Alexandra Macomber. Kline

Patent Trials and Appeals Board

Dec 16, 2019

15604168 - (D) (P.T.A.B. Dec. 16, 2019)

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.
15/604,168 05/24/2017 Alexandra Macomber Kline 17-0635 8403
145335 7590 12/16/2019
HELSELL FETTERMAN LLP
1001 Fourth Avenue, Suite 4200
Seattle, WA 98154
EXAMINER
BULLINGTON, ROBERT P
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
12/16/2019 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):
eofficeaction@appcoll.com
patent@helsell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ALEXANDRA MACOMBER KLINE
____________________

Appeal 2019-000717
Application 15/604,168
Technology Center 3700
____________________

Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 1–20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM IN PART.
According to Appellant, the “invention relates to systems and method
for tracking athletes on their pace of traverse on a running track and

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Alexandra
Macomber Kline. Appeal Br. 3.
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providing a visual light cue reflective of a predetermined pace of traverse.”
Spec. ¶ 1. Claims 1, 10, and 19 are the independent claims on appeal.
Below, we reproduce claim 1 as illustrative of the appealed claims.
1. A system for pacing a runner around a running track
at a predetermined pace with a moving visual light cue,
comprising:
at least one light strip that is positioned in sight of at least
one running lane of the running track, the at least one light strip
containing a plurality of light elements; and
a dynamically updateable controller for the at least one
light strip, the dynamically updateable controller further
configured to track a position of the runner on the running track
and selectively light one or more of the plurality of light elements
of the at least one light strip in a sequence thereby giving the
moving visual cue to the runner of the predetermined pace
around the running track.

REJECTIONS2 AND PRIOR ART
The Examiner rejects the claims as follows:

2 Although Appellant argues that the Examiner errs by refusing to enter
claim amendments that would overcome objections to claims 4, 6, and 13,
the Examiner’s refusal to enter amendments that would overcome the claim
objection (see Final Action 2; see Appeal Br. 10) is reviewable, if at all, by
filing a petition for the Director’s review. See In re Berger, 279 F.3d 975,
984 (Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1394, 1403–04
(CCPA 1971) (stating that there are many kinds of decisions made by
examiners that are not appealable to the Board when they are not directly
connected with the merits of issues involving rejections of claims, and
holding that “the kind of adverse decisions of examiners which are
reviewable by the [B]oard must be those which relate, at least indirectly, to
matters involving the rejection of claims”)); see MPEP §§ 706.01,
1002.02(c)(4), 1201 (the Board will not ordinarily hear a question that is
reviewable by petition).
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I. Claims 9–18 under 35 U.S.C. § 112(b) as indefinite for failing
to particularly point out and distinctly claim the subject matter
that Appellant regards as the invention;
II. Claims 1–3, 5, 7–12, 14, and 16–20 under
35 U.S.C. § 102(a)(1) as anticipated by Buresta
(US 2012/0091921 A1, pub. Apr. 19, 2012); and
III. Claims 4, 6, 13, and 15 under 35 U.S.C. § 103 as unpatentable
over Buresta and Deutsch et al. (US 2007/0213126 A1, pub.
Sept. 13, 2007) (hereinafter “Deutsch”).

ANALYSIS
Rejection I—Indefiniteness rejection of claims 9–18
In the Appeal Brief, Appellant fails to argue that the current claims
are not indefinite. Instead, Appellant argues that the Examiner errs by
failing to enter the claim amendments that Appellant filed on February 26,
2018. See Appeal Br. 10. We note that the Examiner “agrees that the
amended claims submitted after final rejection, if entered, would overcome
the outstanding 35 U.S.C. § 112(b) rejection[]” (Answer 10), and, therefore,
it is not clear to us why the Examiner did not enter the claim amendments
for purposes of appeal (see, e.g., Advisory Action Before the Filing of an
Appeal Brief cover sheet (mailed Mar. 9, 018), text following box 7).
Regardless, the Examiner’s refusal to enter the amendment is reviewable, if
at all, by filing a petition for the Director’s review. See, e.g., In re Mindick,
371 F.2d 892, 894 (CCPA 1967) (holding that the refusal of an examiner to
enter an amendment of claims is reviewable by petition under
37 C.F.R. § 1.181, and not by appeal to the Board). Inasmuch as Appellant
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fails to show that the Examiner’s indefiniteness rejection of the claims
before us is in error (i.e., Appellant fails to persuade us that the Examiner
errs by determining that claims are indefinite), we summarily sustain this
rejection.

Rejection II—Anticipation rejection of claims 1–3, 5, 7–12, 14,
and 16–20
As set forth above, independent claim 1 recites, in relevant part,
a dynamically updateable controller for the at least one
light strip, the dynamically updateable controller further
configured to track a position of the runner on the running track
and selectively light one or more of the plurality of light elements
of the at least one light strip in a sequence thereby giving the
moving visual cue to the runner of the predetermined pace
around the running track.
Appeal Br., Claims App. Appellant argues that the Examiner errs because
Buresta does not disclose the claimed “dynamically updateable controller.”
Id. at 11–13. Specifically, Appellant argues that “Buresta does not teach that
the pacing program on the controller . . . is ‘dynamic’ and can change based
on the determination of the ‘position’ of the athlete (which gives the pace of
traverse).” Id. at 11. Based on our review of the record, Appellant does not
persuade us that the Examiner’s finding that Buresta discloses the claimed
controller is in error.
The above-reproduced claim recitation represents the extent to which
claim 1 describes the “dynamically updateable controller”—i.e., the
controller is “configured to track a position of the runner on the running
track,” and is configured to “selectively light one or more of the plurality of
light elements of the at least one light strip in a sequence thereby giving the
moving visual cue to the runner of the predetermined pace around the
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running track.” The claim does not, for example, recite that the selective
lighting is somehow affected by or related to the tracked position of the
runner.
To the extent that we might otherwise rely on Appellant’s
Specification to explain what a dynamically updateable controller is or is
not, Appellant references the Specification’s paragraph 25. See Appeal
Br. 12. Below, we reproduce this paragraph in its entirety:
The controller 24 is dynamically updated, either by a
person inputting further commands, such as the runner or coach,
and can use a variety of data for dynamically altering the training
program. In one embodiment, the controller 24 determines the
position of the runner 12 on the track 14 and determines the pace
of traverse of the runner 12 and can dynamically update the light
cue 30. In one embodiment, the controller 24 include a wireless
interface and there is a location transmitter 22 worn by the
runner 12 that transmits a location signal, and the controller has
a receiver for the location signal. Through transmission of the
location signal, the controller 24 knows where the runner 12 is
and can determine the pace of traverse of the runner 12. The
controller 28 sequentially lights individual elements of the
plurality of light elements 20, such as cue 30, to give an
appearance of continuous motion of a pacing light (or cue) to the
runner 12. The motion of light cue 30 is in the direction of
[Figure 1’s] arrow A, and the motion of light cue 34 is in the
direction of [Figure 1’s] arrow B respectively.
Spec. ¶ 25. This portion of the Specification also does not disclose that the
lighting is somehow affected by or related to the tracked position of the
runner. For example, the second sentence of the paragraph states that “the
controller 24 determines the position of the runner 12 on the track 14 and
determines the pace of traverse of the runner 12 and can dynamically update
the light cue 30,” but does not state, for example, that “the controller 24
determines the position of the runner 12 on the track 14 and based on the
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position both 1) determines the pace of traverse of the runner 12 and 2) can
dynamically update the light cue 30.” Instead, this sentence explains that
“the controller 24 determines the position of the runner 12 on the track 14,”
the controller “determines the pace of traverse of the runner 12,” and the
controller “can dynamically update the light cue 30,” without further
explanation of what “dynamically updat[ing]” entails. Thus, consistent with
Appellant’s Specification, a dynamically adjustable controller encompasses
a controller that determines the runner’s position on the track, determines the
runner’s pace on the track, and permits adjustment of the light cues,
apparently without limitation as to time (e.g., before a run), and apparently
in response to any input (e.g., a setting by the coach prior to the run).
Based on the foregoing, to support adequately a finding that Buresta
discloses the claimed “dynamically updateable controller,” the Examiner
need only show that Buresta teaches a controller that is “configured to track
a position of the runner on the running track,” and is configured to
“selectively light one or more of the plurality of light elements of the at least
one light strip in a sequence thereby giving the moving visual cue to the
runner of the predetermined pace around the running track.” We disagree
with Appellant that Buresta must disclose that the selective lighting occurs
in response to, or is affected by, the tracked position of the runner. Appeal
Br. 11–13.
The Examiner supports adequately that Buresta discloses a controller
tracking a position of a runner, and selectively lighting light elements, as
recited in claim 1. See, e.g., Answer 3–4. Thus, we sustain the Examiner’s
anticipation rejection of claim 1. Inasmuch as Appellant argues the rejection
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of claims 2, 3, 5, 7–12, 14, and 16–20 with claim 1, we also sustain the
anticipation rejection of claims 2, 3, 5, 7–12, 14, and 16–20.

Rejection III—Obviousness rejection of claims 4, 6, 13, and 15
Claims 4 and 13
With respect to dependent claim 4, claim 4 depends from claim 2,
which depends from claim 1. Thus, we reproduce both claims 2 and 4 in
their entirety:
2. The system of claim 1, wherein the dynamically
updateable controller further includes a sensor for determining
the position of the runner on the running track and determines a
pace of traverse of the runner.
4. The system of claim 2, further comprising one or
more position detectors positioned around the running track, the
one or more position detectors transmitting a signal to the
dynamically updateable controller indicating the position of the
runner on the running track, and the dynamically updateable
controller further configured to determine the pace of traverse of
the runner based upon the signal.
Appeal Br. (Claims App.).
Appellant argues that the Examiner’s rejection is in error based on the
following:
In claim[] 4 . . ., a plurality of sensors are added to the
systems of claim[] 1 . . . to provide position information to the
controller 24 to determine the pace of the athlete. This
information allows the dynamic updating of the pacing program
based upon the pace of the athlete, which Buresta does not speak
to, and neither does Deutsch. This element is neither shown in
Buresta nor Deutsch[,] and the Examiner simply does not address
it.
Id. at 12 (emphasis added). Appellant’s argument is not persuasive of error,
however, because Appellant’s argument is not commensurate with the scope
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of claim 4. Claim 4 does recite that the dynamically updateable controller
“includes a sensor for determining the position of the runner on the running
track” and “determines a pace of traverse of the runner,” and that the system
includes “position detectors positioned around the running track . . . [and]
transmitting a signal to the dynamically updateable controller indicating the
position of the runner on the running track,” “and [that] the dynamically
updateable controller [is] further configured to determine the pace of
traverse of the runner based upon the signal.” Notwithstanding Appellant’s
argument, however, claim 4 does not recite any “updating of the pacing
program based upon the pace of the athlete.” Thus, we sustain the
Examiner’s obviousness rejection of claim 4, as Appellant does not show
that the Examiner errs. Because Appellant argues the rejection of claim 13
with claim 4, we also sustain the obviousness rejection of claim 13.

Claims 6 and 15
With respect to dependent claim 6, the claim recites the following:
6. The system of claim 1, further comprising
a transmitter carried by the runner, the transmitter
configured to send selective command signals from the runner to
the dynamically updateable controller to dynamically update the
predetermined pace, moving visual light cue, or other attribute,
and
the dynamically updateable controller further includes a
receiver for the selective command signals sent from the runner.
Appeal Br., Claims App. We agree with Appellant that the Examiner does
not support adequately that either reference discloses a transmitter carried by
the runner and configured to send selective command signals from the
runner to a dynamically updateable controller to dynamically update the
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predetermined pace, moving visual light cue, or other attribute. Id. at 14–15.
For example, although the Examiner relies on Deutschs’s paragraph 99 to
disclose the claimed transmitter, the Examiner does not explain sufficiently
how “the LED panel . . . flash[ing] the figure 1.23 . . . to indicate that the
athlete is 1.23 second behind the desired pace for the event” discloses a
transmitter transmitting selective command signals from the runner, as
claimed. Answer 19–20. The Examiner also does not explain sufficiently
how any “sensor worn by the athlete” as set forth in Deutsch’s paragraph 92,
which according to the Examiner’s explanation appears to collect
information without any input from the runner (see, e.g., Answer 18–19),
discloses a transmitter transmitting selective command signals from the
runner. Thus, we do not sustain the Examiner’s obviousness rejection of
dependent claim 6, or of dependent claim 15 that includes a similar
recitation as claim 6.

CONCLUSION
We AFFIRM the Examiner’s indefiniteness rejection of claims 9–18.
We AFFIRM the Examiner’s anticipation rejection of claims 1–3, 5,
7–12, 14, and 16–20.
We AFFIRM the Examiner’s obviousness rejection of claims 4
and 13.
We REVERSE the Examiner’s obviousness rejection of claims 6
and 15.

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In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
9–18 112(b) Indefiniteness 9–18
1–3, 5, 7–12,
14, 16–20
102(a)(1) Buresta 1–3, 5, 7–12,
14, 16–20

4, 6, 13, 15 103 Buresta, Deutsch 4, 13 6, 15
Overall Outcome 1–5, 7–20 6
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED IN PART