adidas AG

Patent Trials and Appeals Board

May 26, 2021

2020006766 (P.T.A.B. May. 26, 2021)

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.
16/197,829 11/21/2018 Andrew J. GRAHAM 2483.098000Q 5291
63504 7590 05/26/2021
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
NGUYEN, CUONG H
ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
05/26/2021 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):
e-office@sternekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW J. GRAHAM, ALAN R. LEE, and JON H. WERNER
Appeal 2020-006766
Application 16/197,829
Technology Center 3600
Before BENJAMIN D. M. WOOD, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–9, and 11–21. See Final Act. 1.
An oral hearing in accordance with 37 C.F.R. § 41.47 was held on April 26,
2021, a transcript of which will be entered into the record in due course. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as adidas AG. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of providing a health coaching message to a user
comprising:
collecting electronic fitness data related to a fitness
activity on a portable electronic device, the portable electronic
device further including a microprocessor, a satellite positioning
system receiver, a wireless communication transceiver, and a
display, the electronic fitness data including global positioning
satellite waypoints from the satellite positioning system receiver;
receiving footwear electronic data related to the electronic
fitness data;
collecting second electronic fitness data related to a
second fitness activity on the portable electronic device, the
second electronic fitness data including global positioning
satellite waypoints from the satellite positioning system receiver;
receiving second footwear electronic data related to the
second electronic fitness data;
generating footwear electronic mileage data based on the
electronic fitness data, second electronic fitness data, footwear
electronic data, and second footwear electronic data, wherein the
footwear electronic mileage data comprises the total distance
traversed during the first fitness activity and the second fitness
activity; and
displaying the footwear electronic mileage data on the
portable electronic device.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Marcus US 2002/0092019 A1 July 11, 2002
Vock US 2002/0116147 A1 Aug. 22, 2002
Faccioni WO 02/39363 A1 May 16, 2002

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REJECTION
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1, 3–9, 11–21 103(a) Vock, Marcus, Faccioni
OPINION
Independent Claim 1
Independent claim 1 recites a method of providing a health coaching
message to a user comprising, inter alia, the steps of: (1) “collecting
electronic fitness data related to a fitness activity on a portable electronic
device”; (2) “receiving footwear electronic data related to the electronic
fitness data;” and (3) “generating footwear electronic mileage data” based on
collected “electronic fitness data” and received “footwear electronic data,”
the footwear electronic mileage data comprising “the total distance traversed
during the first fitness activity and the second fitness activity.” Appeal Br.
31 (Claims App.). The Examiner finds that Vock teaches collecting
electronic fitness data related to a fitness activity on a portable electronic
device, and “display[ing] footwear electronic mileage data based on
footwear identification data and the second electronic position data (e.g. a
‘total distance for the day.’[)].” Final Act. 5 (citing Vock ¶¶ 76, 277); see id.
at 3 (citing Vock ¶ 278).2 The Examiner further finds that Faccioni teaches
“wherein the footwear electronic mileage data comprises the total distance
traversed during the first fitness activity and the second fitness activity.” Id.
at 4 (citing Faccioni, Fig. 3, steps 103, 301). The Examiner determines that
it would have been obvious to one of ordinary skill in the art to combine

2 The Examiner does not appear to rely on Marcus in rejecting claim 1. The
Examiner cites Marcus for teaching “footwear identification data” (Final
Act. 4 (citing Marcus ¶ 242)), which is recited in claims 9 and 15, but not
claim 1 (Appeal Br. 31–33 (Claims App.)).
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Vock (and Marcus, for claims 9 and 15) with Faccioni “because they all
want to monitor specific, and relevant footwear data associating to certain
product performance for a proper selection.” Id.
Appellant responds, inter alia, that the Examiner erred in finding that
Faccioni teaches “footwear electronic mileage data compris[ing] total
distance traversed during the first fitness activity and the second fitness
activity.” Appeal Br. 21. Appellant asserts that Faccioni relates to using a
GPS device to monitor a user, horse, or car during a sporting event, obtain
performance data, and use the data to modify a training and conditioning
schedule based on the data. Id. (citing Faccioni, 1:8–14, 4:40, 6:1–2, 12:35–
36). At best, according to Appellant, Faccioni tracks data during a first
fitness activity, but does not track a “second fitness activity” or track
footwear information. Id. (citing Faccioni, 1:11–14, 3:28–45, 4:1–45, 6:13–
14, 13:1, Fig. 2).
The Examiner does not respond to Appellant’s discussion of Faccioni
in the Answer. Instead, the Examiner contends that Vock teaches footwear
electronic mileage data that includes total distance traversed during the first
fitness activity and the second fitness activity. Ans. 5. According to the
Examiner, “Vock et al., suggest that claimed limitation (i.e., using a memory
812 to store related data, e.g., ‘a peak drop distance and a series of drop
distances can be stored and retrieved by the user at a later time.’” Id. (citing
Vock ¶¶ 76, 278). The Examiner also submits that “for a broad and
reasonable interpretation, ‘footwear electronic data’ can be snow-board data
or a particular walking pair of shoes (i.e., ‘footwear electronic data[’] from
snow board 741, see Vock et al., FIG. 27[)].” Id. at 4.
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In the Reply Brief, the Appellant responds that “drop distance is not
correlated to footwear or even a specific snowboard, skis, or any other
equipment.” Reply Br. 4. Instead, according to Appellant, “‘drop distance’
refers to the height above the ground as experienced by a user or vehicle
during a sport activity,’ and ‘drop distance can also specifically refer to
maximum height above the ground for a given jump.’” Id. (quoting Vock
¶ 21). Appellant thus submits that “drop distance is not footwear electronic
mileage data comprising the total distance traveled as claimed.” Id.3
We do not sustain the Examiner’s rejection of claim 1 because we are
not persuaded that the references, individually or in combination, teach
“generating footwear electronic mileage data” based on collected “electronic
fitness data” and received “footwear electronic data,” wherein “the footwear
electronic mileage data comprises the total distance traversed” during first
and second fitness activities. To the extent that the Examiner still relies on
Faccioni to teach this limitation, the Examiner has not identified any
teaching in Faccioni regarding measuring total distance traversed or
“footwear electronic mileage data.” To the extent that the Examiner now
relies on Vock for this limitation, we agree with Appellant that “drop
distance,” which Vock measures, does not correspond to mileage data
comprising total distance traveled. While it may refer to total vertical
distance traveled, the Examiner has not explained how it suggests total
distance traveled per se.

3 Appellant also notes in the Reply Brief that the Examiner has in several
instances acknowledged that Vock does not teach this limitation. Reply Br.
3–4.
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Independent Claim 9
Similar to claim 1, claim 9 recites displaying footwear electronic
mileage data that includes a total distance traversed during a fitness activity
and a prior fitness activity. Appeal Br. 32 (Claims App.). For the reasons
discussed above, the Examiner has not persuaded us that either Faccioni or
Vock teaches this limitation. Accordingly, we do not sustain the Examiner’s
rejection.
Independent Claim 15
Claim 15 recites a method of providing shoe mileage information
comprising, inter alia, the steps of: (1) collecting electronic fitness data
related to a fitness activity on a portable electronic device; (2) “receiving
footwear electronic data that comprises identification information related to
a pair of shoes worn during the fitness activity”; and (3) “generating
footwear electronic mileage data based on the electronic fitness data and the
footwear electronic data.” Appeal Br. 33 (Claims App.). In the Final
Action, the Examiner finds that Vock teaches collecting electronic fitness
data related to a fitness activity on a portable electronic device, and
“display[ing] footwear electronic mileage data.” Final Act. 3 (citing Vock
¶¶ 76, 277–278). The Examiner acknowledges that “Vock et al., do not
disclose about footwear identification data,” but finds that “Marcus discloses
about a product based on footwear identification data (e.g., color, cost, and
3-D image of the shoe’s data[)].” Id. at 3–4 (citing Marcus ¶ 242). The
Examiner determines that it would have been obvious to one of ordinary
skill in the art to combine Vock and Marcus “because they all want to
monitor specific, and relevant footwear data associated to certain product
performance for a proper selection.” Id. at 4.
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Appellant disputes, inter alia, the Examiner’s finding that Marcus
discloses “a product based on footwear identification data.” Appeal Br. 24.
Appellant contends that Marcus “does not disclose or suggest that the color,
cost, or images are used to identify the footwear,” but only that “a consumer
may view a shoe and modify the appearance of the shoe with select
corporate logos or colors.” Id. (citing Marcus ¶ 242). Appellant also
disputes that Marcus discloses footwear electronic data that comprises
identification information related to a pair of shoes worn during a fitness
activity. Id.
The Examiner responds in the Answer that “Marcus discloses about a
product based on footwear identification data (e.g., color, cost, size, shape,
and 3-D image of the shoe’s data, . . .) [and] Vock et al. would use these
available particular data for a specific training/sport activity.” Ans. 5. The
Examiner further submits that “[s]ince [the] pending claims do not specify
‘identification information for a pair of shoes’ being used, those
‘identification information’ can be considered as: color, cost, size, shape, or
a 3-D image of the shoe.” Id. (citing Marcus ¶ 242).
We are not persuaded that the combination of Vock and Marcus
teaches “footwear electronic data that comprises identification information
related to a pair of shoes worn during a fitness activity,” and therefore do not
sustain this rejection. Marcus describes a method of encouraging consumers
to add advertising messages to a purchased product, such as a pair of athletic
shoes, by discounting the purchase price of the product based on the size and
quantity of displayed ads. Marcus ¶¶ 241–242. The consumer is offered a
selection of different advertising messages, images, etc.; the consumer
selects which ads may be placed on the shoes, and “[a] computer program
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that controls the placement and execution of the consumer’s choices then
makes a calculation and/or consults a look-up table” to determine the
resulting discount. Id. ¶ 242. The only footwear “identification
information” we can discern from this excerpt is: (1) the fact that the
purchased product is, in fact, footwear; and (2) information related to the
cost of the footwear (the discount earned by placing ads on the shoes). Id.
The “color,” “size,” and “shape” information discussed apparently relate to
the ads placed on the shoes, not to the shoes themselves. Id. To the extent
that this can be considered footwear identification information, the Examiner
has not explained why one of ordinary skill in the art would have used this
information “for a specific training/sport activity,” or otherwise in
combination with Vock. See Ans. 5.
In sum, because we are not persuaded that the combination of Vock,
Marcus, and Faccioni teaches or suggests all of the limitations of
independent claims 1, 9, and 15, we do not sustain the Examiner’s rejection
of these claims, as well as claims 3–8, 11–14, and 16–21, which depend
therefrom, as unpatentable over Vock, Marcus, and Faccioni.
CONCLUSION
The Examiner’s rejection is reversed.

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–9, 11–
21
103(a) Vock, Marcus,
Faccioni
1, 3–9, 11–
21

REVERSED