Ex Parte 7118498 et al

Patent Trial and Appeal Board

Aug 31, 2015

95001750 (P.T.A.B. Aug. 31, 2015)

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.
95/001,750 09/26/2011 7118498 DECAI.004X2 9929
22850 7590 08/31/2015
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
SAADAT, CAMERON
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/31/2015 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
____________________

DECA INTERNATIONAL CORP.,
Requester and Respondent,

v.

SKYHAWKE TECHNOLOGIES, LLC,
Patent Owner and Appellant.
____________________

Appeal 2015-004932
Reexamination Control 95/001,750
Patent No. US 7,118,498
Technology Center 3900
____________________

Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Third Party Requester DECA International Corp. appeals under
35 U.S.C. §§ 134(b) and 315(a) (2002) from the Examiner’s decision not to
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reject claims 5–8
1
as set forth in the Right of Appeal Notice (RAN) mailed
April 15, 2014. Requester filed a brief (“Req. App. Br.”) on July 15, 2014
and a rebuttal brief (“Req. Reb. Br.”) on December 15, 2014. Patent Owner
SkyHawke Technologies, LLC filed a Respondent’s Brief on August 15,
2014. The Examiner mailed an Examiner’s Answer (“Ans.”) on November
13, 2014 which incorporated the RAN by reference. We have jurisdiction
under 35 U.S.C. §§ 134 and 315.
We affirm.
The ’498 Patent issued to Meadows on October 10, 2006, and is
assigned to SkyHawke Technologies, LLC. The ’498 Patent concerns a
handheld personal golfing assistant system that includes a GPS receiver.
The system can be used during the course of playing golf to mark a ball
location automatically, determine the distance to golf course targets or
objects, analyze golf related data and generate statistics (Abstract).
Claim 5 is exemplary of the claims on appeal:
An integrated handheld apparatus for measuring and displaying
distances between a golfer and an object on a golf course comprising:
a computing device;
a GPS device connected to said computing device;
an apparatus display connected to said computing device;
said GPS device adapted to produce measured location information
corresponding to a location of said GPS device independent of golf course
infrastructure;

1
Claims 1–4 are not subject to reexamination.
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means, within said handheld apparatus, for determining a distance,
independent of said golf course infrastructure, between said GPS device and
said object by using said measured location information and previously
stored information concerning the location of said object; and
wherein a representation of said object is displayed on said apparatus
display, as viewed from above said object, and said representation
automatically rotates to orient said representation to coincide with said
golfer’s line of sight to said object and said integrated handheld computing
device is adapted to selectively display said distance on said apparatus
display.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Rudow et al. US 6,236,940 May 22, 2001
Johnson US 6,366,856 April 2, 2002
Barnard US 6,456,938 September 24, 2002
Reeves US 7,121,962 October 17, 2006

The claims stand rejected over various combinations of prior art
references (see Req. App. Br. 12-14):

References Claims Basis (§)
Reeves and Johnson 5 and 6 103(a)
Reeves, Johnson, and Barnard 5 and 6 103(a)
Rudow and Johnson 5 and 6 103(a)
Rudow, Johnson, and Barnard 5 and 6 103(a)
Barnard and Johnson 5-8 103(a)
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ISSUE
Requester argues that the ’498 Patent does not disclose sufficient
structure corresponding to the “means for determining a distance” limitation
of claim 5, such that the limitation cannot be properly construed (Req. App.
Br. 14). Requester argues that Patentee should be required to remedy
claim 5. In the alternative, Requester contends that a broad construction of
“hardware and software that can perform the recited function” be applied,
and the claims should be rejected in accordance with the first Action Closing
Prosecution (Req. App. Br. 14).
The arguments made by Patent Owner and Requester present us with
the following issue:
1. Does the ’498 Patent disclose sufficient structure, material, or acts
such that the claims of the ’498 Patent are amenable to construction?
2. Did the Examiner err in withdrawing the rejections of claims 5–8
entered in the first ACP?

PRINCIPLES OF LAW
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
claims shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.

35 U.S.C. § 112 (2003).
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A determination by the Director under subsection (a) shall be final
and non-appealable. 35 U.S.C. § 312(c) (2003).
[A]n inter partes reexamination is a two-step process.
First, the Director must make a determination “whether a
substantial new question of patentability affecting any claim of
the patent is raised by the request . . . with or without
consideration of other patents or printed publications . . . .
Second, after the director has determined that there is a
substantial new question of patentability affecting a claim with
respect to prior art, an inter partes reexamination is ordered “for
resolution of the question.” The question to be resolved is the
substantial new question of patentability determined by the
Director.

Belkin Int’l Inc. v. Kappos, 696 F.3d 1379, 1382 (Fed. Cir. 2012).

ANALYSIS
In order to evaluate whether the Examiner erred in deciding to
withdraw the proposed rejections that were initially found to raise a
substantial new question of patentability, we must construe the means-plus-
function limitation found in independent claim 5:
“Means, within said handheld apparatus, for determining a distance,
independent of said golf course infrastructure, between said GPS device and
said object by using said measured location information and previously
stored information concerning the location of said object.”
Requester argues that the specification does not clearly link or
associate tangible structure with the recited function, and does not disclose a
complete algorithm for performing the function. Requester states that the
’498 Patent’s Specification requires that
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[t]he golfer can also load course object data previously
surveyed by the golfer or others and adjust the distance
processing to correct for differences between current
environmental conditions and the environmental conditions
when the course was originally surveyed. This process
combined with real time tunable GPS parameters that can be
adjusted for the dynamics of an individual mobile golfer on a
specific course enables relative distances to be computed with
sufficient accuracy for golf without requiring the use of DGPS
equipment or any equipment mounted on a golf cart or
infrastructure on the golf course.

’498 Patent, col. 8, ll. 26–36.
Requester concludes from this disclosure that the process for
performing the claimed function (i.e., “determining a distance”) requires
(1) loading previously surveyed course-object data; (2)
adjusting the distance processing to correct for differences
between current environmental conditions and the
environmental conditions when the course was originally
surveyed; and (3) using real time tunable GPS parameters that
can be adjusted for the dynamics of an individual mobile golfer
on a specific course.

Req. App. Br. 6.
Requester goes on to argue that the ’498 Patent “fails to provide a
complete step-by-step procedure for fully performing the first and third
requirements” (Req. App. Br. 6–7).
We agree with Requester that the claimed “means . . . for determining
a distance . . . between said GPS device and said object” must include
adjusting distance processing (i.e., “environmental error correction”) and
using real time tunable GPS parameters. Even though the patent claims do
not recite environmental correction or tunable GPS parameters, claim 5 does
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recite “independent of said golf course infrastructure.” Column 8 of the
’498 Patent makes clear that in order to determine relative distances, e.g.
between the GPS device and an object such as a green, “with sufficient
accuracy for golf . . . without requiring the use of DGPS equipment or any
equipment mounted on a golf cart or infrastructure on the golf course”
(col. 8, ll. 34-36; emphasis added), one must perform the process of
correcting for environmental condition differences, and use real time tunable
GPS parameters.
Figure 8 of the ’498 Patent, a flowchart of the main program, is
reproduced below:
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Figure 8 not only discloses the formula for computing the distance
between a current position and a target object, but it includes “LatE” and
“LonE” as terms in the algorithm. “LatE” is the “eFilter Lat [latitude]
correction value,” and “LonE is the “eFilter Lon [longitude] correction
value” (col. 11, ll. 36-37). Figure 8 therefore further suggests that eFilter
environmental error correction forms part of the distance determining
process.
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We do not, however, agree with Requester’s contention that the ’498
Patent fails to provide a complete algorithm for loading previously surveyed
course-object data, and using real time tunable GPS parameters (Req. App.
Br. 6–7). The loading of previously surveyed course-object data is
illustrated at Figure 12, and disclosed at column 20, lines 1–53, of the ’498
Patent. We agree with Patent Owner that the ’498 Patent also discloses
structure and algorithms corresponding to the disclosed environmental error
correction and tunable GPS parameters. As the Examiner points out, eFilter
adjustment for environmental conditions is disclosed at Figure 9 (Action
Closing Prosecution mailed Dec. 13, 2013, p. 14) as well as column 11, line
5 through column 16, line 57 of the ’498 Patent. The use of real time tunable
GPS parameters is illustrated at Figure 11, and described at column 19, line
11 to column 20, line 53, of the ’498 Patent.
Patent Owner argues that the structure corresponding to the
“determining a distance” function recited in the claims “is the claimed
computing device, including the algorithmic structure of Figures 8, 26B, and
26C (steps A, E1a, E1b, E2, and E3)” (PO Resp. Br. 6). We agree with
Patent Owner’s position that the recited portions of Figures 26B and 26C, as
well as Figure 8 already discussed, would be recognized by one of ordinary
skill in the art as linked to the recited function (Id.).
Figures 26B and 26C, which illustrate a flow chart for determining
crosshair distances from the golfer’s perspective, are reproduced below:
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Figures 26B-26C show an embodiment of one preferred method to
determine the crosshair distances from user’s perspective (col. 6, ll. 32-34).
In Step A, the Golfer loads the unit’s memory with a pre-defined green
outline and/or outline of other objects and the center location of the green
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(col. 23, ll. 42–44). In Step E1a, a golfer’s line of sight angle of approach is
determined (col. 24, ll. 9–10). Step E1b is used to determine the X & Y pixel
position of the center of green from the center of screen (col. 24, ll. 32–33).
In Step E2, the latitude and longitude of the top and bottom intersection
points is determined (col. 24, ll. 56–57). In Step E3, the distances to the
center, top and bottom points on the green are computed and displayed on
the screen (col. 25, ll. 28–30).
Taken together, we find that the claimed “means . . . for determining a
distance” recited in claim 5 finds support in Figures 8, 9, and 11, and
portions of Figures 26B and 26C, as well as associated sections of the
’498 Patent specification. Necessarily, then, we do not agree with
Requester’s suggested construction of this limitation as merely “hardware
and software that can perform the recited function” (Req. App. Br. 15).

REJECTIONS WITHDRAWN BY EXAMINER
Requester’s entire argument urging that the withdrawn prior art
rejections
2
be adopted is that, “[s]hould the Board determine the correct
construction of this limitation for purpose of this reexamination is hardware
and software that can perform the recited function, the Board should reverse
the decision to withdraw the proposed rejections” (Req. App. Br. 15).
Such a construction is unreasonably broad in light of our finding that
Figures 8, 9, 11, and portions of Figures 26B and 26C disclose the
algorithmic structure corresponding to the claimed function of “determining
a distance, independent of said golf course infrastructure, between said GPS

2
Identified as Issues 3a, 4a, 11a, 12a, and 13 (Req. Reb. Br. 8).
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device and said object by using said measured location information and
previously stored information concerning the location of said object.” As a
result, we are unpersuaded by Requester’s remarks.
Using the claim construction we adopt today, we agree with the
Examiner that the Request and the prior art cited therein fails to disclose the
corresponding structure and algorithms illustrated in Figures 8, 9, 11, and
portions of Figures 26B and 26C of the ’498 Patent, and associated
disclosure in the patent’s specification (see ACP mailed December 13, 2013,
p. 15). We sustain the Examiner’s decision to withdraw the prior art
rejections of claims 5–8.

REVIEW OF PROPOSED REJECTIONS FOUND NOT TO RAISE A SUBSTANTIAL NEW
QUESTION OF PATENTABILITY
Requester asks that the Board review of grounds of rejection
3
based
on prior art references “that were found to raise substantial new questions of
patentability” (Req. Reb. Br. 9). In Requester’s view, because Reeves,
Rudow, Johnson, and Barnard “were found to raise a substantial new
question of patentability . . . those references are properly considered in their
entirety on appeal,” and rejections premised on combinations of those
references are reviewable, even if the Examiner declined to find a substantial
new question of patentability based on a particular combination complained
of (Req. Reb. Br. 9).

3
Identified as Issues 1a, 1b, 2, 3b, 4b, 5, 6, 7, 8, 9, 10, 11b, and 12b (Req.
Reb. Br. 8).
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We do not agree that the Board has jurisdiction to review these
proposed rejections. The language of 35 U.S.C. § 312(c) is unequivocal. “A
determination by the Director under subsection (a) [i.e., whether a
substantial new question of patentability affecting a claim of the patent
concerned is raised by the request for inter partes reexamination] shall be
final and non-appealable.” 35 U.S.C. § 312(c) (2003).
Nevertheless, Requester cites Belkin Int’l Inc. v. Kappos, 696 F.3d
1379 (Fed. Cir. 2012) in an attempt to assert that the non-adopted proposed
rejections are reviewable by the Board (Req. Reb. Br. 8). We disagree with
Requester that Belkin can be factually distinguished from the present appeal.
Belkin makes clear that the Director finds issues, not merely individual
patents, to raise substantial new questions of patentability. Belkin, 696 F.3d
at 1350. “The Board was correct not to consider the previously raised and
rejected issues based on the other three references,” id.(emphasis added). If
the court were in agreement with Requester that individual references are
what give rise to substantial new questions of patentability, there would be
no need to discuss issues based on those references. This is not what the
court does, however. As in Belkin, Requester’s only option was to petition
the Director to review the Examiner’s determination that the proposed
grounds of rejection did not raise a substantial new question of patentability.
When Requester did not do so, the Examiner’s determination became final
and non-appealable, rendering those issues beyond the scope of the
reexamination. See id.

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CONCLUSION
1. The ’498 Patent discloses sufficient structure, material, or acts such
that the claims of the ’498 Patent are amenable to construction.
2. The Examiner did not err in withdrawing the rejections of claims 5-
8 entered in the first ACP.
ORDER
The Examiner’s decision to withdraw the rejection of claims 5–8 is
affirmed.
Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

Patent Owner:

Oblon, McClelland, Maier & Neustadt, LLP
1940 Duke Street
Alexandria, VA 22314

Third Party Requester:

Knobbe Martens Olson & Bear, LLP
2040 Main Street
Fourteenth Floor
Irvine, CA 92614