Ex Parte 7428472 et al

Patent Trial and Appeal Board

Apr 29, 2014

95001199 (P.T.A.B. Apr. 29, 2014)

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.
95/001,199 06/17/2009 7428472 2483.091REX0/DKSC/RDC 1429
22909 7590 04/30/2014
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
DEB, ANJAN K
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/30/2014 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
____________________

ADIDAS AG
Requester, Respondent and Cross-Appellant

v.

NIKE, INC.
Patent Owner, Appellant, and Cross-Respondent

____________________

Appeal 2013-007908
Reexamination Control 95/001,199
Patent No. US 7,428,472 B2
Technology Center 3900
____________________

Before MARC S. HOFF, STEPHEN C. SIU and STANLEY M.
WEINBERG, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Patent Owner Nike appeals under 35 U.S.C. §§ 134(b) and 315(a)
(2002) from the rejection of claims 1-24 as set forth in the Right of Appeal
Notice (RAN) mailed April 6, 2012. Patent Owner filed an appeal brief on
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July 9, 2012. Requester Adidas filed a respondent brief on August 8, 2012
and a brief on cross-appeal on July 16, 2012. Patent Owner filed a
respondent brief on cross-appeal on August 16, 2012. Requester then filed a
rebuttal brief on March 5, 2013. The Examiner mailed an Examiner’s
Answer on February 5, 2013 which incorporated the RAN by reference. We
have jurisdiction under 35 U.S.C. §§ 134 and 315.
We affirm.
The ‘472 Patent issued on September 23, 2008, and is assigned to
Nike, Inc. The ‘472 Patent concerns monitoring the activity of a user in
locomotion on foot. A device supported by a user may monitor a
performance parameter of the user, such as pace or speed. The device may
be configured to specify a first interval and second interval, corresponding to
a first and second performance zone respectively. Each performance zone
may be different from one another, and each zone may comprise one of a
zone of paces and a zone of speeds. Action may be taken with the device in
response to determining that the monitored performance parameter has fallen
outside a performance zone (Abstract).
Claim 1 is exemplary of the claims on appeal:
A method, comprising steps of:

(a) with at least one device supported by a user while the user is in
locomotion on foot during an outing, monitoring a performance parameter of
the user comprising one of a pace of the user and a speed of the user, where
the device is located near the user's foot and measures a foot-ground contact
time and a step time for each step of the user;

(b) prior to the outing, configuring the at least one device to specify
first and second intervals of the outing and corresponding to first and second
performance zones for the first and second intervals, wherein each of the
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first and second performance zones comprises one of a zone of paces and a
zone of speeds and is different than the other of the first and second
performance zones;

(c) during the first interval, taking an action with the at least one
device in response to determining that the monitored performance parameter
of the user has fallen outside of the first performance zone; and

(d) during the second interval, taking an action with the at least one
device in response to determining that the monitored performance parameter
of the user has fallen outside of the second performance zone.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:

Mathews U.S. 4,867,442 September 19, 1989
Fyfe U.S. 5,955,667 September 21, 1999
Whalen et al. U.S. 6,183,425 B1 February 6, 2001
Damen et al. U.S. 6,356,856 B1 March 12, 2002
Stubbs et al. U.S. 6,736,759 B1 May 18, 2004
Root WO 99/49,279 Pub. September 30, 1999

Claims 1-24 stand rejected under 35 U.S.C. § 112, first paragraph, for
lack of written description.
Claims 1-24 stand rejected under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the subject matter
sought to be patented.
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Claims 15-24 stand rejected under 35 U.S.C. § 314(a) for broadening
the scope of the claims.
1

Claims 1-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over various combinations of prior art references, as explained
at pages 27 to 104 of the Right of Appeal Notice:

References Claims Basis
Stubbs and Damen 1-14 103(a)
Stubbs and Whalen 1-14 103(a)
Stubbs and Fyfe 1-14 103(a)
Root and Damen 1-14 103(a)
Root and Whalen 1-14 103(a)
Root and Fyfe 1-14 103(a)
Root, Matthews, and Damen 1-14 103(a)
Root, Matthews, and Whalen 1-14 103(a)
Root, Matthews, and Fyfe 1-14 103(a)
Root, Stubbs, and Damen 1-14 103(a)
Root, Stubbs, and Whalen 1-14 103(a)
Root, Stubbs, and Fyfe 1-14 103(a)
Matthews and Damen 1-14 103(a)
Matthews and Whalen 1-14 103(a)
Matthews and Fyfe 1-14 103(a)

1
The Examiner at first states that the Requester proposed that claims 1-19
and 20-24 should be rejected on this basis; but then correctly refers to a
proposed rejection of only claims 15 and 20. RAN 26-27.
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Matthews, Stubbs, and Damen 1-14 103(a)
Matthews, Stubbs, and Whalen 1-14 103(a)
Matthews, Stubbs, and Fyfe 1-14 103(a)
Matthews, Root, and Damen 1-14 103(a)
Matthews, Root, and Whalen 1-14 103(a)
Matthews, Root, and Fyfe 1-14 103(a)
Stubbs and Damen 15-19 103(a)
Stubbs and Whalen 15-19 103(a)
Root and Damen 15-19 103(a)
Root and Whalen 15-19 103(a)
Matthews and Damen 15-19 103(a)
Matthews and Whalen 15-19 103(a)
Stubbs and Damen 20-24 103(a)
Stubbs and Whalen 20-24 103(a)
Root and Damen 20-24 103(a)
Root and Whalen 20-24 103(a)
Matthews and Damen 20-24 103(a)
Matthews and Whalen 20-24 103(a)

Requester contends that the Examiner incorrectly declined to adopt the
following proposed rejections under 35 U.S.C. § 103(a):
References Claims Basis
Stubbs 1-14 103(a)
Root 1-14 103(a)
Root and Stubbs 1-14 103(a)
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Root and Matthews 1-14 103(a)
Matthews 1-14 103(a)
Matthews and Stubbs 1-14 103(a)

CONTENTIONS
Patent Owner argues that the Examiner erred in rejecting claims 15-24
as impermissibly broadened under 35 U.S.C. § 314(a) (PO App. Br. 12-15).
Patent Owner further asserts that the ‘472 Patent contains sufficient
disclosure to reasonably convey to one skilled in the relevant art that the
inventors had possession of the claimed invention, which recites a device for
monitoring a performance parameter “located near the user’s foot” (PO App.
Br. 10-11). Patent Owner also contends that one of ordinary skill, upon
reviewing Figure 1 of the ‘472 Patent and attendant disclosure, would have
understood that device 102 mounted to a user’s foot is located “near” the
user’s foot, and thus that the claimed invention is not indefinite under § 112,
second paragraph (PO App. Br. 11-12).
Patent Owner argues that the Examiner erred in rejecting claims 11
and 24 based on various combinations of prior art references (PO App. Br.
15-22).
Requester contends that the Examiner erred in declining to adopt
several proposed prior art rejections over one or more of Stubbs, Root, and
Matthews (Req. App. Br. 15-22).
ISSUES
Patent Owner’s and Requester’s contentions present us with the
following issues:
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1. Did the Examiner err in rejecting claims 1-24 under 35 U.S.C. §
112, first paragraph?
2. Did the Examiner err in rejecting claims 1-24 under 35 U.S.C. §
112, second paragraph?
3. Are claims 15-24 broader than each and every claim of the ‘472
Patent, in violation of 35 U.S.C. § 314(a)?
4. Did the Examiner err in rejecting claims 1-24 under 35 U.S.C.
§ 103(a)?
5. Did the Examiner err in declining to adopt the six grounds of
rejection argued by Requester?

PRINCIPLES OF LAW
Under the written description requirement of 35 U.S.C. § 112, the
disclosure of the application relied upon must reasonably convey to one of
ordinary skill in the art that, as of the filing date of the application, that the
inventor had possession of the later-claimed subject matter. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). "One shows that one is 'in
possession' of the invention by describing the invention, with all its claimed
limitations, not that which makes it obvious." Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (emphasis in original).
Although "the meaning of terms, phrases, or diagrams in a disclosure is to be
explained or interpreted from the vantage point of one skilled in the art, all
the limitations must appear in the specification." Id. The Specification need
not describe the claimed subject matter in exactly the same terms as used in
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the claims, but it must contain an equivalent description of the claimed
subject matter. Id.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). Claims must “particularly point[] out and distinctly claim[] the
subject matter which the applicant regards as his invention.” 35 U.S.C. §
112, ¶ 2. However, “[o]nly claims not amenable to construction or insolubly
ambiguous are indefinite….A claim term is not indefinite just because it
poses a difficult issue of claim construction.” Star Scientific, Inc. v. R.J.
Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008) (internal
citations and quotation marks omitted). “Thus, the definiteness of claim
terms depends on whether those terms can be given any reasonable
meaning.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347
(Fed. Cir. 2005).
A claim presented in a reexamination proceeding enlarges the scope
of the claims of the patent being reexamined when the claim is broader than
each and every claim of the patent. See MPEP § 1412.03 for guidance as to
when the presented claim is considered to be a broadening claim as
compared with the claims of the patent, i.e., what is broadening and what is
not. If a claim is considered to be a broadening claim for purposes of
reissue, it is likewise considered to be a broadening claim in reexamination.
MPEP § 2658 (Rev. 9, August 2012).
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A claim of a reissue application enlarges the scope of the claims of the
patent if it is broader in at least one respect, even though it may be narrower
in other respects. MPEP § 1412.03 (Rev. 9, August 2012).
Section 103(a) forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’

KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
U.S. at 407, (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”)
ANALYSIS
REJECTION UNDER 35 U.S.C. § 112, 1
ST
PARAGRAPH
We are not persuaded by Requester’s arguments that claims 1-24
should be rejected under 35 U.S.C. § 112, first paragraph (Req. Resp. Br. 7-
8). We agree with Patent Owner that Figure 1 of the ‘472 Patent illustrates
the placement of “foot-mounted unit” 102 near a user’s foot (Fig. 1; col. 21,
ll. 4-5; PO App. Br. 11). We find that the ‘472 patent thus reasonably
conveys to one of ordinary skill in the art that, as of the filing date of the
application, the inventor had possession of the later-claimed subject matter.
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Vas-Cath Inc., 935 F.2d at 1563. We do not sustain the Examiner’s rejection
of claims 1-24 under § 112, first paragraph.
REJECTION UNDER 35 U.S.C. § 112, 2
ND
PARAGRAPH
We are similarly unpersuaded that the claim phrase “near a user’s
foot” fails to particularly point out and distinctly claim the subject matter
sought to be patented (Req. Resp. Br. 7-8). The ‘472 Patent illustrates “foot-
mounted unit” 102 in Figure 1, and further (negatively) defines the claim
phrase through its description of other embodiments. “[T]he invention is not
limited to embodiments wherein the unit is mounted on the user’s foot. . . .
[T]he foot-mounted unit 102 may alternatively be mounted at other locations
on the body of the user. . . . The unit 102 may, for example, be mounted on
the ankle, thigh, waist, chest, etc. of the user in connection with different
embodiments of the invention” (col. 21, ll. 41-51).
We find that the ‘472 Patent’s disclosure that in other embodiments,
unit 102 may be mounted at other body positions distant from the foot,
means that those skilled in the art would understand the phrase “near a user’s
foot” to mean proximate to the foot, and that the claim term “near” is not to
be construed as including proximity to some other part of the body, such as
the “ankle, thigh, waist, chest” examples enumerated in the disclosure of the
‘472 Patent. We do not sustain the Examiner’s rejection of claims 1-24
under § 112, second paragraph.
REJECTION OF CLAIMS 15-24 UNDER 35 U.S.C. § 314(A)
We agree with Requester that claims 20-24 are broader than “each and
every claim of the patent,” as required by MPEP § 2658 (PO App. Br. 13).
Independent claim 20 recites “a first preconfigured distance interval” and “a
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second preconfigured distance interval,” rather than “prior to the outing,
configuring the at least one device” as claim 1 of the ‘472 Patent recites. We
agree with Requester that “a hypothetical system may include a processor
adapted to provide the method steps (a) through (d) of original claim 1
except that the configuration of intervals must be conducted after an outing
has begun” (Resp. Br. 13). “[T]his system would not practice the method
steps of original claim 1 and, accordingly, would not infringe the original
claim. However, because new claim 20 more broadly requires that intervals
be ‘preconfigured’ . . . this hypothetical system would nevertheless infringe
new claim 20” (Id.). We observe that Patent Owner agrees that
“preconfigured” is broader than “prior to the outing” (PO App. Br. 13).
Conversely, we agree with Patent Owner that claims 15-19 are not
broader than each and every claim of the ‘472 Patent. Unlike claim 20,
claims 15-19 are issued claims of the patent. Patent Owner has established
that amended claim 15 contains each and every limitation of patented claim
15, as well as further limitations added by amendment (PO App. Br. 13-14).
Claims 16-19, dependent from claim 15, are unamended.
Because claims 20-24 are each broader in at least one respect than the
original claims, we sustain the rejection of claims 20-24 under 35 U.S.C.
§ 314(a). We do not sustain the rejection of claims 15-19, because the claims
are not broader than each and every claim of the ‘472 Patent.

§ 103 REJECTIONS OF CLAIMS 11 AND 24
We agree with Requester that the rejections of claims 11 and 24 under
35 U.S.C. § 103 should be maintained.
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Claims 11 and 24 recite “indicating to the user that the user should
rest for a period of time after having completed the first distance interval and
before beginning the second distance interval.” The ‘472 Patent defines
“rest” as “slow down considerably or stop exercising completely” (col. 66,
ll. 50-54; see Req. Resp. Br. 9).
With respect to the rejections over Stubbs (in view of Damen,
Whalen, or Fyfe), we agree with Requester that Stubbs allows a user to
preconfigure multiple interval runs wherein a user maintains a first
predetermined pace for a first predetermined period and a second
predetermined pace for a second predetermined period. Stubbs discloses that
one of these may be slower (e.g., a walk pace) than another. Req. Resp. Br.
9, 10; Stubbs col. 24 ll. 6-41. We agree with Requester that it would have
been obvious to configure Stubbs such that the pace of one interval would be
considerably slower than the pace of temporally adjacent intervals, within
the ‘472 Patent’s definition of “rest” (Req. Resp. Br. 10).
With respect to the rejections over Root (in view of Damen, Whalen,
or Fyfe, with or without Matthews or Stubbs), we agree with Requester that
Root discloses a user setting a plurality of performance targets (Req. Resp.
Br. 12; Root p. 15). Root monitors performance data and makes real-time
recommendations to a user to increase or decrease effort, including accurate
indications of elapsed time, distance, and other data (Req. Resp. Br. 12; Root
pp. 17, 23). As a consequence of Root’s disclosure that a user may set a
plurality of performance targets, we agree with Requester that it would have
been obvious to indicate “rest,” as defined in the ‘472 Patent, between first
and second intervals (Req. Resp. Br. 12).
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With respect to the rejections over Matthews (in view of Damen,
Whalen, or Fyfe, with or without Stubbs or Root), we agree with Requester
that Matthews discloses that intervals having varying exercise levels may be
programmed in any order as desired and for any desired period of time
(Matthews col. 9, l. 16 – col. 10, l. 25; Req. Resp. Br. 11). Thus, we agree
with Requester that it would have been obvious for the user in Matthews to
program a first exercise interval, a considerably slower “cool off” interval,
and a second exercise interval (Req. Resp. Br. 11, Matthews col. 9-10).
We thus sustain the Examiner’s rejections of claims 11 and 24 over
the various combinations of references enumerated in the Right of Appeal
Notice.
CLAIMS 1-10 AND 12-23
Patent Owner only provides specific argument directed to the
rejections of claims 11 and 24 (PO App. Br. 15-22). We sustain pro forma
the various prior art rejections of claims 1-10 and 12-23 contained in the
Right of Appeal Notice (see listing at RAN 9-13), and not contested by
Patent Owner.
Patent Owner nonetheless contends that the prior art rejections of
claims 1-10 and 12-23, over one or more of Stubbs, Root, Matthews,
Damen, Whalen, or Fyfe, fail to show all the features recited in the claims
(PO App. Br. 23). Patent Owner seeks to incorporate by reference arguments
and remarks made in Patent Owner’s Arguments/Remarks Made in an
Amendment, filed September 20, 2010, and Patent Owner’s
Comments/Amendments after Action Closing Prosecution, filed November
7, 2011. However, according to 37 C.F.R. § 41.67(c)(vii), “[a]ny arguments
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or authorities not included in the brief permitted under this section or
§§ 41.68 and 41.71 will be refused consideration by the Board, unless good
cause is shown.”
2
We do not consider the arguments that Patent Owner seeks
to incorporate by reference.

REMARKS CONCERNING STATUS OF AMENDMENTS
Patent Owner’s remarks concerning the Examiner’s non-entry of
claim amendments (App. Br. 3-5) are noted. We do not address this issue
because Patent Owner’s arguments are directed to a matter that is not
appealable, but rather petitionable to the Director. See In re Watkinson, 900
F.2d 230, 232-33 (Fed. Cir. 1990) (The Board has no jurisdiction for matters
within the discretion of the examiner and not tantamount to a rejection of
claims).

THE REMAINING REJECTIONS NOT ADOPTED BY THE EXAMINER
Review of alternative prior art bases for rejection to claims, which
have already been determined to be appropriately rejected over the prior art,
is discretionary. See, e.g., In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir.
2009) (not reaching rejections based on obviousness when claims already

2
Throughout its 23 page Appeal Brief, Appellant refers to approximately 29
pages from the PO Comments. See PO App. Br. 23. According to 37
C.F.R. 1.943(c), “Appellant’s briefs filed by the patent owner and the third
party requester shall not exceed thirty pages or 14,000 words in length,
excluding appendices of claims and reference materials such as prior art
references.” If Appellant were permitted to incorporate 29 pages of material
into its 23 page brief, the result would significantly exceed the page limit
provided by the Rules.
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rejected as anticipated). We exercise our discretion and decline to reach the
merits of the rejections not adopted by the Examiner, from whose non-
adoption Requester appeals (Req. Br. 13-21).

CONCLUSIONS
1. The Examiner erred in rejecting claims 1-24 under 35 U.S.C. § 112,
first paragraph.
2. The Examiner erred in rejecting claims 1-24 under 35 U.S.C. § 112,
second paragraph.
3. Claims 20-24 are broader than each and every claim of the ‘472
Patent, in violation of 35 U.S.C. § 314(a). Therefore, the Examiner did not
err in rejection claims 20-24 under 35 U.S.C. § 314(a). Claims 15-19 are not
broader than each and every claim of the ‘472 Patent. Therefore, the
Examiner erred in rejecting claims 15-19 under 35 U.S.C. § 314(a).
4. The Examiner did not err in rejecting claims 1-24 under 35 U.S.C.
§ 103(a).
5. We do not reach the question whether the Examiner erred in
declining to adopt the six grounds of rejection argued by Requester.
ORDER
The Examiner’s rejection of claims 1-24 is affirmed.

AFFIRMED

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ack

Patent Owner:

Banner & Witcoff, LTD
1100 13th Street, N.W.
Suite 1200
Washington, D.C. 20005-4051

Third Party Requester:

STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.c.
1100 NEW YORK AVENUE N.W.
WASHINGTON, DC 20005