Ex Parte Deese

Patent Trials and Appeals Board

Apr 12, 2019

14192940 - (D) (P.T.A.B. Apr. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/192,940 02/28/2014
92269 7590 04/16/2019
Global Intellectual Property Agency, LLC
P.O. Box 382
Swedesboro, NJ 08085
FIRST NAMED INVENTOR
Julian Deese
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.
JD318652 1081
EXAMINER
KLAYMAN, AMIR ARIE
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
04/16/2019 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):
info@globalipa.com
notifications@globalipa.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIAN DEESE
Appeal2018-005928
Application 14/192,940
Technology Center 3700
Before MICHELLE R. OSINSKI, WILLIAM A. CAPP, and
NATHAN A. ENGELS, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the non-final
rejection of claims 1, 5-16, and 20-24. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Appeal2018-005928
Application 14/192,940
THE INVENTION
Appellant's invention relates to throwing machines. Spec. 2.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. An automated football throwing system, comprising:
a memory storing a plurality of football routes;
said plurality of football routes each including a lateral
orientation, launch angle, and speed;
wherein said plurality of football routes comprise a slant, a
drag, a comer, a post, and a streak;
a football throwing device comprising:
a storage receptacle adapted to hold a plurality of footballs;
a loading bay adapted to hold a football received from said
storage receptacle;
a pair of coacting wheels adapted to propel a football
wherein said pair of coacting wheels is separated by a space;
a loading mechanism adapted to move a football placed in
said loading bay into said space between said pair of coacting
wheels; and
an adjustable support connected to said loading bay and
said memory, wherein said adjustable support is adapted to
adjust the positioning of the device based on a football route
selected from the plurality of football routes.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Sciarrillo
Cucjen
Coiner
us 5,224,701
US 7,691,012 B2
US 2013/0316837 Al
July 6, 1993
Apr. 6, 2010
Nov. 28, 2013
The following rejections are before us for review:
1. Claims 1, 5-16, and 20-24 are rejected under 35 U.S.C. § 112(b)
as indefinite for failing to particularly point out and distinctly claim the
subject matter which the inventor regards as the invention.
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Application 14/192,940
2. Claims 1, 5-8, 11-16, and 20-24 are rejected under 35 U.S.C.
§ 103(a), as being unpatentable over Cucjen and Coiner.
3. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a), as being
unpatentable over Cucjen, Coiner, and Sciarrillo. 1
OPINION
Indefiniteness
Claims 1 and 15
The Examiner considers that independent claims 1 and 15 do not
recite sufficient structure so that the throwing device is adapted to adjust the
positioning of the device based on a selected route. Non-Final Action 2.
Appellant argues that the "adapted to" language amounts to functional
claiming, which is permissible. Appeal Br. 10, citing In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997). Appellant argues that:
The language "connected to" and "adapted to" means the
claimed components must be connected in a way to perform the
designated function of positioning the device based on a
football route selected, wherein the device is positioned by the
adjustable support. Despite a portion of the claim lacking
structural components that list specifically how the device
throws a ball or exactly how the adjustable support adjusts the
device does not render the claim indefinite.
Id. In addition, Appellant argues that the Specification provides general
guidance so a person of ordinary skill in the art would understand the claims
in light of the Specification. Appeal Br. 11 and 12 (citing Spec. ,r,r 33-35
and 40).
1 A rejection of claims 1, 5-8, 11, 12, 15, 16, and 20-24 under 35 U.S.C.
§ 102 as anticipated by Cucjen has been withdrawn by the Examiner.
Ans. 2.
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Application 14/192,940
In response, the Examiner takes the position that the cited portions of
the Specification relied on by Appellant merely provide a general disclosure,
with no detailed explanation of how the device can perform as claimed.
Ans. 3. The Examiner concedes that memory can store data, but cannot
adjust lateral orientation or launch angle of the throwing mechanism based
on such data. Id. For example, the Examiner points out that, although
memory can store lateral orientation data, it cannot control lateral
orientation. Id. The Examiner also points out that the system may not
function properly depending on where a football player lines up relative to
the throwing machine before running a pass route. Id. at 5---6.
The test for definiteness under 35 U.S.C. § 112, is whether "those
skilled in the art would understand what is claimed when the claim is read in
light of the specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted).
Claim 1 is comprised of two major subsystems: (1) a memory; and
(2) a football throwing device. Claims App. The memory includes data
relating to lateral orientation, launch angle, and speed for a plurality of
football routes. Id. The football throwing device features an "adjustable
support." Id. The adjustable support is adapted to "adjust the positioning of
the device" relative to a selected route. Id.
The Specification explains that the adjustable support is adapted to
adjust the angle of elevation and lateral orientation of the throwing
assembly. Spec. ,r 37. Hydraulic or pneumatic systems or electric motors
are used for such adjustment. Id. By selecting a route, the football throwing
machine is automatically adjusted. Id. ,r 42. The throwing system includes a
launch controller that adjusts the throwing machine. Id. ,r,r 33-35, 45. Thus,
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Application 14/192,940
the system includes a memory, a throwing mechanism, and a means to adjust
the throwing mechanism that includes a controller. 2
In our opinion, someone of ordinary skill in the field of automated
sports equipment would understand what is claimed when the claims are
read in light of the specification. Orthokinetics, 806 F.2d at 1576.
Consequently, we do not sustain the Examiner's Section 112 indefiniteness
rejection of claims 1 and 15.
Claims 5-14 and 16
These claims all depend directly from claim 1 or claim 15 and are
rejected under Section 112 solely based on their dependency. Claims App.;
Non-Final Action 2. In view of our decision above with respect to claims 1
and 15, we do not sustain the Section 112 rejection of claims 5-14 and 16.
Claims 20-24
The Examiner considers that claim 20 is indefinite in view of the
language regarding the direction that the display is facing. Non-Final
Action 2. We disagree. A person of ordinary skill in the art would
understand what it means to have the display face in a certain direction. 3
Thus, we do not sustain the Section 112(b) rejection of claims 20-24.
2 Very little detail is given in the Specification as to how the controller takes
data stored in memory and uses it to control adjustments to the throwing
mechanism. However, this is a problem, if at all, of the adequacy of the
written description and whether the invention is enabled. See 35 U.S.C.
§ 112(a). We express no opinion as to whether claims 1 and 15 pass muster
under Section 112(a).
3 The Examiner's Section 103 obviousness rejection of claim 20 correctly
construes and applies this term. Non-Final Action 9.
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Appeal2018-005928
Application 14/192,940
Unpatentability of Claims 1, 5---8, 11-16, and 20-24
over Cucjen and Coiner
Claims 1, 5---8, 11-16, 21, and 22
Appellant argues claims 1, 5-8, 11-16, 21, and 22 as a group. Appeal
Br. 14--16. We select claim 1 as representative. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Cucjen discloses the invention substantially
as claimed except for a memory that stores passing routes, for which the
Examiner relies on Coiner. Final Action 3---6. The Examiner concludes that
it would have been obvious to a person of ordinary skill in the art at the time
of the invention to include well-known football passing routes from Coiner
in the device of Cucjen to achieve the claimed invention. Id. at 6.
Appellant argues that Coiner fails to teach a memory that stores the
specific routes of a slant, draft, comer, post, and streak. Appeal Br. 14--15.
According to Appellant, Coiner merely discloses a broad genus of football
plays, but that it is not enough to establish that it inherently discloses the
species of slant, drag, comer, post, and streak. Id. at 15. Appellant,
furthermore, disputes that such football pass routes (slant, etc.) are well-
known and that the Examiner has failed to provide evidence that such routes
are well-known. Id.
In response, the Examiner recites passages from paragraphs 39, 53,
and 60 of Coiner and finds that Coiner discloses a football playbook with a
database that is related to stored football routes. Ans. 7-9. In response to
Appellant's argument that Coiner's routes are "generic," the Examiner
directs our attention to Figures 4C and 6A of Coiner and compares them
with football passing routes named "slant," "drag," "comer," "post," and
"streak" in Wikipedia. Id. at 9-12. The Examiner's Answer demonstrates,
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Application 14/192,940
by a preponderance of the evidence that: ( 1) Coiner discloses the claimed
routes; and (2) that such routes are well-known.
We are not apprised of error and, accordingly, sustain the Examiner's
unpatentability rejection of claims 1, 5-8, 11-16, 21, and 22.
Claims 20, 23, and 24
Appellant argues claims 20, 23, and 24 as a group. Appeal Br. 15-16.
We select claim 20 as representative. 37 C.F.R. § 4I.37(c)(l)(iv).
Appellant argues that Cucjen's display does not face in the same
direction that the football is propelled. Appeal Br. 15.
In response, the Examiner provides an annotated version of Figure 1
from Cucjen containing directional arrows indicating that the display
direction and the football travel direction are the same. Ans. 13. The
Examiner, furthermore, observes that:
Appellant reasoning that " ... the display as presently claimed
allows a player to receive a ball propelled by the device while
simultaneously viewing the football route on the display",
seems very unusual, dangerous, and the examiner is unsure how
such capability will benefit a player.
Id. at 14.
Appellant does not direct us to any language in the Specification that
explains what it means for the display to face in the same direction as the
travel of the football. See generally Spec. In the drawings, Figure 3 depicts
a video display screen disposed immediately beneath the ejection point of a
propelled football. Fig. 3. However, there is no accompanying description
or other teaching to indicate whether this configuration is understood to
mean that the travel path of the ball and the directional facing of the display
are the same or not. Indeed, Appellant's Figure 3, by analogy, looks like a
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Application 14/192,940
user would be staring down the barrel of a loaded gun when viewing the
display.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Trans logic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
Under a broad, but reasonable, interpretation of the claim language, an
operator, standing behind the throwing machine and looking downrange on
the football field in the direction that ball will be propelled and viewing the
display from such perspective, may consider that the display and the ball are
facing in the same direction. This is consistent with the plain meaning of
"facing" in a direction as used, for example, in describing that the driver's
seat of a vehicle is facing in the same direction as the vehicle is traveling.
Under the circumstances, we cannot say that the Examiner's interpretation is
unreasonable and Appellant has certainly not demonstrated otherwise based
on the record before us.
We are not apprised of Examiner error and, therefore, sustain the
unpatentability rejection of claims 20, 23, and 24.
Unpatentability of Claims 9 and 10
over Cucjen, Coiner, and Sciarillo
Appellant does not argue for the separate patentability of claims 9
and 10 apart from arguments presented with respect to claim 1, which we
have previously considered. We sustain the Examiner's rejection of
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Application 14/192,940
claims 9 and 10. See 37 C.F.R. § 4I.37(c)(l)(iv) (failure to separately argue
claims).
DECISION
The decision of the Examiner to reject claims 1, 5-16, and 20-24
under Section 112(b) is REVERSED.
The decision of the Examiner to reject claims 1, 5-16, and 20-24
under Section 103 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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