Ex Parte Maschke

Board of Patent Appeals and Interferences

Sep 13, 2010

11408863 (B.P.A.I. Sep. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL MASCHKE
____________________

Appeal 2009-009321
Application 11/408,863
Technology Center 3700
____________________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-009321
Application 11/408,863

STATEMENT OF THE CASE
Michael Maschke (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 17-26 and 32-38. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
We AFFIRM-IN-PART.

THE INVENTION
Appellants’ claimed invention is directed to a training and/or therapy
device, which provides device adjustment and data input in combination
with a computer (Spec. 2:33-Spec. 3: 2 and Spec. 3:18-Spec. 4:10).
Claim 17, reproduced below, is representative of the subject matter on
appeal.
17. A training and therapy system for a human or
animal body, comprising:
a plurality of training or therapy devices on which
physical work is generated using muscular force, the
physical work dependent on an adjustable resistance
apparatuses;
a computer unit for networking the training or
therapy devices;
an identification element;
a plurality of reader devices for reading the
identification element of a patient under training or
therapy, each training or therapy devices and the
computer unit configured to be contacted via the
respective reader device;
a data memory connected to the computer unit for
storing data related to a plurality of patients and to a
plurality of training or therapy schedules of the plurality
of patients; and
a software program implemented on the computer
unit, the software program configured to:
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store in the computer unit a training or therapy
schedule of the patient under training or therapy;
read the identification element by at least one of
the reader devices for a registration of the patient under
training or therapy when starting the training or therapy
starts;
retrieve the stored training or therapy schedule
from the computer based upon the registration;
transmit training parameters to the plurality of
training or therapy devices based upon the retrieved
training or therapy schedule;
automatically adjust the training or therapy
devices and the resistance apparatuses based upon the
transmitted training parameters;
enable starting workout at a first of the training or
therapy devices, by the patient under training or
therapy;
enable proceeding to a second of the training or
therapy devices upon completing an exercise on the first
training or therapy device;
activate the second training or therapy device by
reading the identification element by the respective
reader device;
record at least a number and a duration of all
exercises performed on any training or therapy device
by the patient under training or therapy;
determine training or therapy progress from the
recorded number and duration of the exercises;
save the determined training or therapy progress
in the retrieved training or therapy schedule; and
determine an updated training or therapy schedule
for the patient under training or therapy using the
training or therapy progress,
wherein the identification element includes a writable
memory for storing the training schedule of the patient
under training or therapy or for storing energy values
generated by the patient under training or therapy.

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Application 11/408,863

THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 32 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
2. Claims 17-21 and 24-26 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Abelbeck (US 6,656,091 B1, issued Dec. 2,
2003).
3. Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Abelbeck in view of Black (US 2003/0181290 A1,
published Sep. 25, 2003).
4. Claims 32 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Abelbeck in view of Pandian (US 2005/0130741 A1, published
Jun. 16, 2005).
5. Claims 33 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Abelbeck in view of Shea (US 7,056,265 B1, issued Jun. 6,
2006).
6. Claims 34-38 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Abelbeck in view of Kondrat (US 2006/0217232
A1, published Sep. 28, 2006).

ISSUES
The issues before us are: (1) whether review of an objection to the
specification is a matter within the jurisdiction of the Board (Reply Br. 2),
(2) whether the Examiner erred in concluding that claim 32 is indefinite for
failing to particularly point out and distinctly claim Appellant’s invention
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(Reply Br. 2), and (3) whether the Examiner erred in finding that Abelbeck
describes a single element, that is, an identification element, which performs
two functions, that is, to register a patient and to store the training schedule
of the patient, as called for in independent claim 17 (Reply Br. 3, App. Br.
10-11).

ANALYSIS
Specification Objection
Appellant seeks review of the Examiner’s objection (Ans. 3-4) to the
Specification regarding the use of the trademark BLUETOOTH™ (Reply
Br. 2). However, this matter is reviewable by petition under 37 C.F.R.
§ 1.181 (see Manual of Patent Examining Procedure (MPEP) §§ 1002 and
1201) and is thus not within the jurisdiction of the Board. In re Mindick,
371 F.2d 892, 894 (CCPA 1967).

35 U.S.C. § 112 Rejection
Appellant contends that claim 32 does not lack antecedent basis for
the term “the usable energy” because “usable energy” is inherently present
in the system defined in claim 17 from which claim 32 depends (Reply Br.
2). In support thereof, Appellant states that devices on which physical work
is performed inherently provide usable energy as expressly indicated in
claim 17 which calls “for storing energy values generated by the patient
under training or therapy” (Reply Br. 2).
We agree with the Examiner (Ans. 4) that there is no antecedent basis
in claim 32 for the term “the usable energy.” While claim 32 (by virtue of
its dependence from claim 17) does call for “storing energy values,” it is
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unclear whether the claimed “energy values” are usable or unusable in
context of claim 32, or whether the claimed “energy values” do in fact refer
to “the usable energy” called for in claim 32.
We affirm the rejection of claim 32 under 35 U.S.C. § 112.

Prior Art Rejections
Claims 17-21 and 24-26
Appellant contends that independent claim 17 calls for a single
element, an identification element, that performs two functions, that is, “an
identification element, which (i) is used for a registration of the patient . . .
when starting the training and which also (ii) stores the training schedule of
the patient under training or therapy . . .” (Reply Br. 3, App. Br. 10).
Appellant contends that while claim 17 calls for a single identification
element that performs the two functions, Abelbeck describes two elements,
wherein each element performs one of the claimed functions (Reply Br. 3,
App. Br. 11).
The Examiner found that Abelbeck describes all of the elements
called for in claim 17. In particular, the Examiner found that Abelbeck
describes an identification element (col. 6, ll. 15-27), a software program
that reads the identification element to register the patient, wherein the
identification element includes a writable memory (col. 9, lines 23-28) (Ans.
4-6).
The Examiner proffers the following rationale (Ans. 11) in support of
the anticipation rejection:
The Examiner merely points out that these two elements can be
used together when operating the Abelbeck device. If the
Examiner were to make such a modification, it would fall under
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the criteria of obviousness. Further, if the identification
element and the writable memory were “clearly different and
non-obvious” then Abelbeck would not have disclosed a bar
code reader and computer disk as parts of their system, per se.
The presence of both elements in the prior art makes the
anticipatory rejection proper.
Claim 17 calls for, inter alia, an identification element which is read
by a software program for registration of a patient, and which has a writable
memory for storing the training schedule of the patient. Thus, claim 17
describes a single element for performing two functions.
To establish anticipation, “all of the elements and limitations of the
claim must be shown in a single prior reference, arranged as in the claim.”
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001). “[A]bsence from the reference of any claimed element negates
anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986).
Abelbeck describes multiple ways to identify a user, that is, (1) by a
personal identification number (PIN) that the user inputs into the system, or
(2), in the alternative, by “[a] bar code reader on the machine and a bar code
label carried by the user, a ultrasonic or inferred received in the machine and
a transmitter carried by the user, or any other number of variations that are
common to the art could be used to accomplish this step” (col. 6, ll. 15-25).
Abelbeck further describes multiple ways to store the user’s file, that
is, (1) by a central processor 68 (col. 9, ll. 8-22), or (2) on any device that is
capable of electronic data storage, such as a magnetic strip or computer disk
(col. 9. ll. 23-28).
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Thus, Abelbeck describes two elements, not a single element as called
for in claim 17 for performing two functions, that is, for registration of a
patient and for storing the training schedule of the patient.
Thus, we are constrained to reverse the rejection of claim 17 and
claims 18-21 and 24-26, which depend from claim 17.
Claims 22, 23 and 32-38
The Examiner has not relied on Black, Pandian, Shea or Kondrat for
any teaching that would remedy the deficiency in Abelbeck (Ans. 7-9).
Thus, we are constrained to reverse the rejection of dependent claims 22, 23
and 32-38.

CONCLUSIONS
Review of an objection to the specification is not a matter within the
jurisdiction of the Board.
The Examiner has not erred in concluding that claim 32 is indefinite
for failing to particularly point out and distinctly claim Appellant’s
invention.
The Examiner has erred in finding that Abelbeck describes a single
element, that is, an identification element, which performs two functions,
that is, to register a patient and to store the training schedule of the patient,
as called for in independent claim 17.

DECISION
The decision of the Examiner to reject claim 32 under 35 U.S.C. § 112
is affirmed.
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The decision of the Examiner to reject claims 17-26 and 32-38 over
the prior art of record is reversed.
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) (2007).

AFFIRMED-IN-PART

Klh

SIEMENS CORPORATION
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