 10-15, 24--29, and 37 stand or fall together.
4 Gilboa, US 2001/0038354 Al, published November 8, 2001.
5 In the Non-Final Rejection, the Examiner refers to Kawano et al.
(US 2010/0049033 Al, published Feb. 25, 2010) instead of Gilboa (Non-
Final Act. 22). However, the Examiner corrects this error in the Answer
(Ans. 19-20), and Appellants appear to have understood the nature of the
rejection.
5
Appeal2017-003401
Application 12/757 ,251
Accordingly, we focus our discussion on the rejection of claim 1 over Zeller
in view of Tunay. 6
Appellants contend that the cited art does not disclose or suggest the
step of receiving a magnetic field signal from a rotating magnetic field
transducer (Appeal Br. 8). The Examiner finds that this step is taught by
Zeller, in particular magnetic field transducer 90 as shown in the following
annotated version of FIG. 6a:
V
' tnm,mttwr 1
JuA.7111 f ().. unft
r -,
L - t X
1Y"'#. Scwv+i.f ~ l
F /t,,ut~ &c...,
Annotated FIG. 6a is a diagrammatic, plan view of a region in which a
system for tracking an in ground device such as, for example, a boring tool
is implemented using at least one transmitter having at least one rotating
magnet.
The Examiner finds that Zeller' s magnetic transducer 90 moves along
drill path 93 (the dotted line) as shown in FIG. 6a (Ans. 2). The Examiner
further finds that, as transducer 90 moves along drill path 93, it is rotating
around a virtual point at the center of the circle defined by drill path 93
6 Appellants' heading on page 7 of their Appeal Brief references "Zeller in
view of Stokar," but we presume that this is an error as the rejection is
plainly Zeller in view of Tunay.
6
Appeal2017-003401
Application 12/757 ,251
(Ans. 2-3). The Examiner also finds that Zeller teaches that transducer 90
can be contained in a boring tool, which has pitch and roll and, therefore, is
rotating (Ans. 4, citing Zeller ,r 154). As the boring tool rolls, according to
the Examiner, transducer 90 which is contained therein necessarily rolls (i.e.,
rotates) (Ans. 4, citing the American Heritage Dictionary definition of
"roll": "[t]o tum around or revolve on an axis").
Appellants argue that
one of ordinary skill in the art would recognize that the point in
space added by the Examiner cannot possibly be a center of a
circle that covers the entire bore path 93 ( e.g., the arrow added
by the Examiner cannot reach the bore path 93 where in
intersects with the Y-Axis)
(Appeal Br. 9). This argument is not persuasive because, as noted by the
Examiner, even if the entire drill path is not known or not circular, at least
for the portion shown in FIG. 6a, transducer 90 is rotating around the point
shown in the annotated figure.
Appellants further argue that a person of skill in the art would not
understand transducer 90 as rotating because Zeller does not explicitly recite
that it rotates, while it does state that other magnets do rotate (Reply Br. 2-
3 ). This argument is not persuasive either. Even if Zeller does not
specifically state that transducer 90 rotates, the Examiner has shown how, at
least in the path illustrated in FIG. 6a, transducer 90 is rotating. A person of
skill in the art would also have been able to see and understand this at the
time of invention.
It is well established that "the PTO must give claims their broadest
reasonable construction consistent with the specification. Therefore, we
look to the specification to see if it provides a definition for claim terms, but
7
Appeal2017-003401
Application 12/757 ,251
otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) ( citation omitted). The Specification
provides an example in which "a magnetic field transducer is rotating (i.e.,
its orientation is changing over time)." Spec. 11. Thus, the Specification
uses the term "rotating" broadly as it relates to the magnetic field transducer.
Appellants have not persuasively argued that the term "rotating magnetic
field transducer" has a meaning as used in claim 1 other than its broad
meaning as used in the Specification. Accordingly, it is properly construed
as broad enough to cover the change in orientation over time of transducer
90 as it moves along the drill path 93 as shown in Zeller.
Claim 4 as unpatentable over Zeller in view of Tunay. Appellants
state that claims 4, 8, 18, 22, 31, and 35 stand or fall together (Appeal Br.
11 ). Accordingly, we focus our discussion on the rejection of claim 4 over
Zeller in view of Tunay. 7
Appellants contend that the art does not disclose or suggest that using
the plurality of magnetic field axes of rotation to render the position of the
magnetic field transducer further comprises determining a number of angles
between the magnetic field axes of rotation and rendering the position of the
magnetic field transducer using the number of angles (Appeal Br. 11-12).
The Examiner finds that this limitation is taught by Zeller (Non-Final
Act. 18, citing Zeller, Fig. 4, ,r,r 181-182, 195-200). In particular, the
Examiner finds that "Zeller discloses rendering three axes of rotation by
7 Appellants' heading on page 7 of their Appeal Brief references "Zeller in
view of Stokar," but we presume that this is an error as the rejection is
plainly Zeller in view of Tunay.
8
Appeal2017-003401
Application 12/757 ,251
finding the bx, by, [and] bz values at a plurality of rotation angles" (Non-
Final Act., 2-3, citing Zeller ,r,r 181-182). The Examiner further finds that
Zeller therefore finds a plurality of rotation axes with corresponding rotation
angles, and uses these to find the position of the transducer (Non-Final Act.
3).
Appellants first argue that the Examiner does not adequately explain
how the cited teachings from Zeller correspond to the claimed limitations
(Appeal Br. 12). This argument is not persuasive because the Examiner
provides a very detailed explanation of the findings underlying the rejection
(Ans. 15-18) which Appellants concede is an adequate explanation of the
rejection (Reply Br. 4).
Appellants also argue that claim 4 requires that the recited magnetic
fields of rotation are associated with a plurality of magnetic field sources
( set forth in independent claim 1). Appellants argue that the Examiner's
findings regarding this limitations are supported solely by Zeller's FIG. 7,
which shows only a single rotating magnet A and, therefore, cannot meet the
claimed requirement of a plurality of magnetic fields (Reply Br. 4). This
argument is not persuasive, because the Examiner finds that the plurality of
magnetic field sources recited in claim 1 are satisfied by the presence of
transmitters 1 and 2 as shown in Zeller's FIG. 6a and FIG. 6b (Non-Final
Act. 15). Appellants do not challenge this finding and, therefore, do not
show reversible error in it. While the Examiner's detailed discussion of the
rejection focuses on the presence of a rotating magnet in Zeller's FIG. 7b
(see, Ans. 15-19), this discussion does not discount the presence of multiple
transmitters in Zeller's system as shown in FIG. 6a.
9
Appeal2017-003401
Application 12/757 ,251
Claim 5 as unpatentable over Zeller in view of Tunay. Appellants
state that claims 5, 19, and 32 stand or fall together (Appeal Br. 11).
Accordingly, we focus our discussion on the rejection of claim 5 over Zeller
in view of Tunay. The Examiner finds that Zeller discloses determining at
least three rotation angles and that any rendered position would include
position information (Non-Final Act. 18-19; Ans. 19). Appellants do not
make substantive arguments indicating that these findings are erroneous,
arguing only that they are insufficiently detailed (see, Appeal Br. 13-14;
Reply Br. 5). However, the Examiner has cited to specific portions of Zeller
in a manner adequate to support the rejection (Non-Final Act. 18-19).
Accordingly, we affirm this rejection.
Claim 6 as unpatentable over Zeller in view of Tunay and Gilboa.
Appellants state that claims 6, 20, and 33 stand or fall together.
Accordingly, we focus our discussion on the rejection of claim 6 over Zeller
in view of Tunay and Gilboa.
Appellants argue that the art does not teach that the number of angles
is 6 (Appeal Br. 15). However, the Examiner explains that Zeller teaches
this limitation in the same manner as it teaches the requirements of claims 4
and 5 (Ans. 20-21 ). Appellants make the same arguments in this regard as
were made in connection with claim 4 (Reply Br. 5), and they are similarly
unpersuasive. Appellants also argue that Gilboa does not disclose or suggest
that the rendered position includes position and orientation information
(Appeal Br. 15-16). However, the Examiner does not rely on Gilboa as
teaching this limitation, but instead relies on Zeller (Ans. 21-22).
10
Appeal2017-003401
Application 12/757 ,251
Rejections under 35 U.S.C. § 101. With respect to Rejection I (the
first rejection of claims 29, 31-33, 35, and 37 under§ 101), the Examiner
determines that claim 29 encompasses transitory forms of signal
transmission because the claim does not recite "a non-transitory computer-
readable medium" and, therefore, that the claims encompass non-patentable
subject matter and are not compliant with§ 101 (Non-Final Act. 4--5).
Appellants do not argue this rejection, which we therefore summarily affirm.
Appellants argue Rejections II and III together (Appeal Br. 17-18).
The Supreme Court has long held that "laws of nature, natural phenomena,
and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular Pathology
v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The "abstract
ideas" category embodies the longstanding rule that an idea, by itself, is not
patentable. Alice, 134 S. Ct. at 2354 (quoting Gottschalk v. Benson, 409
U.S. 63, 67 (1972)).
In Alice, the Supreme Court reiterated an analytical two-step
framework previously set forth in Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 134 S. Ct at 2355.
The first step in the analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts," such as an abstract idea.
Id. If the claims are directed to a patent-ineligible concept, the second step
in the analysis is to consider the elements of the claims "individually and 'as
an ordered combination"' to determine whether there are additional elements
that "'transform the nature of the claim' into a patent-eligible application."
11
Appeal2017-003401
Application 12/757 ,251
Id. (quoting Mayo, 566 U.S. 66 at 79--78). In other words, the second step is
to "search for an 'inventive concept'-i.e., an element or combination of
elements that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Id.
(brackets in original) (quoting Mayo, 566 U.S. 66 at 72-73).
With respect to claim 15, the Examiner determines that the claim is
directed to a judicial exception because it is directed to a navigation system
to provide a location of a rotating object, most of which recites laws of
nature in the forms of mathematical algorithms (Non-Final Act. 5---6). The
Examiner further determines that the claims "do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the bulk of the claim is directed towards processing[,]
amounting to a law of nature in the form of mathematical algorithms" (Non-
Final Act. 6). The Examiner finds that the only non-mathematical features
in the claims are the rotation magnetic field transducer, the processor, the
memory, and the plurality of field sources, but determines that the magnetic
field sources and the transducer are not positively recited and therefore not
required in the claims (id.). Therefore, according to the Examiner, the
remaining non-mathematical features are only a generic processor and
memory which would routinely be used in any computer implementation of
program instructions (id.).
We conclude that Appellants have demonstrated reversible error in the
§ 101 rejection of claim 15. In this instance, we agree with Appellants
(Appeal Br. 17-18) that the claimed invention is directed to a navigation
system which renders the physical position of a rotating magnetic field
transducer. The claimed system is said to permit navigation in environments
12
Appeal2017-003401
Application 12/757 ,251
where GPS cannot be used ( e.g. underground, in basements, tunnels, etc.)
and, also can be used regardless of the orientation of the object whose
position is to be determined, which could be important if the object is a
helmet worn by a person, for example (Spec. 2). Thus, we determine that
the claimed invention is directed to a system that responds to a rotating
magnetic field transducer to determine its location. Although a
mathematical algorithm is part of this system, the claimed invention as a
whole does more than apply the algorithm in a generic context. The claim
presents a concrete solution for locating a rotating transducer. Accordingly,
claim 15 passes the first step of the Alice test, which means we need not
address the second step.
Accordingly, we reverse Rejection II. We also reverse Rejection III
for essentially the same reasons (though we note that claims subject to
Rejection III were also subject to Rejection I, which we have affirmed).
Rejections under 35 U.S. C. § 112, second paragraph. The Examiner
has rejected several groups of claims under 35 U.S.C. § 112, second
paragraph (Non-Final Act. 10-13). We address each grouping in tum.
Cl aims 1, 4-6, 8, and 10-14. The Examiner determines that the
phrase "in a processor, processing the magnetic field signal" is unclear
because the processor appears to be a distinct element in this limitation, but
other limitations also require the use of a processor. In the examination
context, the relevant inquiry under 35 U.S.C. § 112, second paragraph, "is to
determine whether the claims do, in fact, set out and circumscribe a particular
area with a reasonable degree of precision and particularity." In re Moore,
439 F.2d 1232, 1235 (CCPA 1971) (emphasis added); see also In re Packard,
13
Appeal2017-003401
Application 12/757 ,251
751 F.3d 1307, 1310 (Fed. Cir. 2014) ("[a] claim is indefinite when it contains
words or phrases whose meaning is unclear"). "[T]he definiteness of the
language employed must be analyzed-not in a vacuum, but always in light of
the teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art." Moore, 439 F.2d at 1235. In this instance, we do not agree
with the Examiner that the fact that one step of the claimed method
specifically recites a processor while other steps can be performed using a
processor renders the claim indefinite. A person of skill in the art would be
able to determine whether a particular method fell inside or outside the scope
of the claim.
Claims 8, 22, and 35. The Examiner determines that the phrase
"using the number of angles" in indefinite because "[i]t is not clear if the
angles themselves are being use or if the number of them, such as the
number 3 for 3 angles, is being used" (Non-Final Act. 10-11). In response,
Appellants merely argue that "the phrase would be understood by one of
ordinary skill in the art" (Appeal Br. 20). This argument is insufficient to
show error in the rejection, as Appellants do not explain the meaning of the
claim language at issue, or point to any evidence to support their contention
that a person of ordinary skill in the art would understand what it means.
Claims 15, 18-20, 24-29, 31-33, and 37. The Examiner determines
that the phrase "the memory including program instructions for providing
navigation information by" is indefinite because neither the memory nor the
program instructions can perform the claimed steps without a processor, and
the processor essentially performs the recited steps (Non-Final Act. 11-13).
We reverse this rejection because a person of skill in the art would
14
Appeal2017-003401
Application 12/757 ,251
necessarily understand that the claimed steps are performed by the processor
(which is positively recited in the claim) in conjunction with the program
instructions.
CONCLUSION
We AFFIRM the rejection of claims 29, 31-33, 35, and 37 under
35 U.S.C. §101 as being directed to non-statutory subject matter.
We REVERSE the rejection of claims 15, 18-20, 22, and 24--28 under
35 U.S.C. § 101 because the claimed invention is directed to a judicial
exception.
We REVERSE the rejection of claims 29, 31-33, 35, and 37 are
rejected under 35 U.S.C. § 101 as being directed to a judicial exception.
We REVERSE the rejection of claims 1, 4--6, 10-15, 18-20, 24--29,
31-33, and 37 under 35 U.S.C. § 112, second paragraph, as being indefinite.
We AFFIRM the rejection of claims 8, 22, and 35 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
We AFFIRM the rejection of claims 1, 4, 5, 8, 10-15, 18, 19, 22, 24--
29, 31, 32, 35, and 37 under 35 U.S.C. § 103(a) as unpatentable over Zeller
in view of Tunay.
We AFFIRM the rejection of claims 6, 20, and 33 are rejected under
35 U.S.C. § 103(a) as unpatentable over Zeller in view of Tunay, and further
in view of Gilboa. No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R. § I. l36(a)(l).
AFFIRMED
15