Ex Parte Cameron et al

Board of Patent Appeals and Interferences

May 21, 2003

09156540 (B.P.A.I. May. 21, 2003)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DON T. CAMERON and AUGUST L. SLIVNIK
____________
Appeal No. 2002-1904
Application No. 09/156,540
____________
HEARD: April 16, 2003
____________
Before JERRY SMITH, LEVY, and BLANKENSHIP, Administrative Patent Judges.
BLANKENSHIP, 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 1-34, which are all the claims in the application.
We affirm-in-part.
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Application No. 09/156,540
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BACKGROUND
The invention is directed to apparatus and method for analyzing a golfer’s swing
and determining a suitable golf club configuration for that individual. Claim 16 is
reproduced below.
16. A method for configuring a golf club in accordance with an individual
golfer’s swing, comprising the steps of:
providing to a golfer a first golf club with predetermined dimensions, said
first golf club including a shaft and club head with a strike face;
positioning a golf ball in a striking location;
positioning high-speed video camera means near the striking location to
obtain video images of the first golf club, the golf ball, and the golfer using the
first golf club during the golfer’s swing at the golf ball in the striking location;
activating said video camera means to obtain the video images during and
after impact by said first golf club upon the golf ball;
storing images obtained by said video camera means during a golfer’s
swing;
determining from said stored video images the position of the first golf
club during the golfer’s swing; and
configuring and dimensioning a second golf club that will produce
predetermined golf ball performance results for the golfer based on data
obtained from the position of the first golf club during the golfer’s swing.
The examiner relies on the following references:
Gobush et al. (Gobush) 5,501,463 Mar. 26, 1996
Nesbit et al. (Nesbit) 5,772,522 Jun. 30, 1998
(filed Nov. 23, 1994)
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Schmoll 5,911,636 Jun. 15, 1999
(filed Jan. 16, 1998)
Butler et al. (Butler) 5,951,410 Sep. 14, 1999
(filed Jan. 3, 1997)
Claims 1, 2, 9, 16, 23, 28, and 31-34 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Nesbit, Schmoll, and Butler.
Claims 3-8, 10-15, 17-22, 24-27, 29, and 30 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Nesbit, Schmoll, Gobush, and Butler.
We refer to the Final Rejection (Paper No. 7) and the Examiner’s Answer (Paper
No. 12) for a statement of the examiner’s position and to the Brief (Paper No. 11) and
the Reply Brief (Paper No. 14) for appellants’ position with respect to the claims which
stand rejected.
OPINION
Grouping of claims
Appellants submit (Brief at 4-5) that the claims stand or fall together with respect
to the first ground of rejection, but assert three separate groups of claims to be argued
in response to the second ground of rejection. Accordingly, we select claim 16 as
representative in our consideration of the first ground of rejection, and claims 17, 21,
and 7 as representative with respect to the second ground. See 37 CFR § 1.192(c)(7).
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Application No. 09/156,540
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Claims 1, 2, 9, 16, 23, 28, 31-34
In response to the section 103 rejection over Nesbit, Schmoll, and Butler,
appellants contend (Brief at 6-7) that the references fail to teach or suggest recording
and analyzing the interaction between club and ball during a golfer’s swing, including
actual ball performance, and determining from the analysis a club that will provide
optimal ball performance.
Schmoll describes method and apparatus for analyzing recorded images of a
golf swing. The reference teaches that two key parameters in fitting a club to a golfer
are the club length and head-to-shaft angle. Col. 1, ll. 29-43. Schmoll further notes
that a typical model of golf club had about five possible lengths and about five possible
head-to-shaft angles. Id. at ll. 54-64.
Schmoll’s invention includes using cameras for recording an image of a person
swinging a club at least at the moment of impact with a golf club, and providing means
capable of measuring, from the recorded image, the horizontal projection of a club shaft
on a reference plane and the angle of elevation between the reference plane and shaft
of the club. Col. 2, ll. 53-68.
In a preferred embodiment, a digital video camera 18 (Fig. 1) is capable of
rapidly acquiring a series of images of the golfer 10 as the golfer swings club 12 and
strikes golf ball 14. Col. 3. ll. 25-39. A second camera 22 is located directly above the
golfer and provides an overhead view, primarily for evaluation of swing dynamics and
for selecting an image from first camera 18 for use in club fitting. Id. at ll. 51-59. The
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system includes an image analyzer 26 and monitor 28. Col. 4, ll. 1-6. Pairs of light
generators and sensors 34, 36 measure speed of the golf ball after impact. Id. at ll. 7-
23. The golfer repeats several trials, and the recorded images of the swings are
examined using image analyzer 26 and, along with calculated ball speed, displayed on
monitor 28. The most representative swing of the golfer from among the recorded
images is identified. Ball speed may be used to judge that the golfer hit the ball solidly.
Id. at ll. 28-56.
The relevant distance and angles at approximately the moment of impact with
the ball in a representative swing may be ascertained from a calibrated grid on the
display (Fig. 2) or may be measured internally by image analyzing software. The
dimensions are used to determine the optimum length and head-to-shaft angle for the
golfer for that particular club. Col. 4, l. 57 - col. 5, l. 24.
Instant claim 16 requires positioning high-speed video camera means near the
striking location to obtain video images of the first golf club, the golf ball, and the golfer
using the first golf club during the golfer’s swing at the golf ball in the striking location.
We note that appellants’ specification (p. 5, ll. 24-28) teaches that any type of high
speed video camera may be used, and that appellants have chosen not to rely for
patentability on the subject matter of dependent claims which set forth more specific
requirements of a high-speed video camera.
We find that Schmoll’s disclosure of video cameras capable of acquiring a series
of images as the golfer swings would have, at the least, suggested use of high-speed
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video cameras within the scope of claim 16, particularly in view of the fact that Schmoll
wanted to isolate an image at approximately the moment of impact with the ball.
Further, the high-speed nature of the cameras would have meant that the golf ball, in
addition to the golf club and the golfer, would have appeared in the video images.
Moreover, claim 16 does not recite that any analysis is performed with respect to the
image of the golf ball. The configuring and dimensioning of the “second club” is based
on data obtained “from the position of the first golf club during the golfer’s swing,” which
is precisely the data disclosed by Schmoll in the analysis for configuring and
dimensioning of the second club.
Even if Schmoll were not regarded as teaching use of a high-speed video
camera as required by claim 16, such suggestion is present in additional prior art
applied against the claim. Butler discloses a data acquisition and display system 60
(Fig. 8) which utilizes a specialized golf club 62 (Fig. 9) having bending or deflection
sensors. Col. 5, l. 24 - col. 6, l. 12. The system includes a high speed camera 106 to
take a series of high speed pictures of the golfer just before, during, and after impact
with the ball. Col. 8, ll. 1-9. Because an important parameter is the launch angle of the
ball which occurs at the point of impact of the club head (col. 4, ll. 46-48), software in
the data acquisition system determines launch angle of the ball and a measure of
distance in yards that the ball would normally travel. Col. 8, ll. 43-61. Acquisition of the
travel-distance information does not require use of the specialized golf club. Butler
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teaches, on the contrary, that an actual, practical club is best used in that particular
application. Col. 9, l. 5 et seq.
Butler’s teaching of a high speed camera and data acquisition subsystem for
acquiring additional important parameters would have suggested combination with the
system of Schmoll. Thus, while we regard Schmoll as teaching a high-speed video
camera within the meaning of instant claim 16, the combined teachings of Schmoll and
Butler would have suggested an even higher speed video camera, capable of recording
several images of a golf ball as it is propelled from the head of a club.
We have considered all of appellants’ arguments in response to the rejection of
claims 1, 2, 9, 16, 23, 28, and 31-34 under 35 U.S.C. § 103 as being unpatentable over
Nesbit, Schmoll, and Butler. We are in substantial agreement with the examiner that
the bulk of appellants’ arguments are not commensurate with the scope of the invention
set forth by representative claim 16. The claims measure the invention. SRI Int’l v.
Matsushita Elec. Corp., 775 F.2d 1107, 1121, 227 USPQ 577, 585 (Fed. Cir. 1985) (en
banc). During prosecution before the USPTO, claims are to be given their broadest
reasonable interpretation, and the scope of a claim cannot be narrowed by reading
disclosed limitations into the claim. See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989); In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550 (CCPA
1969).
Appeal No. 2002-1904
Application No. 09/156,540
1 Although “said golf club” in claim 17 lacks proper antecedent, we interpret the reference to be to
the claim 16 “first” golf club, as that is the one from which video images are obtained.
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We thus sustain the section 103 rejection of claims 1, 2, 9, 16, 23, 28, and 31-
34.
Claims 3-5, 10-14, 17-20, 22, 24, 25, 27, 29, 30
Although appellants suggest that claims 3-5, 10-14, 17-20, 22, 24, 25, 27, 29,
and 30 require more than that set forth by the claims, representative claim 17 recites
determining from stored video images the amount the predetermined dimensions of the
golf club must be adjusted to provide the golfer with predetermined performance of the
golf ball following impact by the club.1 We need go no further than Schmoll to find the
teaching alleged to be lacking from the prior art. As we have discussed supra in our
consideration of the disclosure of Schmoll, the reference teaches the additional
requirements of claim 17 at least at col. 5, lines 17 through 37.
We sustain the section 103 rejection of claims 3-5, 10-14, 17-20, 22, 24, 25, 27,
29, and 30.
Claims 6, 15, 21, 26
Appellants assert that the references fail to teach or suggest the confirming step
of representative claim 21. The rejection relies on Butler and Gobush for suggestion of
the additional parameters recited by the claim. In response to appellants’ arguments,
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the examiner points to specific portions of the Gobush reference in the Answer at page
12, including the data obtained as shown in the tables in Figure 7. The examiner finds
that the teachings would have suggested the means or step of confirming the strike
face (or putter loft) that will provide improved golf ball performance.
Claim 21 requires confirming the “strike face angle of the club head.” However,
the claim further requires that the confirming step includes analyzing, from side view
video images of the golf ball, the performance of a golf ball following impact with the
golf club. The relevant portion of the statement of the rejection (Answer at 6-7) relies
on Gobush for teaching confirmation of strike face angle, but relies on Butler for
capturing images of a ball after impact by a golf club head. We do not find in the
rejection, however, any rationale for a combination that would result in all the
requirements of instant claim 21. Claims 6 and 26 recite subject matter similar to claim
21.
Instant claim 15 requires means for confirming the loft of a putter, with the
confirming means including means for determining, from side view video images of the
golfer’s putting grip, the amount the golfer’s wrists are moving during a putting stroke.
We do not find where disclosure or suggestion for all the requirements of claim 15 has
been set out in the rejection.
Since we agree in substance that a case for prima facie obviousness has not
been established for claims 6, 15, 21, and 26, we do not sustain the rejection of those
claims.
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Claims 7, 8
Although Schmoll shows a video camera 18 (Fig. 1) behind the striking location
of the ball and an overhead camera 22, the reference makes clear (col. 3, ll. 61-64) that
additional cameras may be useful. Appellants argue that nothing in the applied
references, however, suggests placement of a camera in front of the striking location
and in line with a golfer’s target during a swing at the golf ball in the striking location, as
required by instant claim 7.
Schmoll further teaches, however, that the camera for recording an image of the
person at least at the moment of impact of the club with the golf ball is positioned to
record an image “from one of the front and rear” of the person swinging the golf club.
Although Schmoll’s embodiment of Figure 1 describes camera 18 as placed to the rear
of the golfer, the lens is aligned “in the intended direction of ball flight.” Col. 3, ll. 41-41.
The artisan would have recognized, in consideration of the reference as a whole, that a
camera such as camera 18 could also be placed in the “front” of the person swinging
the golf club and acquire the relevant data -- e.g., the dimensions shown in Schmoll’s
Figure 2.
We thus find suggestion in Schmoll for placement of video capture means that
meets the broad terms of instant claim 7. We also note that the claim does not exclude
any additional structures that the artisan might deem necessary for protecting a camera
placed in front of a golfer and “in line with a golfer’s target during a swing at the golf
ball,” as recited by the claim.
Appeal No. 2002-1904
Application No. 09/156,540
2 We note a paper in the instant file wrapper (Paper No. 21), submitted by appellants via facsimile
communication on April 17, 2003, styled “Post-Hearing Remarks.” We did not request any additional
papers from appellants. Accordingly, the paper has not been considered. See Ex parte Cillario, 14
USPQ2d 1079, 1080 (Bd. Pat. App. & Int. 1989) (an unrequested paper submitted after oral hearing is
entitled to no consideration).
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We thus sustain the section 103 rejection of claims 7 and 8.
Arguments considered
In making our determinations, we have considered all of appellants’ arguments
that were timely presented.2 Arguments not timely presented are deemed waived. See
37 CFR § 1.192(a) (“Any arguments or authorities not included in the brief will be
refused consideration by the Board of Patent Appeals and Interferences, unless good
cause is shown.”) and § 1.192(c)(8)(iv) (the brief must point out the errors in the
rejection).
CONCLUSION
We have affirmed the rejection of claims 1-5, 7-14, 16-20, 22-25, and 27-34
under 35 U.S.C. § 103, but we have reversed the rejection of claims 6, 15, 21, and 26
under the same statute. The examiner’s decision in rejecting claims 1-34 is thus
affirmed-in-part.
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2002-1904
Application No. 09/156,540
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