Ex Parte Schmidt

Patent Trial and Appeal Board

Jun 5, 2014

11619966 (P.T.A.B. Jun. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STEVE SCHMIDT
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Appeal 2012-003042
Application 11/619,966
Technology Center 3700
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Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
HYUN J. JUNG, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-50. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFRIM-IN-PART.

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Claimed Subject Matter
The claimed subject matter relates to “an automated system and
business process that collects scores and statistics from golfers and
distributes those results to other golfers within a defined tournament or
round.” Spec., para. [0015].
Claims 1, 4, 28, and 30 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the appealed subject matter.
1. A system for administrating user preferences,
capabilities, and subscription, comprising:
an automated server that collects information from a user
via email or text messaging communication, and calculates and
distributes data derived from said information to said user via
text communication;
so that collection and distribution of information and data
occurs in a near-real-time fashion via commonly available text
communication methods.

Rejections
The following Examiner’s rejections are before us for review:
I. claims 1-26, 28-32, and 35-49 under 35 U.S.C. § 103(a)
as unpatentable over Hameen-Anttila (US 2002/0049507 A1, pub.
Apr. 25, 2002) (“Hameen”);
II. claims 27 and 50 under 35 U.S.C. § 103(a) as
unpatentable over Hameen and Lohtia (US 2003/0023690 A1, pub.
Jan. 30, 2003); and
III. claims 33 and 34 under 35 U.S.C. § 103(a) as
unpatentable over Hameen and Austin (US 2003/0163541 A1, pub.
Aug. 28, 2003).
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OPINION
Rejections I and III
Claims 1-25 and 30-48
Independent claim 1 recites “an automated server that collects
information from a user via email or text messaging communication.” Br.,
Clms. App’x. The Examiner finds that Hameen does not particularly
disclose a server receiving data via text or email protocols. See Ans. 5. The
Examiner finds that Hameen discloses the server distributes data via Short
Message Service (SMS) text messaging (see Ans. 21; see also Hameen,
para. [0031]), and the Examiner relies on this teaching in Hameen to support
a conclusion that it would have been obvious to a person having ordinary
skill in the art to modify the server to receive data via text messaging. See
Ans. 5-6 and 21.
The Appellant contends that the Examiner’s conclusion is improper
because: “the Examiner offers no evidence in support of alleged knowledge
of ordinary skill in the art to supply the modification”; and “Hameen teaches
away from the proposed modifications” since it “does not teach or suggest
the input of data to an automated server using indirect forms of
communication, e.g. text messaging or email.” Br. 5-6.
We disagree with the Appellant’s contention that the Examiner offers
no evidence to support the obviousness conclusion. As noted above, the
Examiner finds that Hameen discloses the server distributes data via text
messaging. See Ans. 21-22; see also Hameen, para. [0031]. In addition, the
Examiner finds that Hameen suggests the use of various input devices. See
Ans. 21-22; see also Hameen, para. [0017] (stating “[v]arious types of input
devices may be used to input the information to the server”). Notably,
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Hameen’s Figure 1 depicts that server 10 collects information from a
Personal Digital Assistant (PDA) 14, a communicator 16, and a sport
specific device 18. See also Ans. 5 (citing Hameen, fig. 1). Hameen
discloses that communicator 16 “typically comprises a handheld wireless
device such as a mobile phone, a pager, a two-way radio, or a smart-phone.”
Hameen, para. [0025]. Moreover, as pointed out by the Examiner, Hameen
teaches that a communication protocol must conform to a particular input
device and output device. Ans. 20 (citing Hameen, para. [0027]). Thus, the
Examiner identifies sufficient evidence that SMS text communication was
well within the knowledge of one having ordinary skill in the art at the time
of the invention and that Hameen discloses a server receiving data from
devices capable of transmitting SMS text messages.
We also disagree with the Appellant’s contention that Hameen teaches
away from the proposed modification. A reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant. In re
Gurley, 27 F.3d 551 (Fed. Cir. 1994). The Appellant supports this
contention by citing paragraph [0027] of Hameen that discloses after a
connection between an input device and the server 10 is established, i.e.,
step 104, “server [10] then determines the type of mobile terminal being
used and prompts the mobile terminal for the sport data using a prompt
display that is appropriate for the mobile terminal type, step 106.” See Br. 6-
7. The Appellant asserts that this is evidence of a required “direct”
connection or communication, and as such, an “indirect” connection or
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communication, e.g., text messaging, would make Hameen’s system
inoperable. See id.
Assuming arguendo that the Appellant’s characterization of
Hameen’s communication protocol as “direct communication” is in contrast
to the Appellant’s claimed “indirect” communication, the Appellant has not
demonstrated disclosure in Hameen that discourages the use of a server to
collect information from a SMS text message. In contrast, the Examiner
correctly finds that Hameen teaches that a communication protocol must
conform to a particular input device and output device. Ans. 20 (citing
Hameen, para. [0027]). This teaching encourages rather than discourages
the identification of a suitable communication method, which may be an
SMS text messaging protocol, based on an input device’s capabilities.
Accordingly, the Examiner’s rejection includes adequate reasoning
with rational underpinning. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds [require] some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007)). We therefore sustain the Examiner’s rejection of
independent claim 1, and dependent claims 2 and 3, under 35 U.S.C.
§ 103(a), as unpatentable over Hameen.
The Appellant contends that the rejection of independent claims 4 and
30 is improper for similar reasons discussed above with respect to claim 1.
Br. 8 and 11. For similar reasons as those discussed above, the Appellant’s
contentions are unpersuasive. As such, we sustain the Examiner’s rejection
of claims 4 and 30, and dependent claims 5-25, 31, 32 and 35-48, under 35
U.S.C. § 103(a), as unpatentable over Hameen.
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Additionally, the Appellant does not separately argue the rejection of
claims 33 and 34, which depend directly and indirectly, respectively on
claim 30. As such, we also sustain the Examiner’s rejection of claims 33
and 34 under 35 U.S.C. § 103(a) as unpatentable over Hameen and Austin.

Claim 28
Independent claim 28 recites in part an automated server that “applies
said tournament and round information forward automatically to future
rounds . . . .” Br., Clms. App’x. The Appellant contends that the
Examiner’s rejection of claim 28 is improper for similar reasons discussed
above with respect to claim 1 and because “[w]hile Hameen discloses
historical and saved information that is provided to the user, Hameen, ¶¶
0016, 0024, and 0031, it does not disclose the application of this historical or
saved data to future rounds and distribution of this generated information to
the user.” Br. 9-10. The Examiner finds that in addition to Hameen’s server
saving historical data, it generates and distributes reports. Ans. 23 (citing
Hameen, para. [0031]); see id. at 16. The Appellant’s contention does not
explain error in the Examiner’s finding that these generated and distributed
reports constitute an application of tournament and round information
forwarded automatically to future rounds. As such, the Appellant’s
contention is unpersuasive.
Thus, we sustain the Examiner’s rejection of claim 28, under 35
U.S.C. § 103(a), as unpatentable over Hameen.

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Claims 26, 29, and 49
Claim 29 depends from claim 28 and recites “wherein said calculating
and distributing include generating a golf handicap based on data from a
current round and then automatically applying that new handicap to a future
round or tournament.” Br., Clms. App’x. (emphasis added). The Appellant
contends that the rejection of claim 29 is improper because “[w]hile Hameen
discloses historical and saved information that is provided to the user,
Hameen, ¶¶ 0016, 0024, and 0031, it does not disclose the application of this
historical or saved handicap data to future rounds and distribution of this
generated information.” Br. 10. The Examiner finds that Hameen’s server
saves historical data, and generates and distributes reports of compiled
historical data. Ans. 23 (citing Hameen, para. [0031]); see id. at 16.
However, we agree with the Appellant that Hameen does not disclose
generating and distributing a golf handicap as required by claim 29.
Thus, we do not sustain the Examiner’s rejection of claim 29, under
35 U.S.C. § 103(a), as unpatentable over Hameen.
The Appellant contends that the rejections of dependent claims 26 and
49 are also improper. See Br. 8 and 11. Claims 26 and 49 each similarly
require generation and distribution of a golf handicap by the server (see Br.
Clms. App’x), and the Examiner’s rejections of claims 26 and 49 relies upon
the same findings as the Examiner’s rejection of claim 29 (see Ans. 15 and
22). For similar reasons as those discussed above, the Appellant’s
contentions are persuasive.
Thus, we do not sustain the Examiner’s rejection of claims 26 and 49,
under 35 U.S.C. § 103(a), as unpatentable over Hameen.

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Rejection II
Claims 27 and 50
Claim 27 depends from claim 4 and recites in part “said server
provides real-time notifications of tee time, group pairings, hole start
number, and game type for tournaments and rounds.” Br., Clms. App’x.
The Appellant contends that the Examiner’s rejection is improper because
“[w]hile Lohtia discloses sending out notifications of available tee times to
the user, Lohtia, ¶ 0022, it does not disclose sending information of group
pairings, hole start number, and game type for tournaments and rounds.” Br.
9. The “Examiner points out that in the rejection of claims 27 and 50 that no
where did Examiner state that Hameen in view of Lohtia teaches sending out
of group pairings, hole start number, and game type for tournaments and
rounds.” Ans. 23. Rather, the Examiner finds that Lohtia discloses sending
notifications related to golf, such as tee times, and concludes based on this
teaching that sending other golf related notifications would have been
obvious to a person having ordinary skill in the art at the time of the
invention. See Ans. 17-18 and 23-24. The Appellant’s argument does not
explain why the Examiner’s conclusion is in error. Therefore, the
Appellant’s contention is unpersuasive.
The Appellant contends that the rejection of claim 50 is improper for
the similar reasons discussed above with respect to claim 27. Br. 12. For
similar reasons as those discussed above, the Appellant’s contentions are
unpersuasive.
Thus, we sustain the Examiner’s rejection of claims 27 and 50, under
35 U.S.C. § 103(a), as unpatentable over Hameen and Lohtia.

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DECISION
We AFFIRM the Examiner’s rejections of claims 1-25, 27, 28, 30-48,
and 50.
We REVERSE the Examiner’s rejections of claims 26, 29, and 49.
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)(1)(iv).

AFFIRMED-IN-PART

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