Ex Parte Adams

Board of Patent Appeals and Interferences

Oct 12, 2006

10080571 (B.P.A.I. Oct. 12, 2006)

The opinion in support of the decision being entered today was not written
for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte EDWIN H. ADAMS
___________

Appeal No. 2006-2840
Application No. 10/080,571
Technology Center 3700
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ON BRIEF
___________

Decided: October 12, 2006
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Before LEVY, NAPPI, and FETTING, Administrative Patent Judges.
FETTING, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. §134 from the examiner's final rejection of
claims 1, 3 through 5, 7, 8, 10 and 11, which are all of the claims pending in this application.

We AFFIRM.
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Appeal Number: 2006-2840
Application Number: 10/080,571

BACKGROUND

The appellant's invention relates to a distance finder for golf courses. An understanding of
the invention can be derived from a reading of exemplary claim 1, which is reproduced below.
1. A system for providing golfers with distance information relating to the
location of the golfer relative to predefined locations associated with a front of a
hole green and a middle of the hole green, comprising:
a personal digital assistant including a GPS function, a memory, a processor and
an input/output;
a cradle shaped and dimensioned for receiving the personal digital assistant and
transferring information thereto, the cradle including a memory storing
information relating to coordinates on a golf course and an input/output
transmitting information to the personal digital assistant, wherein the coordinates
stored within the memory of the cradle consist of a first coordinate relating to the
front of each of the hole greens and a second coordinate relating to the middle of
each of the hole greens;
wherein the personal digital assistant includes means for calculating and
displaying distance between a golfer's location and a designated coordinate on the
golf course based upon the first and second coordinates as loaded onto the
personal digital assistant via the cradle.

PRIOR ART
The prior art references of record relied upon by the examiner in rejecting the appealed
claims are:
Meadows US 2002/0082775 A1 June 27, 2002 (June 15, 2001)
Ross 5,859,628 January 12, 1999

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Appeal Number: 2006-2840
Application Number: 10/080,571
REJECTION
Claims 1, 3 through 5, 7, 8, 10 and 11 stand rejected under 35 U.S.C. § 103 as obvious over
Meadows in view of Ross.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the appellant
regarding the above-noted rejection, we make reference to the examiner's answer (mailed
October 31, 2005) for the reasoning in support of the rejection, and to appellant’s brief (filed
May 11, 2005) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to appellant’s
specification and claims, to the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of our review, we make the
determinations that follow.

Claims 1, 3 through 5, 7, 8, 10 and 11 rejected under 35 U.S.C. § 103 as obvious over Meadows
in view of Ross.
We note that the appellant argues these claims as a group. Accordingly, we select claim 1 as
representative of the group.
The examiner applies Meadows to all of the claim elements, except for loading data from a
cradle. The examiner applies Ross to show the loading of data into a PDA from a cradle.
The appellant argues that the art applied fails to show a cradle which transfers coordinate
information consisting only of a first coordinate relating to the front of each of the hole greens
and a second coordinate relating to the middle of each of the hole greens [See Brief at p. 8]. The
appellant admits that it is generally true that cradles are used in transferring information to a
PDA [See Brief at p. 9]. However, the appellant argues that Ross does not apply to golf related
applications and that neither Meadows nor Ross describes relying on only data points for the
front and middle of a golf green. The appellant admits that Meadows does describe using the
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Appeal Number: 2006-2840
Application Number: 10/080,571
front and middle of each green as desirable location points, but argues that Meadows teaches that
these are only two of many points [See Brief at p. 10].
The examiner argues that, as the appellant admits, Meadows does describe using the front
and middle of each green as desirable location points, and that selecting which points are matters
of choice [See Answer at p. 3]. The examiner further responds that as to the cradle, Ross is
merely evidence of the notoriety of the use of a cradle for the source of data [See Answer at
p. 4].
We initially note that the specification provides no indication of unusual results arising from
restricting the data elements to two points per hole. The specification describes such an
arrangement as a “simplified version of the present system” [See Specification at p. 12] in which
the device “will calculate his or her location relative to the front and middle of the [] green” [See
Specification at p. 13]. The only benefit of such a system described in the specification is that it
“simplifies the underlying concept of the present invention by requiring the mapping of only 36
coordinates” [See Specification at p. 14].
We next note that Meadows teaches storing a coordinate for each target on a golf course
(“The first process allows the user to survey the target/avoidance objects prior to playing a round
of golf.”) [See Para. 0049]. Examples of such targets are shown in Fig. 19, which, as the
appellant admits, includes both the front and center of the green. We also note that, as argued by
the appellant, additional points are shown which may be selected as well. But we particularly
note that the operator adds whichever targets the operator desires, as indicated by the injunctive
to “Tap Target to Add” in Fig. 19. Therefore, Meadows describes a range of choices for targets
whose coordinates will be stored. The presence of both of the claimed points of interest within
the range of choices places the claimed range of points within the range of points described by
Meadows.
In this type of claim, a prima facie case of obviousness arises when the ranges of a claimed
invention overlap the ranges disclosed in the prior art. See In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003); In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990); In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974). Although such
a case may be rebutted by a showing of unanticipated unusual results over the claimed range, the
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Appeal Number: 2006-2840
Application Number: 10/080,571
specification teaches that the results are exactly those expected, namely carrying exactly two data
points for each hole. Therefore, we find the appellant's arguments to be unpersuasive.
Accordingly we sustain the examiner's rejection of claims 1, 3 through 5, 7, 8, 10 and 11
rejected under 35 U.S.C. § 103 as obvious over Meadows in view of Ross.
CONCLUSION
To summarize,
• The rejection of claims 1, 3 through 5, 7, 8, 10 and 11 rejected under 35 U.S.C. § 103 as
obvious over Meadows in view of Ross is sustained.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED

STUART S. LEVY )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ROBERT E. NAPPI ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

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Appeal Number: 2006-2840
Application Number: 10/080,571

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