Ex Parte Smith

Patent Trial and Appeal Board

Jun 14, 2016

13076404 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/076,404 03/30/2011 Scott Smith
103460 7590 06/16/2016
Endurance Law Group, PLC
180 West Michigan A venue
Suite 801
JACKSON, MI 49201
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.
SSMITH-POOOl 3690
EXAMINER
HOW ARD, RY AND
ART UNIT PAPER NUMBER
2882
NOTIFICATION DATE DELIVERY MODE
06/16/2016 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):
eofficeaction@appcoll.com
Docketing@endurancelaw.com
j shack@endurancelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT SMITH 1
Appeal 2014-007415
Application 13/07 6,404
Technology Center 2800
Before BRADLEY R. GARRIS, MARK NAGUMO, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Scott Smith ("Smith") timely appeals under 35 U.S.C. § 134(a) from
the Final Rejection2 of claims 1-17, which are all of the pending claims.
We have jurisdiction. 35 U.S.C. § 6. We affirm.
1 The real party in interest is inventor Scott Smith (Appeal Brief,
filed 3 March 2014 ("Br."), 1.)
2 Office action mailed 2 October 2013 ("Final Rejection"; cited as "FR").
Appeal2014-007415
Application 13/076,404
A. Introduction 3
OPINION
The subject matter on appeal relates to a method of using a sport
projection system to facilitate athletic training. (Spec. 1 [0004].) The sport
projection system (id. at 2 [0013]) projects a two dimensional image
downwardly on a surface (id. at 1 [0004]) as shown in Figure 1, reproduced
below:
{Figure 1 shows a sports projection system 10}
In the embodiment shown in Fig. 1, sports projection system 10
includes a projector 12 positioned at a height H of twenty feet that projects
image 13 downwardly onto field 14. (Id. at 2 [0014]).
3 Application 13/076,404, Method of facilitating athletic training,
filed 30 March 2011, claiming the benefit of provisional application
61/318,889, filed 30 March 2010. We refer to the "' 404 Specification,"
which we cite as "Spec."
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Application 13/076,404
Image 13 projected on the surface displays a plurality of indicia,
including at least one position indicium corresponding to a participant of an
athletic activity and at least one reference indicium at least partially spaced
from the at least one position indicium. (Id. at 3 [0017].) The position
indicia indicate where a player should be or where a player should move.
(Id.) The reference indicia can be boundary lines of the field of play or
represent structures on the field of play, e.g., a hoop, a goal, or a net.
(Id. at 4 [0018].) The image 13 also corresponds in size to an actual size of
an athletic field 14. (Id. at 2 [0013].) According to the '404 Specification,
the term "field" refers to "any surface which a sport is played, including but
not limited to a field, a court, a diamond, a track and a rink." (Id.)
Claim 1 is representative of the dispositive issues and reads:
1. A method of facilitating athletic training comprising the
steps of:
projecting an image downwardly on a surface,
1 • .1 • ' 1 • 1· 1 1 1·. ,.. • 1· • wnerem me pr0Jec1ea image msprnys a pmra1ny or mmcrn
including
at least one position indicia being indicative of
where a player should be or
where a player should move,
appearing as two-dimensional without depth, and
corresponding to a participant of an athletic activity and
at least one reference indicia being of
boundary lines of a field of play or
representative of one or more structures on the field
of play in two dimensional space,
appearing as two-dimensional without depth, and
at least partially spaced from
the at least one position indicia,
the at least on[ e] position indicia and
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Appeal2014-007415
Application 13/076,404
the at least one reference indicia being projected
without regard to three-dimensional positions of
human participants of the training.
(Claims App., Br. 7; emphasis added.)
The Examiner maintains the following grounds of rejection: 4' 5
A. Claims 1, 3, 4, 6, 7, 10, 14, 16, and 17 stand rejected
under 35 U.S.C. § 103(a) in view of the combined teachings
of French 6 and Pinhanez 7.
Al. Claims 2, 5, 8, 9, and 15 stand rejected under
35 U.S.C. § 103 (a) in view of the combined teachings of
French, Pinhanez, and French '551 8.
A2. Claims 11-13 stand rejected under 35 U.S.C. § 103 (a)
in view of the combined teachings of French, Pinhanez and
Aufranc9.
4 Examiner's Answer mailed 1 May 2014 ("Ans.").
5 Because the '404 Application was filed prior to 16 March 2013, we refer to
the "pre-AIA" version of the applicable statutes.
6 Barry J. French and Kevin R. Ferguson, System and method for tracking
and assessing movement skills in multidimensional space, U.S. Patent No.
7,359,121 B2 (2008).
7 Claudio S. Pinhanez, Multiple-Surface display projector with interactive
input capability, U.S. Patent No. 6,431,711 Bl (2002).
8 Barry J. French and MaryEllen French, Interactive physical activity and
information-imparting system and method, U.S. Patent Application
Publication 2009/0300551 Al (3 December 2009), based on application
12/475,708, filed 1 June 2009.
9 Richard Aufranc et al., Dynamic Superposition system and method for
multiproject display, U.S. Patent Application Publication 2008/0143969 Al
(2008).
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Application 13/076,404
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Smith presents arguments for patentability based only on limitations
recited in claim 1. Smith states expressly that the remaining claims stand or
fall with claim 1. (Br, para. bridging 2-3.)
The Examiner finds (FR 2, 3) that French, Figure 3, reproduced
below,
:::.:::\
Fl:G, 3
{French Fig. 3 shows a player 36 and display 28 in a
"functional movement test" on a bounded field 12}
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Appeal2014-007415
Application 13/076,404
shows a player or participant 36 in defined physical space 12 10 at starting
position 52 in a "functional movement test." (French, col.13, 11. 4--12.)
In front of player 36, monitor or display 28 presents player icon 32
(a representation of player 36) in a virtual space 30, in this embodiment, a
computer generated scaled representation of defined physical space 12
(id. at col. 14, 11. 5-12). In French's words, "it will be appreciated that other
display devices, such as projection displays . .. may also be employed to
display a view of the virtual reality space." (Id. at col. 11, 11. 38--43;
emphasis added.)
In the functional movement skills test illustrated in Fig. 3 (said to be a
standard three-hop test (id. at col. 14, 11. 4--5)), player icon 32 centered in
display 28 interacts with a "protagonist icon" (id. at 11. 9-12) comprising
three hoops 50, indicating the sequence of hops that player 36 should
execute (id. at 11. 13-16.) At the end of the three hops, the player's
movements in the defined physical space 12 are assessed to provide
feedback to facilitate athletic training. (Id. at col. 14, 11. 19-30 and col. 4,
11. 50-55.)
The Examiner finds, and Smith does not dispute, that protagonist
icon 32 or corresponds to the recited position indicia of the displayed image.
(FR 2.) The Examiner further finds, and Smith does not dispute, that the
virtual space 30 corresponds to the recited reference indicia that is at least
partially spaced from the position indicia. (Id. at 3.)
1° French defines physical space 12 as "any available area, outside or inside,
that is sufficient in size to allow a player to undertake movement for
assessing and quantifying distance and time measurements relative to
player's conditioning, sport and ability." (French, col. 9, 11. 48-56.)
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Application 13/076,404
The Examiner finds French does not disclose downwardly projecting
the images on a surface (FR 3). However, the Examiner finds a similar
projection, downwardly, in Figure 1 of Pinhanez, shown below.
FIG.1
{Pinhanez Fig. 1 shows an interactive projection system}
Pinhanez, Figure 1, illustrates an interactive system in which
projector 120 projects images on multiple surfaces of room 100, including
wall 195, table 140, or floor 160. (Id. at col. 3, 11. 3-25.) In particular, the
Examiner finds that the image 150 projected on floor 160 corresponds to the
downward projection of an image on a surface. (FR 3.)
The Examiner finds that one of ordinary skill in the art would have
been motivated to "modify the display system of French ['] 121 to operate
with projector of Pinhanez because Pinhanez's projector would improve user
interactability in the display system." (Id.) The Examiner concludes that it
would have been obvious to combine the teachings of French and Pinhanez
and arrive at an athletic training method within the scope of claim 1. (Id.)
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Application 13/076,404
Smith states, "[t ]his proposed motivation is not traversed." (Br. 4,
1. 16.) Rather, Smith argues, the rational outcome of the combination of
French and Pinhanez would not have been the claimed downwardly-
projected system. (Id. at 4, 11. 16 to 5, 11. 3.) More particularly, Smith
argues that "interactability provided by Pinhanez is not dependent on the
orientation of the projected image" and "the wall-projected system of
Pinhanez need not be changed to a project downwardly in order to enjoy the
enhanced interactability provided by Pinhanez." (Id. at 4, 1. 17 to 5, 1. 1;
emphasis added.) According to Smith, the interactability between the user
and the projector depends on a camera as shown in Figure 9 of Pinhanez.
(Br. 4, 11. 6-15.) Therefore, Smith asserts, the rational result of French and
Pinhanez, without the benefit of hindsight, would have been "a wall-
projected system with a camera monitoring the user." (Br. 5, 11. 2-3.).
These arguments are not persuasive of harmful error in the appealed
rejection. The existence of other possible "results" arising from the prior art
does not make any particular result unreasonable or otherwise non-obvious.
Cf In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) ("just because better
alternatives exist in the prior art does not mean that an inferior combination
is inapt for obviousness purposes"); Merck & Co. Inc. v. Biocraft
Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("in a section 103
inquiry, the fact that a specific [embodiment] is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered." (internal quote and citation omitted)).
Moreover, as Smith recognizes, Pinhanez teaches methods of
enhancing interactivity between a user and a display system. This enhanced
interactivity supports the Examiner's holding that it would have been
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Application 13/076,404
obvious to enhance the interactivity of a training system as taught by French
by using techniques taught by Pinhanez, including downward-projection of
position indicia such as hoops indicating where the participant should move.
In particular, Smith does not dispute that Pinhanez's projector is useful for
projecting images, such as the virtual reality images produced by French
system, downwardly onto the ground or onto a wall.
Smith also contends that Pinhanez's downwardly-projected system
teaches away from a core attribute of the French system. (Br. 5, 11. 4---6.)
According to Smith, "French ['] 121 emphasizes using video images to assist
training in a three-dimensional environment." (Id. at 5, 11. 6-10, citing
French, Abstract, Summary, col. 10, lines 20-23 [using sensors to report
positions of a reflector or beacon attached to a belt which is worn by a
player], col. 16, lines 2-7 [replacing "the repetitive drudgery of conventional
stationary exercise equipment" with "the excitement of three-dimensional
movement in interactive response to virtual reality"], and col. 30, lines 62-
67 [active measurement of cutting, i.e., an abrupt change in position].)
Regarding the use of video images in training, French teaches that "it
will be appreciated that other display devices, such as projection displays ...
may also be employed to display a view of the virtual reality space."
(French, col. 11, 11. 38--43.) Thus, it appears that French is not limited to
using a wall projected display but is open to using other types of display
devices, including downward projection displays as taught by Pinhanez in an
artificially enhanced three-dimensional environment. The examples cited by
Smith of determining participant positions and motions appear to be
independent of the projection of video images, and thus not particularly
relevant to the obviousness of the combination proposed in the rejection.
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Application 13/076,404
On the present record, we conclude that Smith has not demonstrated
harmful error in the appealed rejections.
In the Reply Brief 11 , for the first time, Smith argues specifically that
the Examiner failed to explain adequately the nature of improvement in user
interactability afforded by Pinhanez in the Final Rejection. (Reply 2--4.)
We decline to consider these arguments, good cause not having been shown
why they were not raised in the principal Brief. 12 Indeed, in the principal
Brief, Smith expressly did not dispute the Examiner's motivation analysis.
(Br. 4, 11. 16.)
C. Order
It is ORDERED that the rejection of claims 1-17 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).
AFFIRMED
11 Reply Brief filed 25 June 2014 ("Reply").
12 In any event, Smith's emphasis on "'hyperlinks,' such as the words 'YES'
and 'NO"' (Reply 3, 2d full para.) appears to read Pinhanez more narrowly
than warranted. Pinhanez describes that "if a person places a hand over the
projected image and near an interactive item ... the present invention can
activate the interactive item." (Pinhanez, col. 2, 11. 21-23.) Hopping into a
hoop (as disclosed by French), thereby activating some response (following
the teachings of Pinhanez) seems to be the sort of improvement in user-
training system interaction suggested by the Examiner. Smith's arguments
do not persuade us otherwise.
10