Ex Parte AhernDownload PDFPatent Trial and Appeal BoardSep 30, 201612589681 (P.T.A.B. Sep. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/589,681 10/27/2009 84042 7590 10/04/2016 Law Office of ROBERT C KLINGER 12967 Mahogany Ct Frisco, TX 75033 FIRST NAMED INVENTOR Frank Ahern 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 82019-000001-US-CPA 6576 EXAMINER CHAN, ALLEN ART UNIT PAPER NUMBER 3714 NOTIFICATION DATE DELIVERY MODE 10/04/2016 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): rklinger 12@ gm ail. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK AHERN Appeal2014-006317 Application 12/589,681 Technology Center 3700 Before EDWARD A. BROWN, WILLIAM A. CAPP, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Frank Ahem ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-16, 18-28, and 30-36. 2 Br. 7. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We AFFIRM. According to Appellant, the real party in interest is Innovention Partners, LLC. Br. 5. 2 We note that claims 17 and 29 stand objected to by the Examiner, but do not stand rejected, and thus are not before us for review as part of the instant appeal. See Non-Final Act. 13. Appeal2014-006317 Application 12/589,681 CLAIMED SUBJECT MATTER Appellant's disclosed invention relates to "golf club devices, and more particularly to game performance tracking and swing analysis." Spec. i-f 2. Claim 1, reproduced below, is the sole independent claim and is representative of the subject matter on appeal. 3 1. A device, comprising: a module configured to be coupled to a golf club, the module configured to ascertain a golf parameter indicative of an actual golf shot during game play on a golf course, the module having an interface configured to communicate a signal indicative of the parameter to a golf appliance physically remote from the golf club, the interface further configured to receive power from a physically remote device and configured to power the module with the received power. EVIDENCE The Examiner relied on the following evidence in rejecting the claims 1 on appea1: Heitman us 5,681,993 Oct. 28, 1997 Hagood US 2005/0037862 Al Feb. 17,2005 Eyestone US 2005/0054457 Al Mar. 10, 2005 Shirai US 2005/0143183 Al June 30, 2005 Stites US 2005/0215340 Al Sept. 29, 2005 Marty US 2007 /0026975 Al Feb. 1, 2007 Dugan US 2008/0085778 Al Apr. 10, 2008 3 We note that the Claims Appendix of the Appeal Brief incorrectly combines the subject matter of dependent claims 19 and 20, which results in the subsequent claims being misnumbered. The claims on appeal are correctly set forth in the Amendment dated August 14, 2012. 2 Appeal2014-006317 Application 12/589,681 REJECTIONS The following rejections are before us for review: I. Claims 1-3, 7, 11, 18-28, 30, 32-34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dugan and Marty. II. Claims 4--6, 10, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dugan, Marty, and Heitman. III. Claims 8 and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dugan, Marty, and Eyestone. IV. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Dugan, Marty, and Hagood. V. Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dugan, Marty, Heitman, and Eyestone. VI. Claim 31 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Dugan, Marty, and Stites. VII. Claim 35 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Dugan, Marty, and Shirai. ANALYSIS Rejection I - Claims 1-3, 7, 11, 18-28, 30, 32-34, and 36 as unpatentable over Dugan and Marty Claims 1 and 18 Appellant argues the rejection of claims 1 and 18 together. See Br. 19-21. We select claim 1 as the representative claim to decide the 3 Appeal2014-006317 Application 12/589,681 appeal of the rejection of these claims, with claim 18 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner found that Dugan discloses a device including all the limitations as recited in claim 1, except that "Dugan does not explicitly disclose that the interface is configured to receive power from a physically remote device and power the module with the received power." Non-Final Act. 3--4 (citing Dugan, Fig. 1, i-fi-122-24). However, the Examiner also found that Marty "teaches a trajectory detection and feedback system which uses a non-intrusive sensor located in an object, such as a ball or golf club, that can be powered by a physically remote device." Id. at 4 (citing Marty i-f l 01 ). The Examiner then concluded that, given the teachings of the prior art, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the device of Dugan to use an RFID sensor as taught by Marty "such that the sensor does not interfere with the player's normal play of the game." Id. (citing Marty i-f 101). Appellant argues that Marty does not teach or suggest a module on a golf club. See Br. 19-20. According to Appellant: "The Examiner incorrectly asserts that Marty teaches a non-intrusive sensor in an object 'such as a golf club' ... Rather, Marty teaches a trajectory detection and feedback system for tracking a ball in flight." Id. at 19. This argument against Marty alone is not persuasive of error in the rejection for two reasons. First, this argument attacks a reference individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Second, the Examiner relied on Dugan, not Marty, for teaching a golf club module having an interface with a remote 4 Appeal2014-006317 Application 12/589,681 device, and the rejection relies on Marty solely for teaching a sensor that can be powered by a physically remote device. See Non-Final Act. 3--4; see also Ans. 15-16. Thus, the rejection is based on the combined teachings of Dugan and Marty. Appellant's allegation regarding Marty alone is not responsive to the rejection articulated by the Examiner and therefore does not apprise us of error. Appellant also challenges the Examiner's reason to combine the teachings of Dugan and Marty. See Br. 20-21. In particular, Appellant alleges that the Examiner's reason (i.e., to obtain a sensor that would not interfere with the player's normal play of the game), and corresponding citation to paragraph 101 of Marty, is "woefully short of [the] required standard for establishing a primafacie case of obviousness." Id. at 20. Appellant further argues that the Examiner's reason would not motivate one of ordinary skill to arrive at the claimed invention because "Dugan teaches a sensor that does not interfere with the player's normal play of the game." Id. In response to Appellant's arguments, the Examiner expounds on the reasoning provided for combining the teachings of Dugan and Marty. See Ans. 18-19. The Examiner points out that Dugan teaches various interface technologies, including Bluetooth, SMS, WiFi, UWB, and WiMax, for sending signals between the signal measurement device on the golf club and a remote device, and that these interface technologies require an attached power source such as a battery. See id. at 18 (citing Dugan i-f 41 ). According to the Examiner, Marty's RFID arrangement represents an improvement over the similar interface technologies in Dugan because it does not require an attached power source, which adds weight and size that could interfere with a player's normal play of the game. See id. at 18-19. 5 Appeal2014-006317 Application 12/589,681 As such, the Examiner determines that "the incorporation of Marty's sensor into Dugan's device produces the obvious benefit of a non-intrusive sensor which would not interfere with a player's normal play of the game as discussed by Marty." Id. at 19 (citing Marty i-f 101). We are not persuaded by Appellant's arguments. Here, the Examiner's explanation as to why Marty's teaching of using an RFID sensor to avoid interference with a player's game would be relevant to and desirable for Dugan's system for analyzing a golf swing is reasonable. Appellant did not file a Reply Brief to address the Examiner's exposition in the Answer, and the Appeal Brief does not include any factual evidence or persuasive technical reasoning to refute the Examiner's well-reasoned position. Appellant further argues that the Examiner's reason to combine is based on hindsight. See Br. 21. According to Appellant, Marty does not suggest that an RFID sensor can be used with golf clubs, and Dugan and Marty do not appreciate the many reasons for and advantages of Appellant's invention. See id. Appellant also asserts that the Examiner failed to consider the particular problem solved by the invention. See id. (citing Interconnect Planning Corp. v. Feil (citation not provided)). Appellant's arguments are not persuasive. The Examiner's reason to combine (i.e., to eliminate interference with a player's normal play) comes directly from the prior art, namely paragraph 101 of Marty (see Non-Final Act. 4; see also Ans. 19), so we do not discern how the Examiner's reason would be based on knowledge gleaned only from Appellant's disclosure. Thus, the Examiner is correct to note that, so long as a conclusion of obviousness is based on a reconstruction that "takes into account only 6 Appeal2014-006317 Application 12/589,681 knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the Appellant's disclosure, such a reconstruction is proper." Ans. 19 (citing In re McLaughlin, 443 F.2d 1392 (CCPA 1971)). Furthermore, the reason to modify a reference may often prompt a person of ordinary skill in the art to do what the inventor has done, but for a different purpose or to solve a different problem; it is not necessary that the prior art suggest the modification to achieve the same advantage or result discovered by an applicant. See, e.g., In re Kahn, 441F.3d977, 987 (Fed. Cir. 2006). In view of the foregoing, Appellant does not apprise us of error in the Examiner's findings or reasoning for the conclusion of obviousness with respect to claim 1. Accordingly, we sustain the rejection of independent claim 1, and of dependent claim 18 falling therewith, under 35 U.S.C. § 103(a) as being unpatentable over Dugan and Marty. Claim 20 With respect to the rejection of claim 20, Appellant points out that dependent claim 20 recites that the RFID device is configured to be powered solely by the power received from the physically remote device, and argues that this feature "provides significant advantages over the golf club art including Dugan." Br. 21. Appellant also argues that the Examiner relies on "the [same] conclusory statement relying on paragraph [0101] of Marty." Id. at 22. We are not persuaded by Appellant's arguments. In particular, Appellant does not address the Examiner's specific findings regarding the subject matter of claim 20 (see Non-Final 5; see also Ans. 19--20), and 7 Appeal2014-006317 Application 12/589,681 Appellant's argument regarding the Examiner's reliance on paragraph 101 of Marty for providing a reason to combine is not persuasive for the reasons discussed supra. Appellant further contends that "the present claimed invention is likely to be used by discriminating golfers during actual golf play because of this feature, as opposed to cumbersome devices having involved subassemblies and batteries, power switches, and which are not suited for the huge aftermarket of golf clubs." Br. 21-22. This contention, which is merely attorney argument unsupported by any factual evidence in the record, does not apprise us of error in the rejection. For the foregoing reasons, we sustain the rejection of claim 20 under 35 U.S.C. § 103(a) as being unpatentable over Dugan and Marty. Claim 25 With respect to the rejection of claim 25, Appellant recites the language of claim 25 and argues that the Examiner relies on "the [same] conclusory statement relying on paragraph [0101] of Marty." Br. 22. We are not persuaded by Appellant's argument. Appellant fails to address the Examiner's specific findings regarding the subject matter of claim 25 (see Non-Final 6-7; see also Ans. 20), and Appellant's assertion regarding the Examiner's reliance on paragraph 101 of Marty for providing a reason to combine is not persuasive for the reasons discussed supra. Accordingly, we sustain the rejection of claim 25 under 35 U.S.C. § 103(a) as being unpatentable over Dugan and Marty. 8 Appeal2014-006317 Application 12/589,681 Claims 2. 3. 7. 11. 19. 21-24. 26-28. 30. 32-34. and 36 With respect to the rejection of claims 2, 3, 7, 11, 19, 21-24, 26-28, 30, 32-34, and 36, Appellant does not set forth any additional substantive arguments separate from the arguments discussed supra; instead, Appellant expressly states these claims are allowable "for at least the foregoing reasons with respect to Independent Claim 1." Br. 22. Accordingly, for the same reasons Appellant's arguments do not apprise us of error in the rejection of claim 1, Appellant also does not apprise us of error in the rejection of these claims. We likewise sustain the rejection of claims 2, 3, 7, 11, 19, 21-24, 26-28, 30, 32-34, and 36 under 35 U.S.C. § 103(a) as being unpatentable over Dugan and Marty. Rejection II - Claims 4-6, 10, 12, and 13 as unpatentable over Dugan, Marty, and Heitman With respect to the rejection of claims 4--6, 10, 12, and 13, Appellant does not set forth any additional substantive arguments separate from the arguments discussed supra; instead Appellant expressly states these claims are allowable "for at least the reasons provided with respect to independent Claim 1." Br. 22. Accordingly, for the same reasons that Appellant's arguments do not apprise us of error in Rejection I, Appellant also does not apprise us of error in Rejection II. We likewise sustain the rejection of claims 4--6, 10, 12, and 13 under 35 U.S.C. § 103(a) as being unpatentable over Dugan, Marty, and Heitman. 9 Appeal2014-006317 Application 12/589,681 Rejection III - Claims 8 and 16 as unpatentable over Dugan, Marty, and Eyestone With respect the rejection of claims 8 and 16, Appellant argues that one of ordinary skill would not consider the claimed invention obvious over Dugan, Marty, and Eyestone. See Br. 23. Specifically, Appellant alleges that Eyestone is directed to conserving battery power, whereas the present invention does not use a battery and derives its power from the remote golf appliance. See id. This contention is not persuasive because it fails to address the rejection presented, which does not bodily incorporate the battery of Eyestone into the module of Dugan, but rather relies on Eyestone solely for teaching a transition from a low power state to a higher power state. See Non-Final Act. 10; see also Ans. 21. In particular, the Examiner proposed to modify the resulting RFID sensor of the combined teachings of Dugan and Marty to transition from a lower power state to a higher power state, as taught by Eyestone. See Non-Final Act. 10. Accordingly, Appellant does not apprise us of error in the Examiner's findings or reasoning for the conclusion of obviousness with respect to claims 8 and 16, and we sustain the rejection of claims 8 and 16 under 35 U.S.C. § 103(a) as being unpatentable over Dugan, Marty, and Eyestone. Rejections IV-VII - Claims 9, 14, 15, 31, and 35 as unpatentable over Dugan and Marty, with one or more of Hagood, Heitman, Eyestone, Stites, and Shirai With respect to the rejections of claims 9, 14, 15, 31, and 35, Appellant does not set forth any additional substantive arguments separate from the arguments discussed supra; instead Appellant expressly states these 10 Appeal2014-006317 Application 12/589,681 claims are allowable "for at least the reasons provided with respect to independent Claim 1." Br. 23-25. Accordingly, for the same reasons that Appellant's arguments do not apprise us of error in Rejection I, Appellant also does not apprise us of error in Rejections IV, V, VI, or VII. We likewise sustain the rejections of claims 9, 14, 15, 31, and 35 under 35 U.S.C. § 103(a) as being unpatentable over Dugan and Marty, with one or more of Hagood, Heitman, Eyestone, Stites, and Shirai. DECISION We AFFIRM the Examiner's decision rejecting claims 1-3, 7, 11, 18-28, 30, 32-34, and 36 under 35 U.S.C. § 103(a) as being unpatentable over Dugan and Marty. We AFFIRM the Examiner's decision rejecting claims 4---6, 10, 12, and 13 under 35 U.S.C. § 103(a) as being unpatentable over Dugan, Marty, and Heitman. We AFFIRM the Examiner's decision rejecting claims 8 and 16 under 35 U.S.C. § 103(a) as being unpatentable over Dugan, Marty, and Eyestone. We AFFIRM the Examiner's decision rejecting claim 9 under 35 U.S.C. § 103(a) as being unpatentable over Dugan, Marty, and Hagood. We AFFIRM the Examiner's decision rejecting claims 14 and 15 under 35 U.S.C. § 103(a) as being unpatentable over Dugan, Marty, Heitman, and Eyestone. We AFFIRM the Examiner's decision rejecting claim 31 under 35 U.S.C. § 103(a) as being unpatentable over Dugan, Marty, and Stites. We AFFIRM the Examiner's decision rejecting claim 35 under 35 U.S.C. § 103(a) as being unpatentable over Dugan, Marty, and Shirai. 11 Appeal2014-006317 Application 12/589,681 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation