MAX OUT GOLF, LLC et al.

Patent Trials and Appeals Board

Apr 30, 2020

90013618 - (D) (P.T.A.B. Apr. 30, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/013,618 10/27/2015 8696497 116540-110RX2 4898
27189 7590 04/30/2020
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
EXAMINER
GELLNER, JEFFREY L
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
04/30/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MAX OUT GOLF LLC
Patent Owner and Appellant
____________

Appeal 2020-001679
Reexamination Control 90/013,618
Patent 8,696,497 B2
Technology Center 3900
____________

BEFORE JOSIAH C. COCKS, BRETT C. MARTIN, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(b) and 306, Max Out Golf LLC
(Appellant)1 appeals from the final rejection of claims 9, 10, 14–32, and 35–
39.2 We have jurisdiction under 35 U.S.C. § 6(b).

1 Appellant identifies the real party in interest as Max Out Golf LLC.
Appeal Br. 1.
2 As a result of IPR2016-00785, claims 1–8 were cancelled. See Ans. 3.
The Examiner indicates that after the rejections under 35 U.S.C. § 112 are
overcome, based on the proposed claim amendments of September 28, 2016
being entered, claims 10–13 and 33–38 are allowable. Final Act. 15; Ans. 5.
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We REVERSE3 and enter NEW GROUNDS OF REJECTION in
accordance with 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The claims are directed to a system for fitting a golfer with golf
equipment. Claims 1 and 9, reproduced below, are illustrative of the
claimed subject matter:
1. A system for fitting a golfer with golf equipment
comprising:
a launch monitor;
a launch module running on a processor, the launch
module configured to
receive launch data from the launch monitor related
to how the golfer launches a golf ball using a golf club, the
golf club comprising a club head, the club head
comprising a loft, center of gravity, an orientation, and a
weight distribution;
determine velocity information, spin information,
and launch angle information imparted to the golf ball
based on the launch data;
extrapolate a distance and flight path based on the
velocity, spin, and launch angle information; and
an optimization engine running on the processor, the
optimization engine configured to determine optimized
information for the spin and launch angle to achieve at least one
optimal ball flight condition, based on the determined velocity,
spin, and launch angle information, the extrapolated distance,
and a maximum ceiling height for golf ball trajectory that is not
based on how the golfer hits the golf ball.

3 As noted below, we do not reach some of the Examiner’s rejections. We
reverse all of the rejections reached in this decision.
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9. The system of claim 1, wherein the optimization engine is
configured to determine optimized information for spin and
launch angle by matching the velocity with a combination of
launch angle and spin rate using non-linear relationships.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Gobush US 6,241,622 B1 June 5, 2001
Ralph Maltby, Golf Club Design, Fitting, Alteration & Repair, (Ralph
Maltby Enterprises, Inc., 4th ed., 1995) (“Maltby”)
Herman Erlichson, Maximum projectile range with drag and lift, with
particular application to golf, 51 Am. J. Phys, 357–361, Apr. 1983, at
357 (“Erlichson”)
REJECTIONS
Claims 9, 10, 20, 21, 37, and 38 are rejected under 35 U.S.C. § 112(a)
as failing to comply with the written description requirement.4
Claims 9 and 35–39 are rejected under 35 U.S.C. § 112(b) as being
indefinite.5

4 In the Advisory Action, the Examiner indicates that Patent Owner has
overcome the rejection of claims 10, 20, 21, and 37–39 under 35 U.S.C.
§ 112(a). Adv. Act. 3. With respect to claims 10, 20, 21, 37, and 38, the
Examiner’s Answer indicates that “when the proposed amendment of 28
September 2016 is entered these rejections would be withdrawn.” Ans. 5.
Accordingly, those rejections appear to be pending. The Examiner also
indicates in the Answer that “the § 112, written description, rejection for
claim 39 is withdrawn.” Ans. 3.
5 The Examiner indicates that Patent Owner has overcome the rejection of
claims 35–38 under 35 U.S.C. § 112(b). Adv. Act. 3. The Examiner’s
Answer indicates that “[f]or claims 35–39, as stated in the Advisory Action
mailed 17 October 2016 when the proposed amendment of 28 September
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Claims 9, 30, and 31 are rejected under 35 U.S.C. § 103 as being
unpatentable over Gobush and Erlichson.
Claims 14–29, 32, and 39 are rejected under 35 U.S.C. § 103 as being
unpatentable over Gobush, Erlichson, and Maltby.
OPINION
Status of Claims
We understand the Appeal Brief’s Claims Appendix to represent the
pending claims, which appears to correspond to the amendment submitted
on June 17, 2016 by Appellant. A subsequent amendment was submitted by
Appellant on September 28, 2016, which the file history identifies as “not
entered.” An after-final amendment was then submitted by Appellant on
December 28, 2016. The Answer explains that “the after-final amendment
received 28 December 2016 was considered in the Advisory action mailed
22 March 2017 with the amendment not entered.” Ans. 3.
Accordingly, each of the claims before us ultimately depends from
claim 9.
Claim Construction / New Ground of Rejection
The claims each require an “optimization engine configured to
determine optimized information for the spin and launch angle.” Claim 1
requires that “optimization engine” to “achieve at least one optimal ball
flight condition, based on the determined velocity, spin, and launch angle
information, the extrapolated distance, and a maximum ceiling height for

2016 is entered these rejections would be withdrawn.” Ans. 7. Accordingly,
the rejection of claims 35–39 appear to be pending.
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golf ball trajectory that is not based on how the golfer hits the golf ball.”
Claim 9, which depends from claim 1, further requires that the “optimization
engine is configured to determine optimized information for spin and launch
angle by matching the velocity with a combination of launch angle and spin
rate using non-linear relationships.”
“The first step in both [anticipation and obviousness] analyses is a
proper construction of the claims.” Medichem, S.A. v. Rolabo, S.L., 353
F.3d 928, 933 (Fed. Cir. 2003). Based on the record before us, we determine
that “optimization engine” is a means-plus-function term, subject to 35
U.S.C. § 112(f).
Section 112(f) states:
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.
The standard for determining whether a limitation is a means-plus-function
term is not based merely on the presence or absence of the word “means,”
but, rather, is based on “whether the words of the claim are understood by
persons of ordinary skill in the art to have a sufficiently definite meaning as
the name for structure.” Williamson v. Citrix Online, LLC, 792 F.3d 1339,
1349 (Fed. Cir. 2015) (internal citation omitted). Although there is a
presumption that a limitation lacking the word “means” is not subject to
§ 112(f), that presumption is overcome when it is “demonstrate[d] that the
claim term fails to ‘recite sufficiently definite structure’ or else recites
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‘function without reciting sufficient structure for performing that function.’”
Id.
Claims 1 and 9 simply recite an “optimization engine” that
“determine[s] optimized information.” We have no reason to believe that
the term “optimization engine” is understood by persons of ordinary skill in
the art as the name for any particular structure. In fact, the Specification
does not refer to the term “optimization engine.” A dictionary definition of
“engine,” consistent with the context used in the claims, is “a software
system underlying a class of computer programs.” The Chambers
Dictionary, C.M. Schwarz, Chambers Harrap, 13th edition
(2015) (https://search.credoreference.com/content/entry/chambdict/engine/
0?institutionId=743) (last accessed Apr. 14, 2020). Based on this definition
of the term “engine,” we determine that an “optimization engine” is a
computer program that optimizes a given set of parameters.
This determination is consistent with Appellant’s Specification.
Although Appellant’s Specification, does not use the particular term
“optimization engine,” it discusses use of “modules.” With respect to those
“modules,” the Specification explains, for example, that “shaft module 408,
launch module 410, and swing module 412 can comprise the requisite
hardware, software, or combination thereof required to implement the
functions described.” Spec. 10:61–64. “[E]ach module can comprise part of
a software program loaded onto a single computer system.” Id. at 10:67–
11:1. The Specification notes that “some type of processing system is
always at the heart of any computer system,” and provides the example of a
generic “processor 1410 configured to control the operation of computer
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system 1400, memory 1404, storage 1406, a Input/Output (I/O) interfaces
1408, a display output 1412, a user interface 1414, and a bus 1402
configured to interface the various components comprising computer system
1400.” Id. at 13:37–38, 43–48.
“‘Module’ is a well-known nonce word that can operate as a substitute
for ‘means.’” Williamson, 792 F.3d at 1350. This is because “[t]he word
‘module’ does not provide any indication of structure because it sets forth
the same black box recitation of structure . . . as if the term ‘means’ had been
used.” Id. The “engine” recited in the claims is like the “module” described
in the Specification and in Williamson, meaning that it, too, does not provide
any indication of structure. Nor does the prefix “optimization” impart
structure, because it, at best, describes the engine’s intended functionality.
For these reasons, we determine that § 112(f) applies to the recited
“optimization engine.”
“[W]e next determine whether the specification discloses sufficient
structure that corresponds to the claimed function.” Williamson, 792 F.3d at
1351. “If the patentee fails to disclose adequate corresponding structure, the
claim is indefinite.” Id. at 1352 (citation omitted). For computer-related
inventions so construed, “the specification [must] disclose an algorithm for
performing the claimed function,” which “may be expressed as a
mathematical formula, in prose, or as a flow chart, or in any other manner
that provides sufficient structure.” Id. (citations omitted). “Where there are
multiple claimed functions . . . the patentee must disclose adequate
corresponding structure to perform all of the claimed functions.” Id. at
1351–52 (citation omitted).
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Here, Appellant must disclose adequate structure for the function
recited in claim 9 in order for that claim to be definite.6 The function recited
in claim 9 is “determin[ing] optimized information for spin and launch angle
by matching the velocity with a combination of launch angle and spin rate
using non-linear relationships.” As the Examiner notes with respect to claim
9, “the [S]pecification [is] silent as to any relationship being ‘non-linear,’ or
in fact linear.” Final Act. 3. In response to the Examiner’s rejection of
claim 9 under § 112(a), “Patent Owner acknowledges that the [S]pecification
does not explicitly use the term ‘non-linear relationship,’” and, instead,
“submits that one of skill in the art at the time of the invention would clearly
understand the systems and methods described in the present patent as
including and using non-linear relationships between the launch angle,
velocity, and spin rate.” Appeal Br. 8. “Patent Owner . . . submits that the
present patent clearly suggest[s] that some ‘non-linear relationship’ must be
used.” Id. at 8–9.
Appellant identifies a number of passages from the Specification as
purportedly providing written description support for the function recited in
claim 9. See Appeal Br. 8–13. None of those passages, however, provide
sufficient disclosure of an algorithm for performing the function recited in
claim 9. Rather, those passages, for example, purportedly “point out . . . the
problem with . . . linear techniques” (id. at 8), “suggest that some ‘non-linear
relationship’ must be used” (id. at 8–9), and “suggest[] that simple linear

6 Although this decision determines that “optimization engine” is subject to
§ 112(f), in both claim 1 and claim 9, we make no determination as to
whether the Specification discloses adequate structure for the functions
recited in claim 1.
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relationships . . . will not suffice” (id. at 9). Our review of the Specification
does not reveal further disclosure of an algorithm sufficient for performing
the function recited in claim 9.
Because the Specification fails to disclose any structure corresponding
to the “optimization engine” function of “determin[ing] optimized
information for spin and launch angle by matching the velocity with a
combination of launch angle and spin rate using non-linear relationships,”
claim 9 is indefinite under 35 U.S.C. § 112(b). As noted above, each of the
remaining claims (claims 10–39) ultimately depends from claim 9.
Accordingly, we enter a new ground of rejection for claims 9–39 as
indefinite under 35 U.S.C. § 112(b).
Written Description / Indefiniteness
The Examiner’s rejections under 35 U.S.C. §§ 112(a) and (b) do not
apply the proper construction of the “optimization engine” recited in claim
9. Because we provide a new ground of rejection for all pending claims as
indefinite under 35 U.S.C. § 112(b), we do not reach the Examiner’s
rejections under §§ 112(a) and (b).7
Obviousness
Because we determine the claims to be indefinite, and addressing the
“optimization engine” would require speculation on our part, we do not
reach the merits of the obviousness rejections. Instead, we reverse those

7 As noted above, the only issue remaining in the Examiner’s §§ 112(a) and
(b) rejections pertains to claim 9, as there appears to be an agreement
reached between the Examiner and Appellant regarding amendments to the
other claims at issue in those rejections.
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rejections pro forma. See In re Steele, 305 F.2d 859, 862 (CCPA 1962)
(holding that the Board erred in affirming a rejection of indefinite claims
under 35 U.S.C. § 103(a), because the rejection was based on speculative
assumptions as to the meaning of the claims).
CONCLUSION
The Examiner’s rejections under 35 U.S.C. § 103 are reversed, and
the rejections under 35 U.S.C. §§ 112(a) and (b) are not reached. We enter a
new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
9, 30, 31 103 Gobush, Erlichson 9, 30, 31
14–29,
32, 39
103 Gobush, Erlichson,
Maltby
14–29,
32, 39

9, 10, 20,
21, 35,
37–38
112(a) Written
Description

9–39 112(b) Indefiniteness 9–39
Overall
Outcome
9–39
REQUESTS FOR EXTENSIONS OF TIME
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
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options with respect to the new grounds of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
REVERSED; 37 C.F.R. § 41.50(b)

gvw

For PATENT OWNER:

PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B Street, Suite 2200
San Diego, CA 92101

For THIRD PARTY REQUESTER:

TECHLAW LLP
650 Castro Street, Suite 120-378
Mountain View, CA 94041