Ex Parte 7,789,800 et al

Patent Trial and Appeal Board

Jan 31, 2018

95002359 (P.T.A.B. Jan. 31, 2018)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/002,359 09/14/2012 7,789,800 I1618.10002US01 8094
97149 7590 01/31/2018
Maschoff Brennan
1389 Center Drive, Suite 300
Park City, UT 84098
EXAMINER
SPAHN, GAY
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
01/31/2018 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
____________________

STRAVA, INC.; MAPMYFITNESS, INC.; &
FITNESSKEEPER, INC.
Third Party Requesters

v.

ICON HEALTH & FITNESS, INC.
Patent Owner
____________________

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Technology Center 3900
____________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION AFTER REMAND

1 Issued September 7, 2010 to Scott R. Watterson et al. (hereinafter referred
to as the ’800 patent).
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STATEMENT OF THE CASE
The Patent Owner appealed under 35 U.S.C. § 134(b) and 315(a) from
the Examiner’s rejection of claims 7, 11, 12, 39–43, 45, 46, 50–54, 56–71,
73, 74, and 77–100. Claims 1–37 were original to the ’800 patent and
claims 38–100 were added during the reexamination prosecution. Claims 1–
6, 8–10, 13–38, 44, 47–49, 55, 72, 75, and 76 were cancelled during the
reexamination prosecution. In our Decision dated September 29, 2015, we
affirmed rejections of all pending claims. Dec. 22. Upon reviewing our
Decision, the Federal Circuit affirmed the rejections of most claims, but
vacated our Decision regarding the rejections of claims 46, 57–62, 65, 74,
and 98–100 and remanded the case to us for further determination. ICON
Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034 (Fed. Cir. 2017). We
have jurisdiction under 35 U.S.C. § 6(b).
REFERENCES
The prior art relied upon by the Examiner in rejecting claims 46, 57–
62, 65, 74, and 98–100 is:
Root US 6,013,007 Jan. 11, 2000
Jacobsen US 6,198,394 B1 Mar. 6, 2001
Shum US 6,585,622 B1 July 1, 2003
Stubbs US 6,736,759 B1 May 18, 2004
Narayanaswami US 7,477,890 B1 Jan. 13, 2009
Teller US 7,689,437 B1 Mar. 30, 2010
Henderson WO 98/00204 A1 Jan. 8, 1998
Margulis WO 99/30613 A1 June 24, 1999
Damen WO 99/44016 A1 Sept. 2, 1999
Claim 46 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Jacobsen, Henderson, and Narayanaswami. RAN
19. In the alternative, claim 46 stands rejected under 35 U.S.C. § 103(a) as
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being unpatentable over Root, Stubbs, Henderson, Jacobsen, and
Narayanaswami. RAN 21. In yet another alternative, claim 46 stands
rejected under 35 U.S.C. § 103(a) as being unpatentable over Root,
Margulis, Henderson, Narayanaswami, and Jacobsen. RAN 29.
Claims 57–62 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Jacobsen, Henderson, and Teller. RAN 18. In the
alternative, claims 57–62 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Stubbs, Henderson, and Teller. RAN 22. In yet
another alternative, claims 57–62 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Root, Margulis, Henderson, Damen, and Teller.
RAN 31.
Claim 65 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Jacobsen, and Teller. RAN 19. In the alternative,
claim 65 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Root, Stubbs, and Teller. RAN 22. In yet another alternative, claim 65
stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Root,
Margulis, Damen, and Teller. RAN 33.
Claim 74 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Teller, Henderson, Jacobsen, and Narayanaswami.
RAN 26.
Claim 98–100 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root and Jacobsen. RAN 12. In the alternative, claims
98–100 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Root and Shum. RAN 27.
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ANALYSIS
Our reviewing court found fault in our conclusions regarding the
vacated portions of the Decision as lacking “an adequate evidentiary basis
for [our] findings,” Icon, 849 F.3d at 1043–1044 (quoting In re NuVasive,
Inc., 842 F.3d 1376, 1382, 1379–80 (Fed. Cir. 2016)), due to a perceived
reliance upon attorney argument, while noting that “[a]ttorney argument is
not evidence,” Icon, 849 F.3d at 1043 (citing Gemtron Corp. v. Saint-
Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009)). We note that in
explaining the rejections below, we draw extensively from the Requester’s
Comments, which provided the proposed rejection of the newly added
claims to the Examiner. The Examiner adopted these proposed rejections
without comment. Although these rejections were originally proposed by
the Requester, because the proposed rejections set forth underlying facts
material to the issue at hand, we do not consider the proposed rejections to
be based on attorney argument, and note that it is not uncommon in
reexamination for a Requester to propose a rejection, which is then adopted
without comment by the Examiner, as is the case here, in order to avoid
repetition and duplication of what is typically a lengthy record.
Claim 1
Claims 46, 57–62, 65, 74, and 98–100 depend from cancelled claim 1.
In order to better illustrate the bases for rejecting the appealed claims, we
describe briefly the rejection and cancellation of independent claim 1.
1. An exercise system, comprising:
a portable physical activity sensing system comprising:
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a sensor configured to be associated with a user and configured
to sense a physical activity parameter of the user during
the performance of physical activity by the user; and
a memory in communication with the sensor, wherein the sensor
communicates data representative of the sensed physical
activity parameter to the memory, and wherein the
memory stores the data representative of the sensed
physical activity parameter; and
a separate communication system comprising:
a communication device for receiving physical activity related
information from the portable physical activity sensing
system;
a memory configured to store physical activity related
information regarding the user of the portable physical
activity sensing system;
a processor configured to analyze and update information
received from the portable physical activity sensing
system,
wherein the communication device sends information either to
the portable physical activity sensing system, to the user
of the portable physical activity sensing system, or to both
the user and the portable physical activity sensing system,
and
wherein the portable physical activity sensing system
records information about the user’s physical
activity and sends the information to the separate
communication system, the separate
communication system updates the user’s stored
information with the information received from the
portable physical activity sensing system, and
wherein the user may access the updated
information stored by the separate communication
system.
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In an Office Action in this proceeding, mailed December 6, 2012, the
Examiner rejected claim 1 under 35 U.S.C. § 102(b) as being anticipated by
Root. Root describes a portable, global positioning satellite (“GPS”) based,
personal performance monitor and feedback device 101 incorporating real-
time algorithms for monitoring the performance and progress of an outdoor
athlete such as a bicyclist or a runner; reporting the athlete’s progress to the
athlete periodically during an exercise session; and entertaining the athlete
while exercising. Root, col. 1, ll. 16–20, 59–67; col. 4, ll. 4–7; Figs. 1A, 2,
6. We adopt the findings of the Examiner:
Root teaches an exercise system that includes a portable
physical activity sensing system in figures 1 and 2, that includes
a sensor 611, 612 to sense physical activity parameter and
memory 608. Root further discloses the GPS receiver module
and antenna that sends geographic position signals to a satellite.
The GPS receiver module “continuously determines the athlete’s
geographical position and stores it in the memory 608 along with
the other information such as the date and time that each position
was acquired”, 7:40–44. It is agreed with the requester that
broadly, the GPS receiver module is a sensor that senses the
location of the user.
A separate communication system is in the form of an
external personal . . . computer 701. The portable physical
activity sensing system can store the sensed performance data
and communicate this data with the personal computer for further
storage and long term analysis. The separate communication
system comprises communication devices 604, 124, 118, 613 for
communicating with external devices. The personal computer
701 would inherently have memory and a processor in order to
download and upload information into the portable physical
activity sensing system. Root teaches the portable physical
activity sensing system can store performance data and
communicate this data with a separate personal computer for
further storage and long term analysis, 2:30–32. The user is then
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able to access the updated information stored by the separate
communication system. Root appears to anticipate the invention
as claimed.
Office Action, mailed Dec. 6, 2012, at 4; see also Request 16–17, 40–44,
58–59; Root, col. 5, ll. 36–50; col. 5, l. 66–col. 6, l. 8; col. 6, ll. 30–39; col.
7, ll. 40–49.
The Patent Owner responded to the Examiner’s findings by cancelling
claim 1. “Amendment A and Response to Non-Final Action,” dated March
6, 2013, at 33. The Patent Owner does not appear to contest the Examiner’s
finding that Root teaches an exercise system satisfying the limitations
recited in cancelled claim 1.
Claim 46 and 74 (“voice-activated controller”)
The Patent Owner made similar arguments with respect to claims 46
and 74. See, e.g., App. Br. PO 13 (Argument D), 19 (Argument G), 24
(Argument K). Claim 46 recites:
46. The exercise system of claim 1, wherein:
the sensor and memory of the portable physical activity
sensing system are integrally included in a portable first
computing device;
the first computing device further includes a processor and
a radio frequency (RF) wireless interface;
the physical activity parameter includes the speed of the
user and the distance traveled by the user;
the exercise system further comprises a portable second
computing device including a sensor, a memory, a processor, and
an RF wireless interface;
the second computing device is configured to be in direct
contact with the skin of the user during the performance of the
physical activity by the user;
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the second computing device sensor is configured to track,
substantially simultaneously with the sensing performed by the
first computing device sensor, the heart rate of the user during
the performance of the physical activity by the user;
the second computing device processor is configured to
store data representative of the heart rate in the second computing
device memory;
the second computing device processor is configured to
retrieve the data representative of the heart rate from the second
computing device memory and send the retrieved data
representative of the heart rate directly to the first computing
device RF wireless interface using the second computing device
RF wireless interface;
the first computing device processor is configured to
control the first computing device RF wireless interface to
receive the data representative of the heart rate from the second
computing device RF wireless interface and store the data
representative of the heart rate in the first computing device
memory along with data representative of the speed and distance
traveled;
the first computing device is configured to be powered by
an internal battery;
the first computing device further includes one or more
buttons configured to enable a user to input data or instructions
into the first computing device, the one or more buttons including
one or more physical buttons positioned on a surface of a housing
of the first computing device;
the first computing device is configured to track a period
of time and store the period of time in the first computing device
memory;
the first computing device further includes an integral
audio delivery device;
the physical activity related information includes the data
representative of the speed, distance traveled, and heart rate;
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the first computing device further includes an integral
electronic display configured to display the physical activity
related information;
the electronic display is configured to display an available
battery power level of the first computing device;
the exercise system further comprises a user module
including a data storage module and an interface module;
the interface module is configured to communicate with
the first computing device to receive the physical activity related
information from the first computing device;
the data storage module is configured to store the received
physical activity related information;
the interface module is further configured to send the
received physical activity related information over the Internet to
the communication device of the separate communication
system;
the communication device, memory, and processor of the
separate communication system are integrally included in a
remote server;
the communication device is configured to receive the
received physical activity related information over the Internet;
the server memory is configured to store the physical
activity related information received from the user module over
the Internet;
the server processor is configured to analyze the stored
physical activity related information and display the analysis of
the physical activity related information on a website that is
accessible to the user using the Internet and that allows the user
to communicate word-based conversations directly to other users
of other devices via the website;
the website is configured to enable the user to access and
change information stored by the server by displaying the
information on the website and allowing the user to enter
commands and information into the website; . . . .
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These limitations track those of rejected claim 39. The Board’s decision
affirming the rejection of claim 39 was not challenged in the appeal before
our reviewing court. See ICON Health & Fitness, Inc. v. Strava, Inc., 849
F.3d 1034, 1041–42 (Fed. Cir. 2017).
In addition, claim 46 also recites:
the exercise system further comprises a portable third
computing device including a sensor, a memory, a processor, and
a radio frequency (RF) wireless interface;
the third computing device is configured to be coupled to
a cycle of the user during the performance of the physical activity
by the user;
the third computing device is configured to track,
substantially simultaneously with the sensing performed by the
first computing device sensor and the tracking performed by the
second computing device sensor, a cycle parameter of the cycle
of the user during the performance of the physical activity by the
user;
the third computing device processor is configured to store
data representative of the cycle parameter in the third computing
device memory;
the third computing device processor is configured to
retrieve the data representative of the cycle parameter from the
third computing device memory and send the retrieved data
representative of the cycle parameter directly to the first
computing device RF wireless interface using the third
computing device RF wireless interface;
the first computing device processor is further configured
to control the first computing device RF wireless interface to
receive the data representative of the cycle parameter from the
third computing device RF wireless interface and store the data
representative of the cycle parameter in the first computing
device memory along with data representative of the speed,
distance traveled, and heart rate;
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the electronic display is further configured to display the
data representative of the cycle parameter;
the physical activity related information further includes
the data representative of the cycle parameter;
the first computing device is configured as a hand-held
device that is sized and shaped to be held in a human hand;
the hand-held device further includes a universal serial bus
(USB) port configured to allow uploading of data to, and
downloading of data from, the server through the user module;
the hand-held device further includes a port configured to
have a removable flash memory card inserted therein to
supplement the hand-held device memory; . . . .
These limitations track those of rejected claim 41. The Board’s decision
affirming the rejection of claim 41 was not challenged in the appeal before
our reviewing court. See ICON Health & Fitness at 1041–42.
Claim 46 concludes by reciting:
the electronic display that is both an output device and a
touch-sensitive input device;
the one or more buttons include touch-sensitive controls
presented on the electronic display;
the hand-held device further include an audio input device
including a microphone configured to gather audio inputs from
the user using a voice activated controller; and
the hand-held device further includes a radio interface
configured to send the gathered audio inputs over a radio
frequency to other radio interfaces of other computing devices
and configured to received audio outputs over the radio
frequency from the other radio interfaces and present the
received audio outputs to the user on the integral audio delivery
device.
We address specifically the rejection of claim 46 under § 103(a) as
being unpatentable over Root, Jacobsen, Henderson and Narayanaswami.
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As discussed earlier, the Examiner finds that Root teaches each and every
limitation of claim 1. See Office Action, mailed Dec. 6, 2012, at 4. In
addition to the teachings of Root, the Examiner also relies on the teachings
of Jacobsen as evidentiary support that an exercise system satisfying the
limitations shared by claims 46 and 39 would have been obvious.
Jacobsen describes a system for remotely monitoring the location and
physiological status of soldiers on the battlefield and during training
exercises. See Jacobsen, col. 1, ll. 6–9, 38–42. Jacobsen’s system includes
an integrated sensor system 14 and a wrist sensor/display unit 18 worn by
each monitored soldier. See id., col. 5, l. 66–col. 6, l. 2. In addition,
Jacobsen teaches adding functional units deployed at different operational
levels, such as leader/medic units distributed in the field, for transmitting,
interpreting and displaying information derived from the sensors mounted on
the individual soldiers. See id., col. 2, ll. 40–47. Jacobsen criticizes existing
systems for monitoring athletic training for failing to monitor the user’s
location; and for failing to provide sensor information regarding sufficient
vital signs to provide a complete picture of the user’s physiological state.
See generally id., col 1, l. 54–col. 2, l. 10.
The Examiner makes, and we adopt, the following additional findings
regarding the limitations shared by claims 46 and 39:
Root teaches a GPS-based Performance Monitor including
sensors 611, 612, processor 602 and memory 608 of the portable
physical activity sensing apparatus 601, 101. They are included
in a portable first computing device 601, 101. The GPS system
uses radio frequencies that are used to sense the speed and
distance of the user. Heart rate sensor 611 and temperature
sensor 612 are optional elements that are separate elements from
the first computing device 601. The separate communication
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system 701, 801 comprises a communication device 118, 124,
613 for the personal computer which would inherently include
memory and a processor.
Jacobsen also teaches a system for remote monitoring of
personnel including sensors e.g., blood pressure, heart rate,
breathing rate and oxygen saturation, 6:22–37. The soldier unit
50 includes wireless interface GPS (RF) 70 and a system radio
60 for sending and receiving data from remote locations. “The
global positioning system 70 is used for geolocation of the
soldier 10” 7:24–26, which can be used to calculate speed and
distance of the user. The geolocation is a physical activity
parameter of the user. The soldier unit 50 would be a first
portable computing device including a processor 310 and RF
wireless interfaces 60, 70. The second computing device would
be the wrist sensor/display unit 18 including a blood pressure
sensor 220 and a heart rate sensor 222 (Figure 4A) and a
processor 226. The second computing device would retrieve the
data representative of the blood pressure and heart rate and send
it to the first computing device 50 using a wireless interface. . . .
Root teaches the users can communicate using e-mail,
9:57–59: [“]a runner travelling to Seattle, Wash. From San
Francisco, Calif. could log on to the Internet web site and search
for individual runners or groups of runners in the Seattle area
with similar skills and interests. An E-mail message can be sent
to schedule a future exercise session together.[”] E-mail allows
the user to communicate word-based conversations directly to
other users of other devices via the website.
RAN 12–13.
The Examiner correctly concludes that:
While Jacobsen appears silent with regard to whether or
not the wireless communication between the integrated sensor
unit (ISU) or wrist sensor display unit (WU) and the soldier unit
(SU) uses radio frequencies, such would have been an obvious
provision. Jacobsen already establishes the art of
communicating wirelessly using radio waves between many
different sensor units. It would have been obvious to one of
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ordinary skill in the art to modify Root to change the heart sensor
611 of Root using an integrated sensor unit (ISU) as taught by
Jacobsen as a separate sensor located elsewhere on the body for
picking up the heart rate and transmitting it using RF to the first
computing device.
RAN 13.
With respect to the remaining limitations that claim 46 shares with
claim 41, we adopt the Examiner findings that:
Root teaches a GPS-based Performance Monitor for
outdoor athletes including runners and bicyclists. Root appears
silent with regard to the details of a system that is designed for
bicyclists. Henderson teaches such details.
Henderson teaches a portable physical activity sensing
system for an athlete on a bicycle outside, 16:12–16: [“]A
workout is a protocol for a single day’s exercises, which can be
performed either on the full electronic exercise system 100 or
outside on a bicycle (or on a treadmill vs. outdoor running.[”]
Henderson also teaches, 26:1–5: [“]With respect to the route
recording or mapping feature, the portable, dockable cycle
computer and monitor 16 may either automatically or manually
sample incline, distance and heart rate at selected intervals during
an outdoor workout or race, recording the same.[”]
Additionally, Henderson teaches, 8:20–9:8: [“]When a
user exercises with bicycle 114 outdoors, away from base
controller 104 and resistance unit 102, route computer 108
monitors and stores information from heart rate monitor 124, rear
wheel sensor 106a, and cadence sensor 106b. Route computer
108 starts recording data when cadence sensor 106b or rear wheel
sensor 196a senses motion (after the user instructs route
computer 108 to record). Route computer 108 stops recording
when motion stops, thereby [‘]stitching[’] together a route
despite any number of stops along the way. When the user docks
bicycle 114 with resistance unit 102 and base controller 104,
route computer 108 automatically resets after each such docking
and downloading operation . . . [.”]
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Moreover, Henderson teaches 11:8–17: [“] Referring to
Figures 4a and 4b, once a route has been traveled, and the user
docks bicycle 114 into electronic exercise system 100 (for
example, at home), a flying lead 146 from the base controller 104
couples to base controller port 142 of route computer 108. Route
and statistical information can then be downloaded into base
controller 104, providing a time-stamped readout of the entire
route, including any of: recorded heart rate, inclination, speed,
and cadence, and other information, sampled at selected time
intervals.[”]
Since the cycle performance information is downloaded to
the base controller 104 at the end of the exercise, the third
computing device would inherently include a processor and
interface for transmitting the information. The Henderson
system uses a RF transceiver between the heart rate monitor and
the route computer 108, 8:17–19.
RAN 16–17.
The Examiner correctly concludes:
Using RF transceivers to communicate wirelessly between
sensors within the system is suggested by Henderson. Such
would have been an obvious equivalent means of transferring
information between microprocessors e.g., the route computer
108 and base controller 104. No wires needed. Therefore, it
would have been obvious to modify Root to include a third
computing device 108 coupled to a cycle that includes sensors
for sensing the incline, distance and heart rate stored in memory
as taught by Henderson so that the user isn’t limited to just
jogging as s form of exercise.
RAN 17–18.
The Examiner also incorporates by reference, to the extent consistent
with the Examiner’s findings and reasoning, the Requester’s commentary in
Claim Chart CC-RJ, attached to Requester’s Comments. See RAN 13, 16,
19. The Requester’s proposed findings and reasoning regarding cancelled
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claim 38, claim 39 and claim 41, on the first through fourth pages, and the
sixth page, of Claim Chart CC-RJ, are pertinent to the patentability of claim
46.
In addition, the Examiner incorporates by reference the Requester’s
proposed findings and reasoning regarding those limitations of claim 46 not
shared with claims 38, 39 and 41. The Requester’s proposed findings rely
on Narayanaswami and Jacobsen for support. See Claim Chart CC-RJ,
seventh and eighth pages (entries 45-1, 46-1 & 46-2). Narayanaswami
describes a wearable device or appliance capable of wirelessly accessing
information over a wireless RF information network. The device or
appliance may take the form of a wrist watch equipped with an interactive
user interface including a touch sensitive screen or panel. See
Narayanaswami, col. 2, ll. 49–60, col. 5, ll. 19–22. We find that
Narayanaswami is prior art to the claims on appeal. In particular, we find
the Patent Owner’s attempt to “swear behind” Narayanaswami unpersuasive,
see App. Br. 13–14; Ex. 1 to the App. Br. PO., as discussed on pages 14–15
of the prior Decision.
With respect to those limitations of claim 46 not shared with claims
38, 39 and 41, Jacobsen discloses that, as part of portable monitoring
devices, “[m]icrophones 640 may be provided to provide the ability to
remotely monitor sound about the sensor probe 600.” Jacobsen, col. 16, ll.
18–20. Although the microphone is described with respect to a stand-alone
sensor probe, Jacobsen indicates that “as sensor technology improves and
facilitates the use of smaller, less energy consumptive sensors, the number of
sensors [that] may be practically included in the integrated sensor unit can
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be increased.” Id., col. 10, ll. 59–63. One of skill in the art would thus
recognize that video camera functionality could also be incorporated into the
soldier unit.
Additionally, in Jacobsen, the “display screen 204 is used to display
information regarding time and geolocation, and could even be used to
communicate instructions to a soldier regarding his physiological status, or
the position or physiological status of other soldiers.” Id., col. 9, ll. 25–30.
If the system can send visual data, it would have been obvious to one of skill
in the art to send audio data via the system as well. Doing so would have
been no more than a simple substitution of one known element for another to
obtain predictable results.
Also, a leader/medic unit “includes a radio transceiver 322[,] which is
connected to an antenna 324 to enable the leader/medic unit 320 to
communicate with a communications system allow[ing] for the transfer of
data packets between system units.” Id., col. 11, ll. 52–56. Jacobsen also
indicates that “[c]ommunication between the sensor units 50 and the
leader/medic units 320 is usually sent through a relay 530, which may be a
satellite 51 (FIG. 7), an airplane 520 (FIG. 7) or some stationary
structure. . . . The relay is controlled by a master 540[,] which communicates
with one or more slaves to receive signals regarding the physiological status
of soldiers and the location.” Id., col. 15, ll. 56–65. Such communication
can occur via UHF, which is a radio frequency. Id., col. 15, l. 65–col. 16, l.
2.
To this point, those arguments the Appellants have made in their
briefs concerning the limitations of claim 46 have not been well taken. In
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addition, however, the Patent Owner argues that the rejection of claims 46
and 74 is improper because the Examiner erroneously relied upon the
microphone 640 of Jacobsen. App. Br. PO 24. Without rebutting the
substance of the declaration nor that of the evidentiary findings adopted by
the Examiner, the Patent Owner merely argued that Mr. Koperda’s
declaration evidence supporting the obviousness of this element is
insufficient as not being “record evidence.” We stated in our original
Decision that “[a] declaration is record evidence just as a piece of prior art
would be, and the Patent Owner has not challenged the correctness of the
evidence submitted, merely the form.” Dec. 13; see also ICON Health &
Fitness at 1041 (“[T]he PTAB is permitted to weigh expert testimony and
other record evidence and, in so doing, rely on certain portions of an expert’s
declaration while disregarding others. . . . [W]e frequently have affirmed
PTAB determinations on obviousness that include such statement [that
something ‘would have been obvious’], so long as other aspects of the
declaration contain statements related to factual findings.”).
In reviewing this rejection anew, we take a different view of the
Patent Owner’s argument. While not particularly well articulated, we now
take the Patent Owner’s argument as asserting that this rejection relies solely
on declaration evidence for teaching the voice-activated aspects of the
claims at issue, which is insufficient. The rejection essentially lays out all of
the hardware necessary for voice-activated control, but nothing in the
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references themselves actually teaches the use of voice-activated control
within the system of the rejection.
Mr. Koperda declares, without any supporting evidence, that voice-
activated control was known, and so, given the structure recited in the
applied references, one of ordinary skill in the art could have enabled voice-
activated control. While this could be true, as noted above, we have the
flexibility to weigh evidence accordingly. In this instance we conclude that
if voice-activated control had been well-known then it should have been
within Requester’s capability to present a reference to provide that teaching,
rather than relying solely on declaration evidence. In that sense, we agree
with the Patent Owner that Mr. Koperda’s statements on this point should
not be given sufficient weight so as to justify rejection of the claims. Given
that there is nothing more than declaration evidence in support of voice-
activated control, to which we do not give substantial weight sufficient to
justify rejection, we do not sustain the rejection of claims 46 and 74.
Claims 57–62 and 65 (“electrical contacts”)
Claim 57 is representative of the grouping including claims 57–62 for
purposes of the rejections under § 103(a). The Patent Owner does not
appear to have made any argument to the Board to distinguish claim 65 from
the teachings of the prior art over which claim 65 was rejected that was not
also made to distinguish claim 57 from the art over which claim 57 was
rejected. See, e.g., App. Br. PO 13 (Argument D), 14 (Argument E), 18
(Argument F), 26 (Argument L). Therefore, we address the Patent Owner’s
arguments regarding the patentability of claims 57–62 and 65 solely in the
context of the language of claim 57.
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Claim 57 recites:
57. The exercise system of claim 1, wherein:
the sensor and memory of the portable physical activity
sensing system are integrally included in a portable first
computing device;
the first computing device further includes a processor and
a radio frequency (RF) wireless interface;
the physical activity parameter includes the speed of the
user and the distance traveled by the user;
the exercise system further comprises a portable second
computing device including a sensor, a memory, a processor, and
an RF wireless interface;
the second computing device is configured to be in direct
contact with the skin of the user during the performance of the
physical activity by the user;
the second computing device sensor is configured to track,
substantially simultaneously with the sensing performed by the
first computing device sensor, the heart rate of the user during
the performance of the physical activity by the user;
the second computing device processor is configured to
store data representative of the heart rate in the second computing
device memory;
the second computing device processor is configured to
retrieve the data representative of the heart rate from the second
computing device memory and send the retrieved data
representative of the heart rate directly to the first computing
device RF wireless interface using the second computing device
RF wireless interface;
the first computing device processor is configured to
control the first computing device RF wireless interface to
receive the data representative of the heart rate from the second
computing device RF wireless interface and store the data
representative of the heart rate in the first computing device
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memory along with data representative of the speed and distance
traveled;
the first computing device is configured to be powered by
an internal battery;
the first computing device further includes one or more
buttons configured to enable a user to input data or instructions
into the first computing device, the one or more buttons including
one or more physical buttons positioned on a surface of a housing
of the first computing device;
the first computing device is configured to track a period
of time and store the period of time in the first computing device
memory;
the first computing device further includes an integral
audio delivery device;
the physical activity related information includes the data
representative of the speed, distance traveled, and heart rate;
the first computing device further includes an integral
electronic display configured to display the physical activity
related information;
the electronic display is configured to display an available
battery power level of the first computing device;
the exercise system further comprises a user module
including a data storage module and an interface module;
the interface module is configured to communicate with
the first computing device to receive the physical activity related
information from the first computing device;
the data storage module is configured to store the received
physical activity related information;
the interface module is further configured to send the
received physical activity related information over the Internet to
the communication device of the separate communication
system;
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the communication device, memory, and processor of the
separate communication system are integrally included in a
remote server;
the communication device is configured to receive the
received physical activity related information over the Internet;
the server memory is configured to store the physical
activity related information received from the user module over
the Internet;
the server processor is configured to analyze the stored
physical activity related information and display the analysis of
the physical activity related information on a website that is
accessible to the user using the Internet and that allows the user
to communicate word-based conversations directly to other users
of other devices via the website;
the website is configured to enable the user to access and
change information stored by the server by displaying the
information on the website and allowing the user to enter
commands and information into the website; . . . .
These limitations track those of rejected claims 39 and 46.
In addition, claim 57 recites:
the exercise system further comprises a portable third
computing device including a sensor, a memory, a processor, and
a radio frequency (RF) wireless interface;
the third computing device is configured to be coupled to
a cycle of the user or coupled to clothing of the user during the
performance of the physical activity by the user;
the third computing device is configured to track,
substantially simultaneously with the sensing performed by the
first computing device sensor and the tracking performed by the
second computing device sensor, a cycle parameter of the cycle
of the user or a pedometer parameter of the user during the
performance of the physical activity by the user;
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the third computing device processor is configured to store
data representative of the cycle parameter or the pedometer
parameter in the third computing device memory;
the third computing device processor is configured to
retrieve the data representative of the cycle parameter or the
pedometer parameter from the third computing device memory
and send the retrieved data representative of the cycle parameter
or the pedometer parameter directly to the first computing device
RF wireless interface using the third computing device RF
wireless interface;
the first computing device processor is further configured
to control the first computing device RF wireless interface to
receive the data representative of the cycle parameter or the
pedometer parameter from the third computing device and store
the data representative of the cycle parameter or the pedometer
parameter in the first computing device memory along with data
representative of the speed, distance traveled, and heart rate;
the electronic display is further configured to display the
data representative of the cycle parameter or the pedometer
parameter;
the physical activity related information further includes
the data representative of the cycle parameter or the pedometer
parameter; . . . .
These limitations track those of rejected claims 41 and 46, except that “the
third computing device is configured to track . . . a cycle parameter of the
cycle of the user or a pedometer parameter of the user during the
performance of the physical activity by the user;” and the first and third
computing devices are configured to perform various communication,
processing and display steps on either the cycle parameter or, in the
alternative, on the pedometer parameter.
Claim 57 concludes by reciting:
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the first computing device is configured to be worn on the
user;
the exercise system further comprises a cradle that
includes electrical contacts and that is configured to be
connected, via an electrical cable, to a power source; and
the first computing device includes electrical contacts
configured to mate with the cradle electrical contacts.
We address specifically the rejection of claim 57 under § 103(a) as
being unpatentable over Root, Jacobsen, Henderson, and Teller. As
discussed earlier, the Examiner finds that Root teaches each and every
limitation of claim 1. See Office Action, mailed Dec. 6, 2012, at 4. The
Examiner’s findings and reasoning regarding the limitations of claim 39, as
set forth on pages 12–13 of the RAN, and as quoted and adopted above,
apply with equal force to those limitations that claim 57 shares with claims
39 and 46.
As to those limitations that track the limitations of rejected claims 41
and 46, except that “the third computing device is configured to track . . . a
cycle parameter of the cycle of the user or a pedometer parameter of the user
during the performance of the physical activity by the user;” and the first and
third computing devices are configured to perform various communication,
processing and display steps on either the cycle parameter or, in the
alternative, on the pedometer parameter, we note that, “[i]f a claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). Therefore, if a structure embodying one
alternative recited in an alternative limitation would have been obvious, the
claim as a whole is unpatentable. See ACCO Brands Corp. v. Fellowes, Inc.,
813 F.3d 1361, 1367 (Fed. Cir. 2016) (a claim is unpatentable if it reads on
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obvious subject matter, even if it might also read on non-obvious subject
matter). For this reason, the Examiner’s findings and reasoning regarding
the limitations of claim 41, as set forth on pages 16–18 of the RAN, and as
quoted and adopted above, apply with equal force to those limitations of
claim 57 that track the limitations of claims 41 and 46, to the extent claim 57
covers an embodiment in which “the third computing device is configured to
track . . . a cycle parameter of the cycle of the user;” and the first and third
computing devices are configured to perform various communication,
processing and display steps on the cycle parameter.
The Examiner also incorporates by reference, to the extent consistent
with the Examiner’s findings and reasoning, the Requester’s commentary in
Claim Chart CC-RJ, attached to Requester’s Comments. See RAN 13, 16,
18, 19. The Requester’s proposed findings and reasoning regarding
cancelled claim 38, claim 39 and claim 41, on the first through fourth pages,
and the sixth page, of Claim Chart CC-RJ, are pertinent to the patentability
of claim 57.
In addition, the Examiner incorporates by reference the Requester’s
proposed findings and reasoning regarding those limitations of claim 57 not
shared with claims 39, 41 and 46. The Requester’s proposed findings rely
on Teller for support. See Claim Chart CC-RJ, ninth page (entries 57-1 &
57-2). Teller describes a system by which “data relating to the physiological
state, the lifestyle and certain contextual parameters of an individual is
collected and transmitted, either subsequently or in real time, to a site . . .
where it is stored for later manipulation and presentation to the individual,
preferably over an electronic network such as the Internet.” Teller, col. 4, ll.
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15–21. The system includes a sensor device 10 worn on the individual’s
body for monitoring a spectrum of physiological parameters including heart
rate. See id., col. 4, ll. 28–46. The sensor device 10 uploads data to the
Internet through a computer 35. The sensor device 10 communicates with
the personal computer 35 either through a serial connection, such as a USB
port; through a physical connection effected using a cradle; or by means of
short-range wireless transmission. See id., col. 8, ll. 31–47.
We find that Teller, like Narayanaswami, is prior art to the claims on
appeal. In particular, we find the Patent Owner’s attempt to “swear behind”
Teller unpersuasive, see App. Br. 13–14; Ex. 1 to the App. Br. PO., as
discussed on pages 14–15 of the prior Decision. With respect to those
limitations of claim 57 not shared with claims 39, 41 and 46, Teller discloses
that the “physical connection [of the sensing device to a personal computer]
may also be accomplished by using a cradle, not shown, that is electronically
coupled to personal computer 35 into which sensor device 10 can be
inserted, as is common with many commercially available personal digital
assistants.” Teller, col. 8, ll. 37–41. The cradle is connected to a personal
computer, which constitutes a power source. It would have been obvious to
include a cradle as an intermediary device for the system of Root and
Jacobsen to increase the ease of connectivity for the device. Doing so would
have been no more than combining prior art elements according to known
methods to yield predictable results.
One of ordinary skill in the art also would have understood that in
order to be “electronically coupled” to the cradle as claimed, the sensor
device would necessarily have included electrical contacts. Teller discloses
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a cradle that is “electronically coupled to [a] personal computer” and that the
“sensor device 10 can be inserted, as is common with many commercially
available personal digital assistants.” Teller, col. 8, ll. 38–41. This is further
supported by Mr. Koperda who provided declaratory evidence that PDAs of
that day did indeed use electrical contacts for the “electronically coupled”
connections to their personal computer and that one skilled in the art at the
time would have understood that “electronically coupled” PDAs of that day
used electrical contacts in the cradle. See Koperda Dec. ¶ 31. Unlike with
claims 46 and 74, here Mr. Koperda simply elaborates on what is already
disclosed in a reference rather than providing key evidence of a feature not
disclosed. We find the disclosure of Teller, as explained and supported by
the testimony of Mr. Koperda, persuasive. Accordingly, we affirm the
Examiner’s rejection of claims 57–62.
Claims 98–100
Claim 98 is representative of the grouping including claims 98–100
for purposes of the rejections under § 103(a). Claim 98 recites:
98. The exercise system of claim 1, wherein:
the sensor and memory of the portable physical activity
sensing system are integrally included in a portable first
computing device;
the sensor is an accelerometer;
the physical activity parameter includes acceleration of the
user;
the first computing device is configured to be powered by
an internal battery;
the first computing device further includes an integral
electronic display configured to display the data representative
of the acceleration;
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the physical activity related information includes the data
representative of the acceleration;
the exercise system further comprises a user module
including a data storage module and an interface module;
the interface module is configured to communicate with
the first computing device to receive the physical activity related
information from the first computing device; and
the data storage module is configured to store the received
physical activity related information.
We address specifically the rejection of claim 98 under § 103(a) as
being unpatentable over Root and Shum. As discussed earlier, the Examiner
finds that Root teaches each and every limitation of claim 1. See Office
Action, mailed Dec. 6, 2012, at 4. The Examiner incorporates by reference,
to the extent consistent with the Examiner’s findings and reasoning, the
Requester’s commentary in Claim Chart CC-RSh, attached to Requester’s
Comments. See RAN 27. The Requester’s proposed findings and reasoning
in Claim Chart CC-RSh are pertinent to the patentability of claim 98.
Our findings and reasoning track those found on the third page of
Claim Chart CC-RJ (entries 39-7 – 39-9); and in Claim Chart CC-RSh.
Root discloses that a power source 609 can be an internal power source such
as a battery. See Root, col. 5, ll. 58–61. In addition, Root discloses “an
external personal computer 701” that can be connected to the central
processing unit of the monitoring device. See id., col. 5, l. 48, Figs. 7–9.
The external personal computer is a user module. This is also different from
the separate communication system of claim 1, which is disclosed by the
remote computer 801 of Root. The external personal computer of Root can
store the physical activity related information.
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Root also discloses a personal performance monitor that can “upload
summary data of each exercise session to a personal computer for permanent
storage in an electronic log and further analysis of the user’s long term
progress and trends.” Root, col. 10, ll. 20–30. The permanent storage and
electronic log constitute a data storage module. Root discloses that “the
computer’s monitor screen 705 is shown displaying a customized software
program used for athletic performance trend analysis.” Id., col. 6, ll. 2–5.
The software program for performance trend analysis constitutes an interface
module. In addition, Root discloses that the personal performance monitor
“can store performance data and communicate this data with a personal
computer for further storage and long term analysis.” Id., col. 2, ll. 30–32.
The physical activity related information is thus received by the personal
computer from the first computing device.
Shum describes a technique for encouraging athletes to use athletic
gear, such as footwear, purchased from a vendor by offering rewards based
on athletic performance information. See Shum, col. 1, ll. 8–21. Shum
teaches collecting the athletic performance information by means of a
performance measuring device 10, see id., col. 4, ll. 28–32, and then
transmitting the athletic performance information to a reward determination
location for processing, see id., col. 2, ll. 53–60. Shum discloses that “the
athletic performance measurement device includes a sensor 12, a memory
14, and an interface 16.” Shum, col. 4, ll. 33–35; Fig. 3. These
“measurement devices 10 are light weight, portable, and attached to the
athlete or articles worn by the athlete while exercising.” Id., col. 4, ll. 30–
32. Shum also discloses that “the sensor 12 is an accelerometer for detecting
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acceleration.” Id., col. 4, ll. 44–45. It would have been obvious to
incorporate an accelerometer into the system of Root to obtain predictable
results of additional functionality.
The arguments with regard to the rejection of claims 98–100 focus on
one supporting rationale for the rejection (mere substitution) while ignoring
other rationales set forth by the Examiner and/or the Requesters. We note
that the Patent Owner does not challenge the underlying factual findings
regarding Shum and its teachings, but challenges only one of the supporting
rationales for combining the teachings. Only those arguments actually made
by the Appellant have been considered in this decision. Arguments that the
Appellant could have made but chose not to make have not been considered
and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).
As the Requester points out in its Comments after the ACP, the Patent
Owner “omits that Requesters also asserted that incorporating Shum’s
accelerometer into the system of Root would have been no more than
‘combining prior art elements according to known methods to yield
predictable results. (MPEP 2143.)’ (CC-RSh at 98–1.)” Comments by
Third Party Requesters to Patent Owner’s Response to Action Closing
Prosecution (ACP) Under 37 C.F.R. § 1.951(b) submitted November 6, 2013
(“Comments after ACP”), at 32. We agree that, regardless of the mere
substitution rationale, the rejection may properly be supported by the other
rationales, which the Patent Owner did not challenge.
We also consider the Patent Owner’s arguments regarding principle of
operation only to apply to the simple substitution rationale, upon which we
do not rely. Incorporation of an accelerometer as an additional feature,
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rather than simple substitution of one element for another, into the system of
Root would not change the principle of operation, but would merely add
more functionality than that disclosed in Root alone. Accordingly, we
sustain the Examiner’s rejection.
The Patent Owner waived any argument that it might have presented
concerning the alternative rationale proposed by the Requester and
incorporated by reference by the Examiner. The Patent Owner argued in its
Appeal Brief that Root taught away from the subject matter of claim 98,
because substituting an accelerometer for the GPS sensor of Root’s device
101 would have rendered Root’s system unsatisfactory for the intended
purpose of continuously and accurately determining an athlete’s position.
See App. Br. PO 31–32. The Requester responded by pointing out that the
Examiner had adopted both rationales proposed by the Requester in Claim
Chart CC-RSh; and that the alternative rationale, “combining prior art
elements according to known methods to yield predictable results,”
contemplated combining both an accelerometer and Root’s GPS sensor in a
system without eliminating the GPS sensor. See Resp. Br. R 23, citing
Comments after ACP 32.2 This statement in the Requester’s Respondent
Brief put the Patent Owner on notice that the Patent Owner had to respond to
the alternative rationale. The Patent Owner had an opportunity to respond to
the alternative rationale, or at least seek an opportunity to present further

2 We note that the Requester’s arguments are incorporated into, rather than
repeated in, the Respondent Brief. This is not an ideal practice, as it may be
used to evade the word-count limitations on the briefs. Nevertheless, the
practice is not expressly forbidden by the rules governing inter partes
reexaminations. See, e.g., 37 C.F.R. § 1.52; 37 C.F.R. § 1.943; 37 C.F.R.
§ 41.68.
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evidence or argument, in its Rebuttal Brief. Instead of responding to the
alternative rationale, the Patent Owner asserted that the Requester “makes no
new arguments leaving nothing for Patent Owner to rebut.” Reb. Br. PO 17.
In doing so, the Patent Owner waived its opportunity to respond to the
alternative rationale.
DECISION
For the above reasons, we re-AFFIRM the Examiner’s decision to
reject claims 57–62, 65, and 98–100, and REVERSE the Examiner’s
decision to reject claims 46 and 74.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). In the event
neither party files a request for rehearing within the time provided in
37 C.F.R. § 41.79, and this decision becomes final and appealable under
37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED-IN-PART

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PATENT OWNER:

MASCHOFF BRENNAN
1389 CENTER DRIVE, SUITE 300
PARK CITY, UT 84098

THIRD PARTY REQUESTER:

STERN, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005

peb