Ex Parte Dyer et al

Patent Trial and Appeal Board

May 5, 2014

12572448 (P.T.A.B. May. 5, 2014)

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
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Application 12/572,448

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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
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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
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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
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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
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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
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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
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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.
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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

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