Ex Parte Dyer et alDownload PDFPatent Trial and Appeal BoardMay 5, 201412572448 (P.T.A.B. May. 5, 2014) Copy Citation 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. 12/572,448 10/02/2009 David E. Dyer P23008 3925 90487 7590 05/05/2014 Terence P. O'Brien Amer Sports Americas 8750 W. Bryn Mawr Ave. Chicago, IL 60631 EXAMINER LONG, ROBERT FRANKLIN ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 05/05/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte DAVID E. DYER, JAMES S. BIRRELL, BRADY A. OLASON, BRIAN D. WILSON, DAVID W. FLYNT and AUTUMN L. STROUPE ________________ Appeal 2012-004954 Application 12/572,448 Technology Center 3700 ________________ Before: JOHN C. KERINS, EDWARD A. BROWN, and MICHAEL L. HOELTER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-004954 Application 12/572,448 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1-9, 12, and 14-23. App. Br. 2. Claims 10, 11, and 13 have been canceled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER The disclosed subject matter is directed to assisting individuals in attaining their fitness goals. Spec. para. [0002]. Independent claim 1 is illustrative of the claims on appeal and is reproduced below: 1. An exercise guidance system comprising: a first exercise device of a first type; a display; a computer readable program configured to: receive a fitness objective for an individual; identify and store an exercise route for achieving the fitness objective using the first exercise device, the exercise route including recommended workout parameters for a first workout and a second workout subsequent to the first workout; receive exercise metrics from the first exercise device during the first workout; form a comparison of the exercise metrics with the exercise route to adjust the recommended workout parameters for the second workout of the route based on the comparison; and display the adjusted route to the individual on the display. REFERENCES RELIED ON BY THE EXAMINER Shaw US 4,907,795 Mar. 13, 1990 Dugan US 2002/0160883 A1 Oct. 31, 2002 Neil US 6,793,607 B2 Sep. 21, 2004 Brown US 6,866,613 B1 Mar. 15, 2005 Appeal 2012-004954 Application 12/572,448 3 THE REJECTIONS ON APPEAL Claims 1 and 23 are rejected under 35 U.S.C. § 102(b) as being anticipated by Shaw. Ans. 4, 16. Claims 2-9 and 15-23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Shaw and Brown. Ans. 6. Claims 12 and 14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Shaw, Brown, and Dugan. Ans. 19. Claims 1, 6, 17, 20, and 23 are rejected under 35 U.S.C. § 103(a) as obvious over Neil and Brown. Ans. 20. ANALYSIS The rejection of claims 1 and 23 as being anticipated by Shaw Appellants separately argue the anticipation rejection of independent claims 1 and 23. App. Br. 10-13. We address each claim separately. Claim 1 Claim 1 includes the limitation of identifying and storing “recommended workout parameters for a first workout and a second workout subsequent to the first workout.” Claim 1 also includes the limitation of “adjust[ing] the recommended workout parameters for the second workout” based on a comparison of the stored first workout parameters with actual first workout parameters. Appellants contend that “Shaw fails to disclose adjusting a second workout of a stored exercise route based upon a comparison of how well the person exercising is satisfying a first workout of the stored route.” App. Br. 11. Shaw is directed to “comparing the present movement of the exercise machine caused by the physical exertion of a user with the user’s past Appeal 2012-004954 Application 12/572,448 4 movement of the exercise machine.” Shaw Abstract. More succinctly, Shaw is directed to ascertaining how well the user’s present workout compares with past workouts. See Shaw 7:25-45. The Examiner also identifies where Shaw states: “user compares his present performance with his previous performance.” Ans. 5 referencing Shaw 12:2-8. Even assuming that Shaw discloses a comparison of how well the person exercising is satisfying a first stored workout (i.e., how well the present workout compares with previous workouts), the Examiner does not indicate where Shaw discloses the limitation of adjusting a stored second subsequent (i.e. future) workout based on this comparison. On this point, the Examiner seems to focus on Shaw’s disclosure of LED’s that display “when to rest or not rest.” Ans. 24. Shaw discloses two LEDs that appear to satisfy this condition, one designed to “discourage resting” and the other designed “to encourage the user to pause momentarily.” Shaw 8:20-25. However, such resting or not resting is with respect to the present workout and the Examiner does not indicate how such display by the LEDs satisfies the limitation of adjusting a future stored workout based on the comparison as claimed. We reverse the Examiner’s rejection of claim 1 as being anticipated by Shaw. Claim 23 Independent claim 23 differs from claim 1 in that claim 23 is directed to the limitation of “adjusting recommended workout parameters for a second exercise device of a second type different than the first type” based on the above noted comparison. The Examiner finds that Shaw discloses exercising on more than one machine (Ans. 16, citations omitted) but as above, Shaw is directed to a comparison of the present exercise regime with past efforts. In other words, the Examiner’s finding of this in Shaw is Appeal 2012-004954 Application 12/572,448 5 lacking for the same reasons previously expressed. We reverse the Examiner’s rejection of claim 23 as being anticipated by Shaw. The rejection of claims 2-9 and 15-23 as being unpatentable over Shaw and Brown The Examiner relies on Shaw for essentially “disclos[ing] the invention as substantially claimed. See above.” Ans. 6. Brown is not applied to claim 1 but instead, the Examiner relies on Brown for teaching the additional limitations of claims 2-9, 15, 16, 21, and 22 which depend directly or indirectly from claim 1. Ans. 9-16. In addressing these dependent claims, the Examiner finds that Brown addresses different exercise parameters and “adjustment thereof based upon goals.” Ans. 9 (citing Brown 10: 8-20). Brown is directed to a program that “monitors the real-time cumulative fitness activity of the particular user” and “adjust[s] the cumulative total to more closely reflect the fitness gained as a result of exercising on multiple machines.” Brown Abstract and 7:33-36. Brown also teaches that, using this summation, a program “determine[s] sessions based on” the user’s goals. Brown 9:19-36. However, nowhere does the Examiner express a reliance on Brown for curing the defect of Shaw discussed above such as by indicating where Brown teaches stored first and second recommended workouts and forming a comparison (i.e., ascertaining a difference) between the recommended first workout and the actual first workout so as to adjust a subsequent second workout. Regarding the Examiner’s stated reason to combine Shaw and Brown, the Examiner concludes that it would have been obvious to modify Shaw “to provide adjustment of the route and goal changed for a new date (delayed date or earlier date) based on the performance fitness objective as taught by Appeal 2012-004954 Application 12/572,448 6 Brown’s calendar sessions and target goals for future event preparation and/or improved fitness routine purposes.” Ans. 11-12 (italics added), see also Ans. 16. The Examiner does not adequately explain how Shaw’s teaching directed to a comparison with past performances might be modified “for future event preparation and/or improved fitness routine purposes” as stated. Ans. 12. Further, the “performance fitness objective as taught by Brown” is based on a cumulative total (Brown 7:43-67) and the Examiner does not explain how this is adjusted based on the claimed comparison between a stored recommended workout and its actual implementation. In short, we are guided by instructions from the Supreme Court that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In the present matter, we are not persuaded the Examiner has provided the requisite articulated reasoning with rational underpinning required to support the legal conclusion of obviousness. Accordingly, we reverse the Examiner’s rejection of claims 2-9, 15, 16, 21, and 22. Regarding the Examiner’s rejection of independent claims 17, 20, and 23 and associated dependent claims 18 and 19 based on Shaw and Brown (Ans. 9-19), we are reminded of the Supreme Court’s admonishment that: [A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a Appeal 2012-004954 Application 12/572,448 7 reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known. KSR, 550 U.S. at 418-19. Here, the Examiner finds that the combination of Shaw and Brown discloses the various elements claimed. Ans. 6-19. However, in view of the disparate teachings of Shaw and Brown, “it [is] important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 418. Presently, we are not persuaded that such reason has been adequately expressed by the Examiner. Further, we note that the Examiner, while generally expressing a rejection of independent claim 20 (Ans. 6), provides no further details as to why this claim is so rejected or where its various limitations can be found in Shaw and/or Brown (Ans. 7-20). Accordingly, we reverse the Examiner’s rejection of claims 17-20 and 23. The rejection of claims 12 and 14 as being unpatentable over Shaw, Brown, and Dugan Both claims 12 and 14 depend directly from claim 1. Spec. 31, Claims App’x. Interestingly, the Examiner finds that Shaw and Brown “disclose[] the invention as substantially claimed. See above” yet Brown is not cited as a basis for the rejection of claim 1. Ans. 19; see also Ans. 4, 6. Here, the Examiner relies on Brown for teaching “a health club server that stores exercise data” but acknowledges that neither Shaw nor Brown teaches a program that “is configured to receive medical records and input” as claimed. Ans. 19. For this feature, the Examiner relies on Dugan for Appeal 2012-004954 Application 12/572,448 8 disclosing the limitation of the exercise device being “configured to receive” medical records or input. Dugan does not cure the deficiencies noted above and based on this reason alone, we reverse the Examiner’s rejection of claims 12 and 14. However, we also cannot help but notice that the Examiner identifies Dugan as teaching “transmitting user data from an exercise device.” Ans. 20 referencing Dugan para. [0029]. The Examiner asserts that it would have been obvious “to modify the computer readable program to receive medical records” but does not otherwise adequately explain how a reference that teaches the transmission of data makes it obvious for that same device to do the opposite and instead receive such data as claimed. Ans. 20. In view of the record presented, we reverse the Examiner’s rejection of claims 12 and 14. The rejection of claims 1, 6, 17, 20, and 23 as obvious over Neil and Brown Regarding independent claims 1, 17, 20, and 23, the Examiner relies on Neil for disclosing all the limitations recited except that “Neil fails to teach having the exercise route include recommended workout parameters.” Ans. 20-23. The Examiner relies on Brown for this missing limitation. Ans. 23-24. The Examiner particularly identifies Neil’s teaching of tracking progress as correlating to the limitation of adjusting “the recommended workout parameters for the second workout of the route based on the comparison.” Ans. 21 referencing Neil 3:42-45. The Examiner’s reliance on Neil’s teaching of tracking progress is not persuasive of disclosing the above ‘adjustment-based-on-comparison’ limitation recited in each of these independent claims. We reverse the Examiner’s rejection of claims 1, 17, 20, and 23 as being obvious over Neil and Brown. Appeal 2012-004954 Application 12/572,448 9 Regarding claim 6 (which depends from claim 1), the Examiner additionally relies on Brown for teaching a computer readable program that “is configured to display a fitness evaluation” as recited therein. Ans. 23 (citations omitted). This additional reliance on Brown does not cure the defect noted above in Neil and accordingly, we reverse the Examiner’s rejection of claim 6 as being obvious over Neil and Brown. DECISION The Examiner’s rejections of claims 1-9, 12, and 14-23 are reversed. REVERSED llw Copy with citationCopy as parenthetical citation