Ex Parte 7,789,800 et al

Patent Trial and Appeal Board

Sep 28, 2015

95002359 (P.T.A.B. Sep. 28, 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.
95/002,359 09/14/2012 7,789,800 I1618.10002US01 8094
97149 7590 09/29/2015
Maschoff Brennan
1389 Center Drive, Suite 300
Park City, UT 84098
EXAMINER
DEMILLE, DANTON D
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/29/2015 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
____________________

STRAVA, INC.; MAPMYFITNESS, INC.; &
FITNESSKEEPER, INC.
Third Party Requesters

v.

ICON HEALTH & FITNESS, INC.
Patent Owner
____________________

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Technology Center 3900
____________________

Before: STEVEN D. A. McCARTHY, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued September 7, 2010 to Scott R. Watterson et al. (hereinafter referred
to as the '800 patent).
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STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. § 134(b) and 315(a) from
the Examiner's rejection of claims 7, 11, 12, 39–43, 45, 46, 50–54, 56–71,
73, 74, and 77–100. The Requesters appeal the Examiner's non-adoption of
proposed rejections of claims 39–65, 80–87, and 98–100. Claims 1–37 were
original to the '800 patent and claims 38–100 were added during the
reexamination prosecution. Claims 1–6, 8–10, 13–38, 44, 47–49, 55, 72, 75,
and 76 were cancelled during the reexamination prosecution. We have
jurisdiction under 35 U.S.C. § 6(b).
We are informed that the '800 patent is the subject of five litigations
pending in the US District Court for the District of Utah:
Icon Health & Fitness et al. v. Garmin Ltd. et al., Civil Docket No.
l:ll-cv-00166-DB, filed November 11, 2011;
Icon Health & Fitness et al. v. Polar Electro Oy, Civil Docket No.
1:l l -cv- 00167-PMW, filed November 11, 2011;
Icon Health & Fitness et al. v. FitnessKeeper, Inc., Civil Docket No.
l:ll-cv-00173-CW, filed December 9, 2011;
Icon Health & Fitness et al. v. MapMyFitness, Inc., Civil Docket No.
1:l l-cv-00174-DB, filed December 9, 2011; and
Icon Health & Fitness et al. v. Strava, Inc., Civil Docket No. l :l l-cv-
00175-CW, filed December 9, 2011.
We AFFIRM the Examiner's decision. Because this affirmance
sustains rejections of all pending claims we decline to reach the Requesters'
cross-appeal.

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THE INVENTION
The Patent Owner's invention "relates to exercise equipment and,
more specifically, to systems and methods for providing improved exercise
devices in combination with other users and/or a live or stored trainer via a
communications network. Spec. col. 1, ll. 48–51. Claims 12 and 7,
reproduced below, are illustrative of the claimed subject matter:
1. An exercise system, comprising:
a portable physical activity sensing system comprising:
a sensor configured to be associated with a user and
configured to sense a physical activity parameter of the user
during the performance of physical activity by the user; and
a memory in communication with the sensor, wherein the
sensor communicates data representative of the sensed physical
activity parameter to the memory, and wherein the memory
stores the data representative of the sensed physical activity
parameter; and
a separate communication system comprising:
a communication device for receiving physical activity
related information from the portable physical activity sensing
system;
a memory configured to store physical activity related
information regarding the user of the portable physical activity
sensing system; and
a processor configured to analyze and update information
received from the portable physical activity sensing system,
wherein the communication device sends information
either to the portable physical activity sensing system, to the
user of the portable physical activity sensing system, or to both
the user and the portable physical activity sensing system, and
wherein the portable physical activity sensing system
records information about the user's physical activity and sends
the information to the separate communication system, the

2 Claim 1 was cancelled, but claim 7, which is on appeal, depends from
claim 1.
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separate communication system updates the user's stored
information with the information received from the portable
physical activity sensing system, and wherein the user may
access the updated information stored by the separate
communication system.

7. The exercise system of claim 1, wherein the memory of
the portable physical activity sensing system comprises a
removable memory.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Schminke
Matthews
Dempsey
Browne
Tsuda
Root
Poulton
Pyles
Hickman
Larson
Jacobsen
Mault
Shum
Stubbs
Narayanaswami
Teller
Schweikhardt
Kuusela
Henderson
Margulis
Damen
US 4,860,763
US 4,867,442
US 5,417,222
US 5,598,849
US 5,906,581
US 6,013,007
US 6,066,075
US 6,175,608 B1
US 6,193,631 B1
US 6,196,631 B1
US 6,198,394 B1
US 6,513,532 B2
US 6,585,622 B1
US 6,736,759 B1
US 7,477,890 B1
US 7,689,437 B1
WO 87/05727 A1
WO 97/49077 A1
WO 98/00204 A1
WO 99/30613 A1
WO 99/44016 A1

Aug. 29, 1989
Sep. 19, 1989
May 23, 1995
Feb. 4, 1997
May 25, 1999
Jan. 11, 2000
May 23, 2000
Jan. 16, 2001
Feb. 27, 2001
Mar. 6, 2001
Mar. 6, 2001
Feb. 4, 2003
July 1, 2003
May 18, 2004
Jan. 13, 2009
Mar. 30, 2010
Sep. 24, 1987
Dec. 24, 1997
Jan. 8, 1998
June 24, 1999
Sep. 2, 1999
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THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root and Tsuda. RAN 5.
2. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matthews and Tsuda. RAN 6.
3. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Browne and Tsuda. RAN 6.
4. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hickman and Matthews. RAN 7.
5. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schweikhardt and Tsuda. RAN 8.
6. Claims 11 and 12 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over Matthews and Schminke. RAN 9.
7. Claims 11 and 12 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over Browne and Schminke. RAN 10.
8. Claims 11 and 12 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over Hickman and Matthews. RAN 10.
9. Claims 11 and 12 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over Schweikhardt and Schminke. RAN 11.
10. Claims 39, 64, 79, 80, 84, 85, 87–89, 91, 93, and 95–100 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Root and
Jacobsen. RAN 12.
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11. Claims 40–42, 50–52, 54, 56, 63, and 81–83 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Root, Jacobsen, and
Henderson. RAN 16.
12. Claim 57–62 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Jacobsen, Henderson, and Teller. RAN 18.
13. Claim 43 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Jacobsen, Henderson, and Poulton. RAN 18.
14. Claims 45, 46, and 53 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Root, Jacobsen, Henderson, and Narayanaswami.
RAN 19.
15. Claims 65, 86, 90, 92, and 94 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Root, Jacobsen, and Teller. RAN 19.
16. Claims 39, 64, 79, 80, 84, 85, 88, 89, 91, 93, 95, and 97 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Root and
Stubbs. RAN 20.
17. Claims 40, 51, 52, 54, 56, 63, 81–83, and 87 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Root, Stubbs, and
Henderson. RAN 20.
18. Claims 41–44 and 48–50 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Root, Stubbs, Henderson, and Jacobsen.
RAN 20.
19. Claims 45 and 46 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Root, Stubbs, Henderson, Jacobsen, and
Narayanaswami. RAN 21.
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20. Claim 47 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Stubbs, Henderson, Jacobsen, and Dempsey. RAN
21.
21. Claim 53 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Stubbs, Henderson, and Narayanaswami. RAN 21.
22. Claim 57–62 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Stubbs, Henderson, and Teller. RAN 22.
23. Claims 65, 86, 90, 92, and 94 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Root, Stubbs, and Teller. RAN 22.
24. Claim 96 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Stubbs, and Jacobsen. RAN 23.
25. Claims 66 and 67 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Root and Teller. RAN 23.
26. Claims 68 and 69 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Root, Teller, and Henderson. RAN 24.
27. Claims 70, 72, and 76 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Root, Teller, Henderson, and Jacobsen. RAN 25.
28. Claim 71 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Teller, Henderson, Jacobsen, and Poulton. RAN 25.
29. Claims 73 and 74 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Root, Teller, Henderson, Jacobsen, and
Narayanaswami. RAN 26.
30. Claim 75 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Teller, Henderson, Jacobsen, and Dempsey. RAN
26.
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31. Claims 77 and 78 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Root, Teller, and Pyles. RAN 27.
32. Claim 98–100 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root and Shum. RAN 27.
33. Claims 38, 39, 79, 88, 91, 93, 95, and 97 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Root and Margulis. RAN 27.
34. Claims 40 and 51 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Root, Margulis, and Henderson. RAN 28.
35. Claims 41, 42, 45, 49, and 50 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Root, Margulis, Henderson, and
Narayanaswami. RAN 28.
36. Claim 43 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Margulis, Henderson, Narayanaswami, and Poulton.
RAN 29.
37. Claims 44 and 48 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Root, Margulis, Henderson, Narayanaswami, and
Mault. RAN 29.
38. Claim 46 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Margulis, Henderson, Narayanaswami, and
Jacobsen. RAN 29.
39. Claim 47 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Margulis, Henderson, Narayanaswami, and
Dempsey. RAN 30.
40. Claims 52, 55, 56, and 63 stand rejected under 35 U.S.C.
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§ 103(a) as being unpatentable over Root, Margulis, Henderson, and Damen.
RAN 30.
41. Claims 53 and 54 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Root, Margulis, Henderson, Damen, and
Narayanaswami. RAN 30.
42. Claim 57–62 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Margulis, Henderson, Damen, and Teller. RAN 31.
43. Claim 64 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Margulis, and Narayanaswami. RAN 31.
44. Claim 65 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Margulis, Damen, and Teller. RAN 33.
45. Claims 80 and 84 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Root, Margulis, and Damen. RAN 34.
46. Claim 85–87 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Margulis, Damen, and Teller. RAN 34.
47. Claims 89, 90, 92, and 94 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Root, Margulis, and Teller. RAN 34.
48. Claim 96 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Root, Margulis, and Mault. RAN 35.
ANALYSIS
Rejections of Claim 7
The Patent Owner argues these rejections as a group. App. Br. PO 6.
In particular, the Patent Owner argues that each of the rejections involving
Tsuda is improper because Tsuda is not portable as required by claim 7. Id.
This is allegedly so because Tsuda teaches a stationary exercise bike and
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that the cuff used to measure vital signs of the user is connected to the
stationary bike. Id. The Examiner and Requesters maintain that
combinations involving Tsuda are proper both because Tsuda is portable and
because the portable aspect is taught by the other references, and thus Tsuda
need not teach this. Resp. Br. R 3–5. We agree with the Requesters and the
Examiner on both points.
The Patent Owner suggests that Tsuda is not portable because it is not
"designed to be easily carried or moved by a user." App. Br. PO 7. We see
no basis for the interjection of a degree of ease of portability by the Patent
Owner because there is no specific definition in the Specification limiting
the meaning of portable to being easily moved about and that a broad, but
reasonable definition of portable is simply that it is capable of being carried
or moved about as pointed out by the Requesters. Resp. Br. R 4. Under that
definition, we agree that a stationary exercise bicycle, while maybe less
portable than a memory card, is nonetheless portable to the extent required
by the claims.
Further, even if we did agree with the Patent Owner on this point, it is
irrelevant because the claims do not require portability of the exercise
system itself, in this case the bicycle, but of the physical activity sensing
system. The Examiner relies upon Tsuda to teach a removable memory
card. RAN 36. The Examiner does not rely upon Tsuda to teach portability
of the physical activity sensing system. The devices of each of Root,
Matthews, and Browne, are, as admitted by the Patent Owner, portable
devices. App. Br. PO 6. We agree with the Requesters and the Examiner,
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that the combinations as suggested by the Examiner could be easily adapted
to include removable memory as taught in Tsuda.
Also, the fact that the read/write device is not portable in Tsuda is not
dispositive because Tsuda need not teach such portability. The Patent
Owner has not persuasively argued that Tsuda's read/write capability would
not have been adaptable to the portable devices of Root, Matthews, and
Brown, but merely asserts that because the entire system of Tsuda is not
portable, that the read/write device also would not be portable. We see no
basis for finding that the read/write device of Tsuda would be incompatible
with the portable devices of any of Root, Matthews, and Brown.
Accordingly, we sustain the Examiner's rejections of claim 7 involving
Tsuda and any of Root, Matthews, and Brown.
Regarding the Examiner's rejection of claim 7 over Schweikhardt and
Tsuda, we agree with the Requesters that the mistaken mention of Root
rather than Tsuda on page 38 of the RAN does not change the original
rejection. The Patent Owner has not persuasively argued why the
combination of Schweikhardt and Tsuda is deficient as otherwise explained
by the Examiner and further detailed by the Requesters in the original
Request and subsequent comments during the reexamination prosecution.
See Resp. Br. R 5. We further agree with the Requesters that the "if the
PDU records data from the sensors and transfers the recorded data to the
plug, the sensors and plugs must be 'in communication', even if only
indirectly." Id. Accordingly, we are not persuaded of error in the
Examiner's rejection of claim 7 over Schwekhardt and Tsuda.
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As to the rejection over Hickman and Matthews, the Patent Owner
again argues the references individually without addressing the overall
combination. Specifically, in this case, the Patent Owner argues that
Hickman teaches away from Matthews because Matthews disparages
devices that are not portable. App. Br. PO 9. Even granting that there is a
form of disparagement, such would not be teaching away because the device
of the combination would still be portable. Accordingly, we are not
persuaded of error in the combination of Hickman and Matthews.
The Patent Owner also argues that Hickman fails to teach writable
memory because it discloses only a CD-ROM, which is a Read-Only-
Memory. App. Br. PO 11. Requesters, however, have submitted evidence,
in the form of a Declaration of Frank Koperda stating that, although ROM
stands for Read-Only-Memory, at the time of Hickman, writeable optical
discs and optical drives capable of both reading and writing to optical discs
were well known so that "it would have been obvious to one of ordinary skill
in the art to incorporate a read/write feature into the CD-ROM drive of
Hickman in order to write data to the CD and extend the memory
capabilities of Hickman." Resp. Br. R 8, quoting Koperda Decl. ¶ 15. The
Patent Owner asserts that this declaration is insufficient because it is not
record evidence under K/S HIMPP v. Hear-Wear Technologies, LLC, 751
F.3d 1362 (Fed. Cir. 2014). App. Br. PO 11. The Patent Owner asserts that
only documentary evidence is record evidence and that only a piece of prior
art showing that optical discs were known to be writeable would suffice. Id.
We disagree.
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The rejection of claim 7 is based on the teachings of two patents,
namely, Hickman and Matthews. Mr. Koperda's declaration merely explains
how one of ordinary skill in the art would have understood the teachings of
Hickman and what would have been obvious to a person of ordinary skill in
the art at the time of invention. A declaration is record evidence, just as a
piece of prior art would be, and the Patent Owner has not challenged the
correctness of the evidence submitted, merely the form. The facts here
differ from those in K/S HIMPP. In K/S HIMPP, our reviewing court
sustained the Board's decision not to credit assertions regarding the
knowledge of one of ordinary skill in the art without evidence to support the
assertions. Here, Mr. Koperda's declaration supports the Examiner's finding
that writeable optical discs were known at the time of invention, and the
conclusion that providing a writing feature would have been obvious to one
of ordinary skill in the art. Accordingly, we are not persuaded that Hickman
teaches only read-only-memory and sustain the Examiner's rejection of
claim 7 over Hickman and Matthews.
Rejections of Claims 11 and 12
The Patent Owner alleges that the combinations involving Schminke
are improper because Schminke teaches away from such combinations.
App. Br. PO 12. The Examiner, however, merely utilizes the teaching in
Schminke that one could have either "the separate communication system
remote from the portable physical activity sensing system as shown in figure
1 or have it integrated with the exercise device as taught in figure 2." RAN
42. Thus, the Examiner uses Schminke to teach that an alternative to the
type of remote system taught in all of the references, including Schminke,
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would be to use an integrated system as also taught in Schminke. This is not
teaching away, but utilizing an advantage taught by Schminke and applying
it to the other prior art teachings. As such, we are not persuaded of error and
affirm the Examiner's rejection.
The Patent Owner merely repeats the arguments discussed supra that
Hickman and Matthews are not properly combinable. We reject those
arguments for the same reasons as discussed above. As such we sustain the
Examiner's rejections of claims 11 and 12.
Rejections over Narayanaswami and Teller
The Patent Owner's only arguments regarding these rejections are that
the references are not prior art based on the submission of the Declaration
under 37 C.F.R. § 1.131 that allegedly swears behind the references. (See
Ex. 1 to the App. Br. PO). We agree with the Requesters that the
Declaration is insufficient because the Patent Owner "makes no attempt…to
point to specific evidence supporting each of the claim limitations." Resp.
Br. R 12. The mere allegation that "[t]he '410 Application3 fully discloses
and supports the Invention" is insufficient. Dec. ¶ 3. Furthermore, the
Patent Owner appears to admit that the documentary evidence is insufficient
to prove that all aspects of the invention were conceived prior to the
references at issue and thus points to paragraph 13 of the declaration for
anything missing. App. Br. PO 14. Paragraph 13 is merely an
uncorroborated statement by the inventors that:
Although the screenshots of the earliest models of embodiments
of the Invention shown in Exhibits B and C do not illustrate

3 The '410 Application refers to US Patent Application 09/776,410 to which
the '800 patent claims priority.
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each of the features of the Invention, we had jointly formed in
our minds a definite and permanent idea of all of the features of
the Invention prior to the last modification of the first model
shown in Exhibit B on June 14, 2000.
Such uncorroborated testimony is insufficient to prove an earlier date of
invention. Thus we deem Narayanaswami and Teller prior art and sustain
the Examiner's rejections over these references.
The "Over the Internet" and "E-mail" Limitations
Regarding the rejections that the Patent Owner argues as insufficient
for failing to teach the "over the Internet" limitation (App. Br. PO 14–18),
we agree with the Examiner and the Requesters that it would have been
obvious to send such data or information over the Internet. See Resp. Br. R
12–13. As the Requesters point out (Resp. Br. R 13), Root even specifically
discloses that such information could be sent over a conventional telephone
line using dial-up modems and that such information eventually ends up on
the associated website. See, e.g., RAN 52, citing Root 2:36–39; see also
Root 6:29–41. For the reasons stated by the Requesters, we agree with the
Examiner that it would have been obvious to send such information over the
Internet as claimed. See also RAN 51–52, 69; Requesters' Comments to the
Action Closing Prosecution 7–8.
Regarding the e-mail limitation, which requires users being able to
correspond via e-mail using the claimed website, we see no basis for the
Patent Owner's assertion that Root's disclosure requires the use of an entirely
separate website. App. Br. PO 18. In the portion cited by the Requesters
(Root, col. 9, ll. 55–60), Root describes various things that happen via the
website. As the Patent Owner admits, this portion of Root teaches "users
posting and exchanging favorite local courses via the Internet website"
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(App. Br. PO 18). In fact, everything in the cited portion of Root appears to
occur via the website. We see no persuasive basis to conclude that because
Root does not explicitly state that the e-mail is sent via the website that it is
not (or that it would not have been obvious to do so). Contextually, the
passage at issue is describing features of the website and, absent disclosure
to the contrary, it stands to reason that the e-mail, as with the other data
discussed, is also sent via the website.
Additionally, the Patent Owner argues that Root's e-mail is not "real-
time" as claimed because it is "asynchronous non-real-time communication,
as opposed to synchronous 'real-time' communication." Reply Br. PO 11
(emphasis removed). Claim 97 recites nothing regarding synchronous or
asynchronous communication and requires only that the communication be
"real-time." Given Mr. Koperda's unrebutted declaration testimony (¶¶ 37–
49) that the communication disclosed in Root can be considered real-time
consistent with the '800 patent Specification we agree with the Requesters
that what is disclosed in Root is sufficiently real-time to meet the limitation
of claim 97. Accordingly, we are not persuaded by the Patent Owner's
arguments and sustain the Examiner's rejections of claims 39–43, 45, 46,
50–54, 56–65, 79–97, 99, and 100.
Remaining Arguments
The Patent Owner makes a series of additional arguments stating why
certain claims are improperly rejected by the Examiner. See App. Br. PO
21–32. While we deal with certain specific arguments infra, most of these
arguments are merely cumulative or restatements of arguments already dealt
with above and are also unpersuasive. To any extent we do not specifically
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address any of these remaining arguments, we agree with the Requesters'
rebuttal of such (Resp. Br. R 15– 23) as well as the Examiner's response to
the same (RAN 53–68).
Third Computing Device
The Patent Owner alleges that the rejections of claims 40–43, 45, 46,
50–54, 56–63, 68–71, 73, 74, and 81–83 are improper for failure to disclose
the recited third computing device element. As the Examiner states:
It is noted that Henderson teaches 10:17–21 "[i]ncline sensor
144 ... is driven by CPU 126 ... ". As noted above, Henderson
teaches the heart rate monitor 124 communicates via an RF
transceiver with route computer 108. Using RF transceivers to
wirelessly communicate between computing devices is old and
well known as exemplified by Henderson. If the incline sensor
144 requires a CPU to record the changes in inclination and
transmit the information to the route computer 108 then the
third computing device would likewise include a processor,
memory and a RF wireless interface. Such would have been an
obvious provision in the Root exercise system to record cycle
parameters.
We further agree with the Requesters that this claim element is not skipped
over as asserted by the Patent Owner, but is clearly detailed in the original
Request. See Resp. Br. R 15 (citing to TPR Comments to ACP 11–13 and
the Koperda Declaration). Accordingly, we are not persuaded of error
regarding this aspect of the Examiner's rejections.
Virtual Reality Display
The Patent Owner argues that Poulton does not teach a portable
virtual reality display (App. Br. PO 22) and therefore the rejection is
deficient, but as the Requesters point out, the '800 patent does not describe a
virtual reality display that is part of the portable device (Resp. Br. R 16).
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The Patent Owner selectively cites the Specification to assert that the display
622 must be portable, but when looking at the disclosure as a whole, as
pointed out by the Requesters, the '800 patent discloses that "display 622 can
be remote from control device 604" and that this remote "display 622 can be
a virtual reality (VR) display, cathode ray tube (CRT), and the like." Spec.
col. 51, ll. 57–60. As such, the disclosure does not support an integral VR
display, but discusses remote VR displays only. Also, given that the '800
patent equates VR displays to CRT displays, the disclosure in Poulton of a
mosaic of CRT displays is equivalent to that disclosed in the '800 patent
with respect to any alleged portability as asserted by the Patent Owner.
Further, "a virtual reality display" does not necessarily require a single
discrete monitor as argued by the Patent Owner (App. Br. PO 23), but may
encompass a mosaic of monitors that acts as a single virtual reality display.
Accordingly, we do not find this argument persuasive and sustain the
Examiner's rejection of claims 43 and 71.
Button
Regarding claims 45, 46, 53, and 73, the Patent Owner alleges that a
"button" as claimed "had a very specific meaning to one having ordinary
skill at the time of the invention, and generally refers to a 'touch sensitive
control' that has only two states." App. Br. PO 24. The Patent Owner goes
on to assert that Narayanaswami discloses only a squiggle input function that
is more complicated than a simple button. Id. This selective citation,
however, ignores additional disclosure that specifically states that "the touch
sensitive panel is provided with a four (4) position touch screen" and that
"forward and back navigation for Wrist Watch displays is enabled by
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physically touching certain areas of the touch sensitive panel." Spec., col. 5,
ll. 31–35. Clearly the input disclosed in this passage is of the type that has
only two states, pressed or unpressed, as argued. Accordingly, we do not
find this argument persuasive and sustain the Examiner's rejection.
Voice Activated Controller
The Patent Owner argues that the rejection of claims 46 and 74 is
improper because the Examiner erroneously relies upon the microphone 640
of Jacobsen. App. Br. PO 24. Without rebutting the substance of the
declaration, the Patent Owner again repeats the argument that Mr. Koperda's
declaration evidence supporting the obviousness of this element is
insufficient as not being "record evidence." We do not find this argument
persuasive for the reasons stated above. Furthermore, as the Requesters
state, "without specifically addressing the portions of Jacobsen cited by
Requesters, [Patent Owner] makes a blanket statement that Jacobsen does
not teach the 'two-way audio radio' limitation." Resp. Br. R 18.
Accordingly, we find the Examiner's rejection sufficiently supported by the
record and are not persuaded by the Patent Owner's arguments.
As to claims 57–62 and 65, the Patent Owner merely restates previous
arguments regarding the contacts of the cradle as discussed above.
Analyze
The Patent Owner argues that the Examiner erred in relying upon
Root because the Examiner allegedly relied on the personal computer aspect
of Root and not the portable device as required by the claims. App. Br. PO
28. As the Requesters points out, however, "Root's portable device 'can also
be used as a health monitoring and analysis tool' (Root 3:11–12 . . .) and is
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capable of 'showing progress and trends', i.e. analysis, (Root 10:18–19).'
Resp. Br. R 20. Again, the Patent Owner's selective citation of the
references fails to address portions specifically noted by both the Examiner
and the Requesters that teach the claimed analysis. Accordingly, we sustain
the Examiner's rejection of claims 66–71, 73–75, 77, and 78.
Coupling to Clothing
The Patent Owner argues that the rejection of claims 77 and 78 is
deficient because Pyles teaches a strap to mount the device to the waist
rather than being configured to couple to clothing. App. Br. PO 28–29. As
pointed out by the Requesters, however, Pyle specifically references Sutton,
US Patent No. 5,117,444, issued May 26, 1992, which teaches a pedometer
on a belt, which is clothing. Resp. Br. R 21; see also Sutton 5:20–25.
Requesters also point out that Root specifically "discloses 'unit 101 can be
hooked to an athlete's belt or waistband 203 with a clip 119 (FIG. 1B) as
shown in Fig. 2.' (Root at 5:1–3 (emphasis added)." Resp. Br. R 21.
Accordingly, the Examiner's rejection is properly supported and we sustain
it.
Regarding claim 86, the Patent Owner merely restates arguments
already addressed previously.
Login Information
The Patent Owner argues that the rejection of claim 91 is improper
because Root does not teach obtaining login information from the user.
App. Br. PO 30. The Patent Owner also takes issue with Requesters' use of
an example of a member number as being evidence of this teaching. Id. As
the Requesters argue, however, the example is not even necessary because in
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order to log on to a web site, such a website must, by definition, obtain login
information from the user. Resp. Br. R 22. We agree. The mere act of
logging on must comprise obtaining login information from the user or else
there would be no logging on, there would simply be use of the website. We
find this argument unpersuasive and sustain the Examiner's rejection.
Direct Interaction
Regarding claim 92, the Patent Owner argues that the rejection fails to
support the element requiring direct interaction via a website because "it is
conceivable that the[] personal fitness recommendations could be
automatically generated for the user without any involvement of a 'personal
trainer.'" App. Br. PO 31. While it may be true that it could be done
without direct involvement, Root clearly discloses that users may interact
directly with each other via e-mail as discussed supra. Furthermore, Teller
specifically discloses that "a member may also grant access to his or her data
to a third party such as a health care provider or a personal trainer." Teller
12:1–3. As the Requesters point out, this is an obviousness rejection and the
combination of the teachings sufficiently suggests that, using the direct
communication taught in Root, one of ordinary skill in the art would have
understood that a personal trainer given access to user data as taught in
Teller, could also provide the fitness recommendations. We see no
deficiency in this obviousness rejection and therefore are unpersuaded by the
Patent Owner's arguments.
Accelerometer
The arguments with regard to the rejection of claims 98–100 focus on
one supporting rationale for the rejection (mere substitution) while ignoring
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other rationales set forth by the Examiner and/or the Requesters. As the
Requester points out in its Comments after the ACP, the Patent Owner
"omits that Requester[s] also asserted that incorporating Shum's
accelerometer into the system of Root would have been no more than
'combining prior art elements according to known methods to yield
predictable results. (MPEP 2143.)' (CC-Rsh at 98–1.)" Comments after
ACP, 32. We agree that, regardless of the mere substitution rationale, the
rejection may properly be supported by the other rationales, which the Patent
Owner does not challenge. Accordingly, we sustain the Examiner's
rejection.

DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 7, 11, 12, 39–43, 45, 46, 50–54, 56–71, 73, 74, and 77–100.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). In the event
neither party files a request for rehearing within the time provided in
37 C.F.R. § 41.79, and this decision becomes final and appealable under
37 C.F.R. § 41.81, 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

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PATENT OWNER:

MASCHOFF BRENNAN
1389 CENTER DRIVE, SUITE 300
PARK CITY, UT 84098

THIRD PARTY REQUESTER:

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

CU