Ex Parte Beachy

Patent Trial and Appeal Board

Sep 7, 2018

14050065 (P.T.A.B. Sep. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/050,065
16111 7590
Sheridan Law LLC
1600 Jackson Street
Suite 350
Golden, CO 80401
FILING DATE FIRST NAMED INVENTOR
10/09/2013 Trent Beachy
09/11/2018
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.
80077 .0002.02 6185
EXAMINER
KIM, SHINH
ART UNIT PAPER NUMBER
3636
NOTIFICATION DATE DELIVERY MODE
09/11/2018 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):
j sheridan@sheridanlaw.com
docket@sheridanlaw.com
mking@sheridanlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TRENT BEACHY
Appeal2017-008531
Application 14/050,065
Technology Center 3600
Before BRANDON J. WARNER, RICHARD H. MARSCHALL, and
FREDERICK C. LANEY, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Trent Beachy (Appellant) 1 seeks our review under 35 U.S.C. § 134(a)
of the Examiner's decision rejecting claims 1, 2, 5-17, and 19-31. 2 We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief identifies Appellant as the real party in interest. Br. 3.
2 Claims 3, 4, and 18 are cancelled. Br. A-1, A-4 (Claims App.).
Appeal2017-008531
Application 14/050,065
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to "a race guide elevation map
system for navigating elevation terrain ... [with] a temporary tattoo carrying
an elevation map disposed thereon." Spec. ,r 7. Claims 1 and 16 are
independent. Claim 1 is reproduced below.
1. A race guide elevation map system for navigating
elevation terrain on a racecourse, the system comprising:
a temporary tattoo disposed on the skin of an athlete, said
temporary tattoo carrying an elevation profile map disposed
thereon, and said elevation profile map having distance
demarcations in combination with elevation data configured to
display an elevation profile of a route of a racecourse; and
a location input received from outside said temporary
tattoo, wherein said elevation profile map is configured to
provide an athlete with the elevation terrain on the racecourse
based on a comparison of said location input to the distance
de mar cations.
Br. A-1 (Claims App.).
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1, 4--9, 10-12, 15, 16, 19-25, and 28 under 35 U.S.C.
§ I03(a) as unpatentable over Cromett, 3 Henshaw, 4 and Eric. 5
2. Claims 2, 13, 14, 17, 26, 27, and 29-31 under 35 U.S.C. § I03(a)
as unpatentable over Cromett, Henshaw, Eric, and Schuldt. 6
3 U.S. Patent No. 6,264,786 Bl, issued July 24, 2001 ("Cromett").
4 U.S. Patent No. 8,322,059 B2, issued Dec. 4, 2012 ("Henshaw").
5 Eric and Karen's Tahoe Rim Hike - Days 7 thru 10, retrieved on Sept 20,
2015 ("Eric").
6 Woody Schuldt, How to Print a Screens hot of Google Maps, retrieved on
Sept 19, 2014 ("Schuldt").
2
Appeal2017-008531
Application 14/050,065
ANALYSIS
With respect to claim 1, the Examiner found, among other things, that
Cromett discloses a temporary tattoo carrying an image, Henshaw discloses
real time location input and a comparison of that input to distance
demarcations on a map image, and Eric discloses an elevation profile of a
hiking trail. Ans. 3-5; see also Final Act. 2--4. The Examiner determined
that it would have been obvious to modify Cromett to include Henshaw's
teachings, as it "would provide a means to display relevant information to
guide direction." Final Act. 3. The Examiner also determined that it would
have been obvious to modify Cromett/Henshaw to include Eric's elevation
profile because it "would provide a means to inform users of a trail terrain."
Id.; see also Ans. 5.
Appellant argues that neither "Cromett nor Henshaw teach a 'location
input that is received from outside the temporary tattoo."' Br. 10. Appellant
also argues that Henshaw does not disclose a comparison of the location
input to distance demarcations because the elapsed time input of Henshaw is
based on assumptions of pace rather than more accurate real-time inputs. Id.
at 11. Appellant also argues that Henshaw fails to disclose an elevation map
system or elevation profile, and that Eric's elevation profile should not be
combined with Cromett/Henshaw because Eric is non-analogous art and the
stated rationale for the combination lacks an adequate basis. Id. at 11-14.
After considering the evidence of record and Appellant's arguments,
we are not apprised of error in the Examiner's findings or the determination
that the proposed combinations and modifications would have been obvious
to a person having ordinary skill in the art. First, Appellant's argument that
Henshaw fails to disclose the claimed "location input" fails to acknowledge
3
Appeal2017-008531
Application 14/050,065
the pertinent teachings of Henshaw and their similarity to Appellant's
specification. Henshaw discloses a temporary tattoo that shows "[ s ]upport
stations [that] ... can include such course information as nutrition stops, and
spectator locations." Henshaw, 4: 11-19. Henshaw also discloses a course
map for an event "that enables the athlete to determine his or her location on
a course" by using mile markers, aid stations, water stops, and other
prominent landmarks on the map. Id. at 5:18-29. As the Examiner correctly
found, "[t]he correlation between the tattoo and other location input
elements is as simple as the user of the tattoo seeing a rest stop ahead that
correlates with the map illustration on the tattoo, as claimed." Ans. 3; see
also id. at 4 ("The input of predetermined location recognizable landmarks is
an input."). Henshaw's disclosure, and the Examiner's reasoning,
adequately supports the finding that Henshaw discloses "a location input
received from outside said temporary tattoo."7 Appellant does not address
the findings the Examiner presented in the Answer that relate to Henshaw.
Appellant stresses that Henshaw fails to show a "real-time" external input,
such as a wearable GPS device as disclosed in Appellant's specification. Br.
10 (citing Spec. ,r,r 18-19, 33). Appellant fails to acknowledge, however,
that the same relevant paragraph from the specification lists other possible
7 We agree with the Examiner's statement that "Appellant does not clearly
define 'a location input"' and that the "location input is a signal and there is
no clear structure for identifying the signal for the location input." Ans. 4.
However, given Henshaw's clear teaching of an input similar to that
disclosed in Appellant's specification, we need not determine the precise
contours of the limitation or consider any 35 U.S.C. § 112 concerns, which
are not before us in this appeal.
4
Appeal2017-008531
Application 14/050,065
inputs, including "mile marker signage along the racecourse," which is
precisely what Henshaw discloses. Spec. ,r 33; Henshaw, 5 :24--28.
For similar reasons, we are not apprised of error in the Examiner's
finding that Henshaw discloses the claimed "comparison of said location
input to the distance demarcations." See Ans. 4. The Examiner found that
"Henshaw discloses that the printed information on the tattoo enables the
user to determine the location of the user along the course by display[ing]
landmarks recognizable to [the] user by comparing the printed information
to what is seen in person." Id. (citing Henshaw, 5: 18-29). The Examiner
also found that "Eric discloses the printed version of an elevation map with
distance markings." Id. (citing Eric, Fig. 1). Appellant's argument does not
address these findings, and instead seems to be based on the assumption that
Henshaw does not disclose the claimed location input, and therefore cannot
perform a comparison involving such inputs. Br. 10-11. Appellant's
arguments do not apprise us of error in the Examiner's findings.
Regarding the "elevation map system" and "elevation profile"
limitations, the Examiner found, and Appellant does not appear to dispute,
that Eric discloses an elevation profile map of a course. See Ans. 5; Br. 11-
15. We are not apprised of error in those findings. Appellant focuses its
argument on whether Eric is analogous art and the Examiner's rationale for
combining Eric with Cromett/Henshaw.
Appellant notes that a reference is analogous if it is pertinent to the
problem in which the inventor was involved. See Br. 14. The problem
involved in the claimed invention is a manner of visually depicting relevant
data over a course of terrain in the form of a map, such as an elevation
profile map for a racecourse. Br. A-1 (Claims App.). Eric may include a
5
Appeal2017-008531
Application 14/050,065
summary of a hiking trip posted on the Internet, but its first image is "an
elevation profile of a hiking trail" that depicts the route of the hike and the
corresponding elevations. Ans. 5; Eric 1. Eric "visually provid[ es] an
elevation that is recognizable by a user" through the elevation profile in the
form of a small map depicting the course of terrain covered over the course
of the hike. Ans. 5. Eric "graphically articulate[s] the course of a trail." Id.
In that sense, Eric addresses a problem very similar to that involved in the
claimed invention-how to visually convey relevant data over the course of
the terrain in a small map. Appellant seems to narrowly define the relevant
art as "temporary tattoos," does not define the nature of the problems
confronted, or address the Examiner's additional findings in the Answer.
Br. 14. Under these circumstances, we are not apprised of error in the
Examiner's findings or the use of Eric as analogous art. 8
We are also not apprised of error in the Examiner's determination that
it would have been obvious to combine Eric with Cromett/Henshaw. As
noted above, Eric is an example of a solution to the problem of visually
depicting the terrain of a course that provides useful information to one
seeking to provide such information to a participant. See Ans. 5; Final Act.
3. The Examiner found that the proposed modification "would provide a
means to inform users of a trail terrain." Final Act. 3. The Examiner also
found that Eric provides "an elevation that is recognizable by a user" and not
provided by Henshaw. Ans. 5. Appellant does not respond to the findings
8 Although not before us, we have little doubt that numerous other references
exist in the field of racecourse maps that disclose elevation profiles in a
manner useful to race participants, of which the first image of Eric is but one
evidentiary example.
6
Appeal2017-008531
Application 14/050,065
on this point in the Examiner's Answer. We view the Examiner's findings
and reasoning for the proposed combination as supported by a rational
underpinning, and are not apprised of error in those findings or the
determinations made by the Examiner.
Based on the foregoing, we sustain the rejection of claim 1. The
Examiner relied on the same analysis in the findings related to the rejections
of claims 2, 5-17, and 19-31. See Ans. 5-14. Appellant raises arguments
with respect to claims 2, 5-17, and 19-31 that are substantively the same as
those raised with respect to claim 1, in some cases not responding to
additional findings and rationale provided by the Examiner in the Answer,
and we therefore sustain the rejection of those claims for the same reasons
discussed above with respect to claim 1. See Br. 15-34; Ans. 5-14.
DECISION
We affirm the decision of the Examiner to reject claims 1, 2, 5-17,
and 19-31 under 35 U.S.C. § 103(a).
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)(l )(iv).
AFFIRMED
7