Ex Parte 6716139 et al

Patent Trial and Appeal Board

May 20, 2013

95001198 (P.T.A.B. May. 20, 2013)

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.
95/001,198 06/29/2009 6716139 2483.090REX0 1416
22909 7590 05/21/2013
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
05/21/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

ADIDAS AG
Requester

v.

NIKE, INC.
Patent Owner and Appellant
____________

Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1
Technology Center 3900
____________

Before DANIEL S. SONG, RAE LYNN P. GUEST and
JOSIAH C. COCKS, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

2
Patent Owner Nike, Inc.1 (“Patent Owner”) appeals under 35 U.S.C.
§§ 134(b) and 315(a) the Examiner’s decision to reject claims 1-3, 5-14, and
16-75 based on various grounds discussed infra. PO App. Br. 7; Right of
Appeal Notice, mailed December 22, 2010 (hereinafter “RAN.”) at 1.
Third-Party Requester adidas AG2 (hereinafter “Requester”) cross-
appeals under 35 U.S.C. §§ 134(c) and 315(b) the Examiner’s decision not
to reject claims 1-3, 5-14, and 16-75 under 35 U.S.C. § 112, first and second
paragraph. Req. App. Br. 10-11; RAN 13-14 and 18-19.
We have jurisdiction under 35 U.S.C. §§ 6, 134 and 315.
We AFFIRM the Examiner’s rejection of claims 1-3, 5-14, and 16-75
and do not enter any additional new ground of rejections.

STATEMENT OF THE CASE
United States Patent 6,716,139 B1 (hereinafter the “’139 Patent”),
which is the subject of the current inter partes reexamination, issued to Boris
Hosseinzadeh-Dolkhani, et al. on April 6, 2004.
The ’139 Patent relates to a portable training device, a training
system, and a training method. Col. 1, ll. 33-35. Claim 1, which is
illustrative of the appealed subject matter, reads as follows (with underlining
showing added text and brackets showing deleted text relative to the original
patent claims):

1 See Patent Owner’s Appeal Brief, filed May 23, 2011 (hereinafter “PO
App. Br.”) at 5.

2 See Requester’s Cross-Appeal Brief, filed March 28, 2011 (hereinafter
“Req. App. Br.”) at 4.
Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

3
1. Method of optimizing a training comprising the steps
of:
providing on a computer, prior to the training, an
individual training program comprising a music compilation for
a particular training desire;
transmitting the training program to a portable sound
playback device;
detecting parameters inherent to [the] a body of a user
during [a] the training;
converting data corresponding to the detected parameters
into verbal training information for the user; and
outputting music and said verbal training information to
the user by [a] the portable sound playback device.
(Claims App’x., Req. App. Br. 22)

Adopted and Non-adopted Rejections
APPEAL
Patent Owner contests the Examiner’s decision to reject the claims as
follows:
I. Claims 1-3, 5-14, 16-18, 21-29, 30-36, 38-58, 60-70, and
72-75 under 35 U.S.C. § 103(a) as obvious over Root3 in view of
Curtin4 (Ground 1, RAN 2-4);
II. Claims 1-3, 5-14, 16-18, 21-29, 30-36, 38-58, 60-70, and
72-75 under 35 U.S.C. § 103(a) as obvious over Root in view of
Curtin and Smith5 (Ground 2, RAN 4-5);

3 WO 99/49279, published September 30, 1999 to Root, et al.
4 US 5,986,200, issued November 16, 1999 to Steven DeArmond Curtin.
5 Kathy Smith, “Fitness; Music Makes the Moves—and Movies,” Los
Angeles Times, Home Edition, Health Section 5 (March 23, 1998).
Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

4
III. Claims 1, 2, 5-8, 10, 12, 16, 21, 23-26, 28, 31-34, 36, 41, 43-
46, 48, 51, 53-56, 58, 63, 65-68, 70 and 75 under 35 U.S.C. § 103(a)
as obvious over McHugh6 in view of Curtin (Ground 3, RAN 6-7);
IV. Claims 1, 2, 5-8, 10, 12, 16, 21, 23-26, 28, 31-34, 36, 41, 43-
46, 48, 51, 53-56, 58, 63, 65-68, 70 and 75 under 35 U.S.C. § 103(a)
as obvious over McHugh in view of Curtin and Smith (Ground 4,
RAN 8);
V. Claims 18-20, 37, 49, 59, 71 under 35 U.S.C. § 103(a) as
obvious over Root in view of Curtin and either Dickson7 or Shapira8
(Ground 5, RAN 8-10);
VI. Claims 18-20, 37, 49, 59, 71 under 35 U.S.C. § 103(a) as
obvious over Root in view of Curtin, either Dickson or Shapira, and
Smith (Ground 6, RAN 10);
VII. Claims 35, 36, 41, 47, 48, 51, 57, 58, 63, 69, 70, and 75
under 35 U.S.C. § 103(a) as obvious over Root in view of Curtin and
either Farr9 or Knight10 (Ground 7, RAN 10-11);
VIII. Claims 35, 36, 41, 47, 48, 51, 57, 58, 63, 69, 70, and 75
under 35 U.S.C. § 103(a) as obvious over Root in view of Curtin,
Smith, and either Farr or Knight (Ground 8, RAN 11-12);
IX. Claims 36, 41, 48, 51, 58, 63, 70, and 75 under 35 U.S.C. §
103(a) as obvious over McHugh in view of Curtin and either Farr or
Knight (Ground 9, RAN 12);
X. Claims 36, 41, 48, 51, 58, 63, 70, and 75 under 35 U.S.C. §
103(a) as obvious over McHugh in view of Curtin, Smith and either
Farr or Knight (Ground 10, RAN 12-13);
XI. Claims 1-3, 6-14, 17, 18, 21-36, 38-58, 60-70, and 72-75
under 35 U.S.C. § 103(a) as obvious over Root in view of Van
Ryzin11 (Ground 13, RAN 15);

6 US 6,230,047 B1, issued May 8, 2001 to David McHugh.
7 US 4,173,016, issued October 30, 1979 to Carlisle H. Dickson.
8 US 5,086,394, issued February 4, 1992 to Shmuel Shapira.
9 Sara Farr, “Net Sounds,” Dayton Daily News, City Edition, Ohio Tech
Section 1G (December 12, 1998).
10 Jerry Knight, “EMI Plans Custom CDs Via the Web,” The Washington
Post, Financial Section E1 (June 11, 1999).
11 US 6,446,080 B1, issued September 3, 2002 to Van Ryzin et al.
Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

5
XII. Claims 1-3, 6-14, 17, 18, 21-36, 38-58, 60-70, and 72-75
under 35 U.S.C. § 103(a) as obvious over Root in view of Van Ryzin
and Smith (Ground 14, RAN 15);
XIII. Claims 35, 36, 41, 47, 48, 51, 57, 58, 63, 69, 70, and 75
under 35 U.S.C. § 103(a) as obvious over Root in view of Van Ryzin
and either Farr or Knight (Ground 15, RAN 15);
XIV. Claims 35, 36, 41, 47, 48, 51, 57, 58, 63, 69, 70, and 75
under 35 U.S.C. § 103(a) as obvious over Root in view of Van Ryzin,
Smith, and either Farr or Knight (Ground 16, RAN 16);
XV. Claims 1-3, 6-14, 17, 18, 21-36, 38-58, 60-70, and 72-75
under 35 U.S.C. § 103(a) as obvious over Root in view of Rio12
(Ground 17, RAN 16);
XVI. Claims 1-3, 6-14, 17, 18, 21-36, 38-58, 60-70, and 72-75
under 35 U.S.C. § 103(a) as obvious over Root in view of Rio and
Smith (Ground 18, RAN 16);
XVII. Claims 35, 36, 41, 47, 48, 51, 57, 58, 63, 69, 70, and 75
under 35 U.S.C. § 103(a) as obvious over Root in view of Rio and
either Farr or Knight (Ground 19, RAN 17);
XVIII. Claims 35, 36, 41, 47, 48, 51, 57, 58, 63, 69, 70, and 75
under 35 U.S.C. § 103(a) as obvious over Root in view of Rio, Smith,
and either Farr or Knight (Ground 20, RAN 17);
XIX. Claims 1-3, 6-14, 17, 18, 21-36, 38-58, 60-70, and 72-75
under 35 U.S.C. § 103(a) as obvious over Root in view of Richtel13
(Ground 21, RAN 17);
XX. Claims 1-3, 6-14, 17, 18, 21-36, 38-58, 60-70, and 72-75
under 35 U.S.C. § 103(a) as obvious over Root in view of Richtel and
Smith (Ground 22, RAN 18);
XXI. Claims 35, 36, 41, 47, 48, 51, 57, 58, 63, 69, 70, and 75
under 35 U.S.C. § 103(a) as obvious over Root in view of Richtel and
either Farr or Knight (Ground 23, RAN 18); and
XXII. Claims 35, 36, 41, 47, 48, 51, 57, 58, 63, 69, 70, and 75
under 35 U.S.C. § 103(a) as obvious over Root in view of Richtel,
Smith, and either Farr or Knight (Ground 24, RAN 18).

12 “Rio PMP300 User’s Guide,” Diamond Multimedia Systems, Inc., San
Jose, CA (1998).
13 Matt Richtel, “Surfing for Music,” Popular Science, Vol. 255, No. 3, 70-4
(September 1999).
Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

6
CROSS-APPEAL
Requester contests the Examiner’s decision not to reject the claims as
follows:
XXIII. All claims under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement, and second
paragraph as being indefinite (Proposed Grounds 11, 12, and 25, RAN
13-14 and 18-19).
We note that the Patent Owner presents no declaration evidence in
support of its appeal or opposition to Requester’s cross-appeal.
The Requester relies on the declaration testimony of Dr. Kim B.
Blair.14 Dr. Blair testifies to working in the field of sports engineering and
sports product development for 10 years, including the identification and
bringing to market “innovative ideas for the sporting industry.” Blair Decl.
¶¶ 2 and 5. Dr. Blair testifies to having experience directly related to
“devices for providing performance feedback to athletes,” including
“interactive software and hardware for the fitness and wellness industry that
engage both the mind and body to deliver more efficient, engaging, and
effective exercise.” Blair Decl. ¶ 6. We find that Dr. Blair is qualified to
testify in the field of personal devices, including software and hardware, for
optimizing training for a variety of athletic activity.

14 Declaration of Kim B. Blair, Ph.D. Under 37 C.F.R. § 1.132, dated
December 2, 2009, and entered into the record on December 3, 2009
(hereinafter “Blair Declaration” or “Blair Decl.”). See Req. Resp. Br. 32 and
Req. App. Br. 33, Evidence App’x, Exhibit D.
Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

7
Analysis
APPEAL
ROOT IN VIEW OF CURTIN and OPTIONALLY SMITH
(Grounds 1 and 2)
Claims 1, 7, 21, and 23
Patent Owner contends that Root fails to teach the steps of “providing
on a computer, prior to the training, an individual training program
comprising a music compilation for a particular training desire” and
“transmitting the training program to a portable sound playback device.” PO
App. Br. 8-9 and 28.
Patent Owner offers no particular meaning to the phrase “music
compilation for a particular training desire.”
The ’139 Patent recites: “Thus different training desires can be
considered, e.g training duration, training intervals, training intensity (speed,
increases), and music direction (jazz, classics, etc.).” col. 3, ll. 44-47.
Accordingly, it is reasonable to conclude that at least training duration,
training intervals, training intensity and music direction are considered to be
particular “training desires” considered in preparing or selecting a music
compilation.
Requester argues that selection of a particular duration and music
direction (i.e. genre or style) are “characteristics of every music
compilation.” Req. Reb. Br. 1. Dr. Blair testifies that such features are
“based upon the characteristics of the music tracks that make up the music
compilation.” Blair Decl. ¶ 18.
Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

8
We agree with the Requester and find that the overall length of a
music compilation and the “music direction” (i.e., the type of music
selected) is a feature of every music compilation. Further, we determine that
any “music compilation,” be it on a CD or as a digitally stored “playlist,”
would be suitable “for a particular training desire” because the scope of
“particular training desire” encompasses any training and any musical desire
for that training that might suit any individual user. For example, an
individual for a warm up activity or a yoga exercise might desire a slower
music compilation but another individual may desire a faster compilation for
the same yoga or warm up activity. Similarly, while one user may desire a
faster music compilation for running or jogging, another user may desire a
slower paced compilation for the same activity. Accordingly, the scope of
the phrase “for a particular training desire” does not further meaningfully
characterize the music compilation in the method step of “providing on a
computer, prior to the training, an individual training program comprising a
music compilation” or “transmitting the training program to a portable sound
playback device.”
Root teaches a device “which stimulates and motivates the athlete
during an exercise session.” Root, p. 5, second ¶. The device of Root
includes two sound component of interest. The first is an “audio module
606” which is for providing performance feedback via a “voice/speech
synthesizer” or “a series of stored compressed digital audio files.” Root, p.
12. Accordingly, Root discloses providing and transmitting audio files, but
it appears the files are voice recordings and not “music” files. Nonetheless,
Root evinces that the skill artisan would recognize that the system of Root is
Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

9
capable of receiving music as the audio files, as well as voice recorded audio
files.15 Thus, Root meets the system and the device recited in claims 7, 21,
23.
Root further teaches that music is to be provided by the second sound
component, namely an AM/FM/TV radio module 607, or alternatively an
audio cassette tape or audio compact disc player. Root, p. 9, last full ¶.
Thus, Root does not teach “providing [a music compilation] on a computer,
prior to the training” and “transmitting [a music compilation] to a portable
sound playback device” as recited in the method of claim 1.
Curtin teaches a portable music device that is “well suited for use
injogging[sic], sports and other portable device applications.” Curtin, col. 5,
ll. 64-66. Further, Curtin discloses using a PCMCIA, Flash, or other
memory card with stored, compressed audio information files, such as
MPEG-4 files, or downloading audio data from a network or internet
connection. Curtin, col. 3, ll. 1-29 and col. 4, ll. 60-col. 5, l. 16. Moreover,
Curtin teaches a portable sound playback device as an alternative to “an
otherwise conventional CD player, radio, cassette tape player, automobile
stereo or other known audio processing device.” Curtin, col. 6, ll. 52-56.
As to the method of claim 1, we consider Curtin to evince that
providing a music compilation on a computer, by placing the individual
tracks on to a storage medium, and transmitting the tracks to a portable
sound playback device was well known in the art at the time of the

15 This finding is further supported by the testimony of Dr. Blair. See Blair
Decl. ¶ 55.

Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

10
invention.16 We agree with the Examiner that it would have been obvious
for the skilled artisan to have provided a music compilation on a computer
and to have transmitted the music compilation to a personal music device, as
taught by Curtin, as an alternative to the radio, cassette player or compact
disk player of Root, “in order to customize the music selection.” See RAN
4. “[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007). Because any music compilation is capable of being
used “for a particular training desire,” the music compilation taught by
Curtin, which further teaches a device particularly for recreational purposes,
meets the claimed limitation.
Smith provides further evidence that it was known in the art to select
particular music tracks in a compilation based on the number of beats-per-
minute and genre for particular types of exercise. See Smith, fifth and sixth
full paragraphs. We agree with the Examiner that it would have been
obvious to one of ordinary skill in the art to have selected a music
compilation for downloading, as taught by Curtin, of a particular tempo
(beats-per-minute) or genre, as taught by Smith, to further customize the
music selection for a desired training activity. See RAN 5.

16 This finding is further supported by the testimony of Dr. Blair who states
“[t]he operation of MP3 players was well known to those of skill in the art at
the relevant time” as well as the benefits of the anti-skipping properties of
MP3 players over CD players. See Blair Dec. ¶ 38.
Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

11
Curtin additionally teaches that the playback parameters of the
downloaded music files or portions thereof, such as “tempo, key, tempo beat
map, playback duration and other parameters,” can be modified, for example
in response to a user’s heart rate or other environmental feedback. Curtin,
col. 4, ll. 1-19. Patent Owner argues that Curtin’s additional function
teaches away from a music complication particularly chosen to have, for
example a playback length or tempo, for a particular activity.
We cannot agree with Patent Owner’s reasoning. The music initially
downloaded meets the requirements of the music compilation as it is
necessarily capable of being used “for a particular training desire,” which is
of a desired genre and playback length. The feature wherein a particular file
of the music compilation can be further manipulated is not precluded by the
claims.

Claims 5 and 16
Patent Owner contends that neither Root nor Curtin disclose
“influencing the individual training program provided in the form of a music
compilation in the sound playback device dependent on the detected values
of the body’s inherent parameters.” PO App. Br. 10.
Patent Owner suggests that the description of “influencing the
individual training program [i.e., music compilation] . . . dependent upon the
detected values of the body’s inherent parameters” in the Specification of the
’139 Patent distinguishes the phrase from the track modification described in
Curtin. Id. (citing ’139 Patent, col. 3, ll. 19-33).
We are not persuaded that such a feature is not taught by Curtin.
Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

12
Neither the Specification nor the language of claims 5 and 16 limits
the way the music compilation may be influenced. The Specification for the
’139 Patent provides that “selecting a faster/slower title” is but an example
of the way the sound playback device could modify the music played. ‘139
Patent, col. 3, ll. 19-22. Thus, the broadest reasonable interpretation of
claims 5 and 16 is not limited to the “influence” being the selection of a
particular title. “[L]imitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see
also Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)
(“[A]lthough the specification often describes very specific embodiments of
the invention, we have repeatedly warned against confining the claims to
those embodiments.”). The ’139 Patent further states that “[t]he music
played by the training device or the music playback means is for example
pulse controlled or running controlled.” ’139 Patent, col. 3, ll. 31-33.
Curtin teaches that the playback parameters of downloaded music
files or portions thereof, such as “tempo, key, tempo beat map, playback
duration and other parameters,” can be modified, for example in response to
a user’s heart rate or other environmental feedback. Curtin, col. 4, ll. 1-19.
We find that Curtin meets the limitation of “influencing the individual
training program [i.e., music compilation] . . . dependent upon the detected
values of the body’s inherent parameters.” Patent Owner has not provided
any persuasive evidence or reasoning as to why the teachings of Curtin fail
to meet the limitations of claims 5 and 16 based on the cited portions of the
’139 Patent.

Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

13
Claims 30, 42, 52, and 64
Patent Owner contends that, although Root discloses the use of a
“voice/speech synthesizer,” Root does not disclose “a user-selected voice
type,” which Patent Owner characterizes as “(e.g., drill sergeant, soft voice,
etc.)” PO App. Br. 10 (quoting, col. 3, ll. 50-53). According to Patent
Owner, “Root never even mentions multiple voice types.” Id. at 11.
We disagree that Root fails to disclose multiple voice types. As
pointed out by Requester (Req. Res. Br. 4), Root discloses that its device has
“[m]anufacturer set options” that include “voice language, voice gender, and
so forth.” Root, p. 16, first full ¶. Root further teaches that the voice may be
“digital audio files such as today’s RealAudio files played via Internet web
sites.” Root, p. 22, first full ¶. The disclosure of “voice gender” in Root
indicates that it was known in the art at the time of the invention to include a
“user-selected voice type,” i.e., male or female, for providing verbal training
information that is capable of being transmitted to the personal device, as
with music audio files as taught by Curtin. Patent Owner has not provided
any persuasive evidence or reasoning as to why the teachings of selecting a
“voice gender” in Root fail to meet the recited limitation of a “user-selected
voice type” recited in claims 30, 42, 52, and 64.

Claim 18
Patent Owner contends that the combination of Root and Curtin fail to
disclose a “means for storing and transmitting personal data of the training
person” as recited in claim 18. PO App. Br. 11.
Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

14
As pointed out by Requester, Root describes using either the
described device or “a personal computer and optional software program” to
adjust “device settings and user preferences,” which include the input of
“personal data (e.g. gender, birth date, and body weight).” Root, ¶ spanning
p. 15-16. Root further describes connecting the device to a personal
computer for “long term historical exercise session data storage,
performance trend analysis, and remote device configuration” and
transmitting “data” to a remote computer that “collects, stores and compiles
athletic performance data form participants around the planet.” Root, p. 20,
second and third full paragraphs.
Accordingly, Root discloses that both the described device and a
personal computer function to store and transmit personal data of the
training person, as recited in claim 18. Patent Owner has not provided any
persuasive evidence or reasoning as to why Root’s disclosure fails to meet
the limitations of claim 18.

Claim 35, 47, 57 and 69
Patent Owner contends that Root and Curtin fail to teach a “training
program [that] is provided via an Internet website that includes a virtual
meeting point for runners.” PO App. Br. 11. In particular, Patent Owner
indicates that the Examiner fails to discuss “a virtual meeting place for
runners.” Id.
As pointed out by Requester, Root describes that “[u]sers may also
use the Internet web site to locate other athletes with similar skills and
interest to exercise with.” Root, ¶ spanning p. 22-23.
Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

15
Accordingly, we agree with the Examiner’s inclusion of claims 35,
47, 57 and 69 in the rejection based on Root, Curtin and optionally Smith in
that it would have been obvious to one of ordinary skill in the art to use the
internet to provide athletes with a meeting place, as taught by Root, and to
provide a music compilation, as taught by Curtin, as an alternative to the
AM/FM/TV module of Root, as discussed above. Patent Owner has not
provided any persuasive evidence or reasoning as to why Root’s disclosure
fails to meet the limitations of an internet website that includes a “virtual
meeting place for runners.”

ROOT IN VIEW OF VAN RYZIN, RIO, OR RICHTEL and
OPTIONALLY SMITH
(Grounds 13, 14, 17, 18, 21, and 22)
Patent Owner presents substantially the same arguments with respect
to the claims alternatively rejected based on any of Van Ryzin, Rio or
Richtel.
As with Curtin, these references similarly are directed towards
personal audio devices for downloading a selected group of music files, and
thus a “music compilation,” from a personal computer. See Van Ryzin, col.
4, ll. 3-21; Rio, p. 14, ¶ 4; Richtel, paragraph spanning p. 70-72.
For the same reasons discussed above for Curtin, we agree with the
Examiner that it would have been obvious for the skilled artisan to have
provided a music compilation via a portable music device, such as taught by
Van Ryzin, Rio, or Richtel, as an alternative to the AM/FM/TV module of
Root, “in order to customize the music selection.” See RAN 15-17.
Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

16

ROOT IN VIEW OF CURTIN, DICKSON OR SHAPIRA and
OPTIONALLY SMITH
(Grounds 5 and 6)
Dickson and Shapira disclosed personal introduction devices that
transmit and receive personal data and alert the users to matching
characteristics. See, Dickson, col. 1, l. 60 to col. 2, l. 10; Shapira, Abstract.
The Examiner suggests modifying the storing and sharing of personal
data taught by Root by the teachings of Dickson or Shapira “so as track the
progress of training and generate feedback regarding training from others.”
RAN 9-10.
Patent Owner contends that “[m]odifying the proposed combination of
Root and Curtin to include the features taught in Dickson or Shapira would
result in a system that would share training information over a more limited
range, would increase distractions to users and would increase the number of
music interruptions. Such a modification accordingly would not have been
obvious to one skilled in the art.” PO App. Br. 19. Patent Owner provides
no persuasive evidence or further explanation as to why the skilled artisan at
the time of the invention would consider a “limited range,” “distractions” or
“music interruptions” to render not obvious the combination of Root with
Dickson and Shapira. Patent Owner’s arguments are contrary to the
teachings of Root which provide similar distraction and music interruptions
when providing the user information via audio output. Root, p. 15, first full
¶ and ¶ spanning p. 17-18. Moreover, the claims and the ’139 Specification
encompass sharing information over a limited range. See ’139 Specification,
Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

17
col. 3, ll. 55-66 (“the device comprises a radio transmitting means so that
during a training in groups . . . [personal user data] are output from the
training device during the training and can be received by other training
devices.”).

MCHUGH IN VIEW OF CURTIN and OPTIONALLY SMITH
(Grounds 3 and 4)
Claims 1, 7, 21, and 23
The Examiner relies on the teachings of McHugh in a similar manner
to that of Root. See generally, RAN 6-8. Accordingly, as with Root, Patent
Owner contends that neither McHugh nor Curtin disclose a “music
compilation for a particular training desire.” PO App. Br. 14-17.
McHugh teaches a device “for providing audio that is correlated to an
individual’s heart rate.” McHugh, col. 1, ll. 42-44. The device is
“preferably portable to permit the apparatus to be worn while the user is
running, jogging, riding a bicycle, or performing any other physical
activity.” McHugh, col. 6, ll. 7-10. The device of McHugh includes a mixer
where a signal indicative of a user’s measured pulse rate and an audio signal
are combined to produce a single combined output signal. McHugh, col. 2,
ll. 10-15. The audio signal may be provided by “a musical playback device
such as a MP3 player, cd player, tape player, record player, radio or the
like.” McHugh, col. 2, ll. 10-13.
Accordingly, McHugh evinces that the skill artisan would recognize
that the system of McHugh, in teaching the use of an MP3 player, is capable
Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

18
of receiving music files.17 Thus, McHugh meets the system and the device
recited in claims 7, 21, 23. Though the evidence suggests that at the time of
the invention, downloading music onto an MP3 player of the type disclosed
in McHugh, was well-known in the art, McHugh does not specifically teach
the step of providing a music compilation on a computer and transmitting it
to a device, as recited in the method of claim 1.
However, for the reasons discussed above with respect to Root in
view of Curtin, we agree with the Examiner that it would have been obvious
for the skilled artisan to have provided a music compilation on a computer
and transmitting the music compilation to a personal music device, such as
taught by Curtin, to provide the audio signal disclosed in McHugh, “in order
to customize the music selection.” See RAN 7.
Because any music compilation is capable of being used “for a
particular training desire,” the music compilation taught by Curtin meets the
claimed limitation.
Moreover, for the reasons discussed above, we agree with the
Examiner that it would have been obvious to one of ordinary skill in the art
to have selected a music compilation for downloading, as taught by Curtin,
of a particular tempo (beats-per-minute) or genre, as taught by Smith, to
further customize the music selection for a desired training activity. See
RAN 8.

17 This finding is further supported by the testimony of Dr. Blair. See Blair
Decl. ¶ 55.

Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

19
Claim 5
Patent Owner contends that neither McHugh nor Curtin disclose
“influencing the individual training program provided in the form of a music
compilation in the sound playback device dependent on the detected values
of the body’s inherent parameters.” PO App. Br. 15-16.
For the reasons discussed above, we find that Curtin meets the
limitation of “influencing the individual training program [i.e., music
compilation] . . . dependent upon the detected values of the body’s inherent
parameters.” Moreover, McHugh similarly discloses modifying audio
content based on an individual’s heart rate. McHugh, col. 1, ll. 42-44.

REJECTIONS FURTHER BASED ON FARR AND KNIGHT
(Grounds 7-10, 15, 16, 19, 20, 23 and 24)
The Examiner further relies on Farr and Knight as further evidence
that it was known in the art to directly download music compilations to be
used during workout activity via an Internet website. RAN 11.
As discussed above, we determined that the teachings of Root in view
of Curtin and Smith to be sufficient to establish the obviousness of claims
35, 36, 41, 47, 48, 51, 57, 58, 63, 69, 70, and 75. We agree with the
Examiner that Farr and Knight further support these findings. Patent
Owner’s arguments regarding the teachings of Farr and Knight are not
persuasive to the contrary. PO App. Br. 21-22.

Accordingly, we affirm the rejections maintained by the Examiner.

Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

20
CROSS-APPEAL
35 U.S.C. § 112 1st AND 2nd PARAGRAPH REJECTIONS
Claims 1, 7, 21, and 23
The Examiner determined that there was written descriptive support
for the added limitation “for a particular training desire” and that the term
was not indefinite. RAN 18-19.
Requester contends that the term lacks written description support and
is indefinite despite the Examiner’s determination because one of ordinary
skill in the art would find the claim term unsupported and would not
understand the meets and bounds of the claim. Req. App. Br. 15.
We agree with the Examiner that at least column 3, lines 37-47
provides sufficient written descriptive support for a “music compilation for a
particular training desire.”
Requester argues that Dr. Blair provides evidence that the skilled
artisan would find the term “unclear” and “unsupported by the specification”
(see Req. App. Br. 15)(citing Blair Decl. ¶¶ 16 and 19). However, above we
discuss the Requester’s proposed interpretation of the term relying on the
Specification of the ’139 Patent. We agree with the Requester’s
interpretation. In this case, the term is sufficiently broad to encompass any
music compilation, but substantial breadth for a claim term is not indicative
of indefiniteness. In re Gardner, 427 F.2d 786, 788 (CCPA 1970). Thus,
we agree with the Examiner that the phrase is not indefinite.

Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

21
Claims 30, 42, 52, and 64
The Examiner determined that there was written descriptive support
for the added limitations of “a user-selected voice type” and that the term
was not indefinite. RAN 13. However, the Examiner did not address the
Requester’s actual proposed rejection, which emphasized that what was
indefinite and lack written descriptive support was that the user-selected
voice type was included in the “training program comprising a music
compilation.” Req. App. Br. 15-17. The Requester contends that (1) a
“training program” consists only of a music compilation and thus cannot
include a voice-type, or (2) that the specification states the voice type is
transmitted “along with” and not as “included” as part of the training
program, as claimed. Id. at 16. Relying on this interpretation, Dr. Blair
provides similar reasoning. See Blair Decl. ¶ 48.
Initially, we do not agree with the Requester or with Dr. Blair that the
term “training program” must necessarily be synonymous with a music
compilation. The Specification describes “providing a training program that
can be combined or compiled individually and listened to by a user during
the training (e.g. a music compilation)” and that the training program can be
“in the form of music or texts.” ’139 Patent, col. 2, ll. 8-13. It is reasonable
to infer that the term “training program” can include more than a music
compilation or it would have been expressly limited to only a music
compilation instead of as merely one example thereof. While a music
compilation is exemplary of a training program, we find no reason to limit
the scope of a training program to a music compilation.
Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

22
Further, we agree with the Patent Owner that considering the
Specification as a whole it is reasonable that one of ordinary skill in the art
would have understood that, to the extent that the voice-type can be selected
separate from the personal training device via a personal computer, that the
voice-type is part of all of the material that is transmitted to the personal
device as part of a “training program.” Accordingly, we further determine
that the language of claims 30, 42, 52, and 64 has written descriptive
support. Further, we are not persuaded that the language would have been
indefinite to one of ordinary skill in the art.

Claims 35, 47, 57, and 69
The Examiner found that there was written descriptive support for the
added limitations of “a virtual meeting place for runners” and that the term
was not indefinite. RAN 14.
While acknowledging the phrase “virtual meeting place for runners”
is provided in Figure 2 of the ’139 Patent, Requester contends that “the
meaning of the phrase ‘virtual meeting place for runners’ is entirely unclear”
and that “nothing in the specification indicates that a website used in
conjunction with training programs would also include a ‘virtual meeting
place for runners.”’ Req. App. Br. 17; see also Blair Decl. ¶ 49.
The Specification of the ’139 Patent, in discussing Figure 2, states
that:
The portable training device is adapted for a data transfer with a
base station which is shown as a computer with an Internet
browser for accessing an Internet website. At this website, the
individual personal data can be entered, the training schedule
Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

23
with a sequence of training units can be created, and the music
compilations can be prepared.
’139 Patent, col. 4, l. 65 to col. 5, l. 3. Figure 2 illustrates information
transmitted to “Base Station” from a “Website” via “Internet Access” and
vice versa. See ’139 Patent, Figure 2. Figure 2 describes a website having
various components including a “Website” component, a “Virtual Personal
Coach” or “VPC” component, and a “Music Master” component. Id. The
“Website” component includes a “Virtual Meeting Point for Runners.” Id.
The “Music Master” component includes “Playlists.” Id. We find this
adequately discloses an Internet accessible website that includes both a
virtual place for runners and music playlists. Thus, we find adequate written
description for the claimed subject matter. Moreover, we find that the term
“virtual meeting place for runners” is not indefinite. Rather, we determine
that the meaning is broad in that it encompasses any feature by which
individual runners would interact with each other via a website. Once again
we emphasize that substantial breadth for a claim term is not indicative of
indefiniteness.

Claims 36, 48, 58, and 70
The Examiner found that there was written descriptive support for the
added limitations of “a music download feature” and that the term was not
indefinite. RAN 14.
While acknowledging the phrase “music download” is provided in
Figure 2 of the ’139 Patent, Requester contends that “the meaning of the
phrase ‘music download feature’ – and how it may relate to or differ from
training program provision and/or transmission - is entirely unclear” and that
Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

24
“nothing in the specification indicates that a website used in conjunction
with training programs would also include a ‘music download feature’
related to or different from training program provision and/or transmission.”
Req. App. Br. 18-19; see also Blair Decl. ¶ 50.
As discussed above, Figure 2 of the ’139 Patent includes a “Music
Master” component to an Internet accessible website, which includes “Music
Download.” Moreover, the ’139 Patent describes that “prior to training,
music compilations are provided (in the Internet) at a base station (e.g.
computer having Internet access) which then can be combined individually,
downloaded, and employed for training on a playback device (MP3 player).”
’139 Patent, col. 4, ll. 10-14.
We find that the Specification adequately discloses an Internet
accessible website that includes a music download feature. Thus, we find
adequate written description for the claimed subject matter. Moreover, we
find that the term “music download feature” is not indefinite. Rather, we
determine that the meaning is simply broad in that it encompasses any
feature of a website to facilitate downloading music. Once again we
emphasize that substantial breadth for a claim term is not indicative of
indefiniteness.

DECISION
In sum, we affirm the rejections maintained by the Examiner.
We also affirm the Examiner’s decision not to adopt the rejections of
the claims under 35 U.S.C. § 112, first paragraph, as failing to comply with
Appeal 2012-009495
Reexamination Control 95/001,198
Patent 6,716,139 B1

25
the written description requirement, and second paragraph as being
indefinite.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED

PATENT OWNER:
BANNER & WITCOFF, LTD
1100 13TH Street, NW
Suite 1200
Washington, D C 20005-4051

THIRD-PARTY REQUESTER:
STERNE, KESSLER, GOLDSTEIN & FOX, PLLC
1100 New York Avenue, NW
Washington, DC 20005