Ex Parte Hanoun

Patent Trial and Appeal Board

Sep 23, 2014

11737970 (P.T.A.B. Sep. 23, 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.
11/737,970 04/20/2007 Reed Hanoun 19058.0014 6607
96587 7590 09/24/2014
DAMON MOREY LLP
200 DELAWARE AVENUE, SUITE 1200
BUFFALO, NY 14202-2150
EXAMINER
LONG, ROBERT FRANKLIN
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
09/24/2014 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
________________

Ex parte REED HANOUN
________________

Appeal 2012-008387
Application 11/737,970
Technology Center 3700
________________

Before NEAL E. ABRAMS, MICHAEL L. HOELTER,
and LEE L. STEPINA, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

REED HANOUN (Appellant) seeks our review under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 31–38. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to a computerized exercise system
and to a method of providing fitness feedback to a person. Claims 31 and 32
are illustrative of the claims on appeal and are reproduced below:
31 . A method for providing fitness feedback for a person
who has exercised on two or more exercise machines in a single
workout, the method comprising:
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for each of the exercise machines, determining an
exercise-machine-specific workout performance of the person
from characterizations of fitness of muscle groups of the
person's body for the workout on a specific exercise machine;
determining a workout result number on a scale from the
exercise-machine-specific workout performance on each of the
exercise machines;
determining a target number on the scale from a target
performance for the person for the workout for each of the
exercise machines;
displaying visual indications of the workout result
number and the target number to enable a comparison thereof;
and
displaying on a per-exercise machine basis visual
indications of the exercise-machine-specific performance and
the target performance to enable a comparison
thereof,
wherein the muscle groups include at least one muscle
group of the musculoskeletal system of the person's body.

32. A computerized exercise system, the system
comprising: a first exercise machine module arranged to
determine energy exerted by a person while exercising on a first
exercise machine, where the first exercise machine impacts one
or more muscles and/or muscle groups of the musculoskeletal
system of the person; and a computer arranged to determine
characterizations of the fitness of the one or more muscles
and/or muscle groups based, at least in part, from the energy
exerted.

REFERENCE RELIED ON BY THE EXAMINER

NEIL US 6,793,607 B2 Sep. 21, 2004

THE REJECTIONS ON APPEAL
Claims 31–38 are rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.
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Claim 32 is rejected under 35 U.S.C. § 102(e) as anticipated by Neil.
Claims 31 and 33–38 are rejected under 35 U.S.C. § 103(a) as obvious
over Neil.
ANALYSIS
The rejection of claims 31–38 as indefinite.
(I)
The Application contains two independent claims, claims 31 and 32.
Claim 31 recites, in part:
for each of the exercise machines, determining an
exercise-machine-specific workout performance of the person
from characterizations of fitness of muscle groups of the
person's body for the workout on a specific exercise machine.
Br. 6 (emphasis added).
Claim 32 recites, in part:
a computer arranged to determine characterizations of
the fitness of the one or more muscles and/or muscle groups
based, at least in part, from the energy exerted.
Br. 6 (emphasis added).
(II)
The Examiner states:
Claims 31-38 are rejected under 35 U.S.C. 112, second
paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant
regards as the invention.
In claims 31-38, the phrase ”characterization of the
fitness of the person” is described in the specification as being
“at least in part on” the following depictions (a percentage of
energy exerted, heart rate, nutrition intake, fitness of one or
more muscle groups impacted on an exercise machine/energy
exerted, maximum energy required to operate an exercise
machine. See [0071-0087].
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As broadly recited, examiner is giving the broadest
reasonable interpretation of “characterization of the fitness” to
include characteristics of repetitions performed while on an
exercise machine.
Final Action, 2 (repeated in Ans. 4–5).
(III)
In response, Appellant states:
With regard to the rejection of Claims 31-38 under 35
U.S.C. § 112, second paragraph, in connection with the term “to
determine energy exerted by a person while exercising on an
exercise machine” several examples of methods for determining
energy are given in the specification (see FIGS. 5, 6, and 8).
With regard to “characterizations of the fitness of those one or
more muscles and/or muscle groups” and “characterizations of
the fitness of the person as a whole,” the derivation and use of
these claim terms is disclosed in the flowchart of an exemplary
method of characterizing fitness shown in Fig. 9 and described
in the specification in paragraphs [70] to [84].
Br. 4.
(IV)
Regarding the rejection of claims 31–38 as indefinite, “[t]he
specification shall conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the applicant regards as
his invention.” 35 U.S.C. § 112, ¶ 2. “[A] patent is invalid for
indefiniteness if its claims, read in light of the specification delineating the
patent, and the prosecution history, fail to inform, with reasonable certainty,
those skilled in the art about the scope of the invention.” Nautilus, Inc. v.
Biosig Instr., Inc., 134 S.Ct. 2120, 2124 (2014).
We have reviewed the portions of the Specification cited by the
Examiner and by Appellant as well as the figures cited by Appellant.
Additionally, we have further reviewed other portions of the Specification
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and figures. In the cited paragraphs and text, we find numerous instances of
the term “characterizations of the fitness of.” For example, paragraph 73 of
the Specification states:
Since the first exercise machine impacts one or more
muscles and/or muscle groups of the musculoskeletal system of
the person, characterizations of the fitness of the one or
more muscles and/or muscle groups are determined at 906
based, at least in part, on the energy exerted. For example, a
particular exercise machine may impact the back muscles,
trapezoid muscles, shoulder muscles, biceps and triceps of the
person. A percentage or ratio may be assigned to each impacted
muscle or muscle group, as part of the characterization of the
exercise machine. The characterization of a particular
muscle or muscle group will then be based, at least in part,
on the percentage of the energy exerted that corresponds to
the particular muscle or muscle group.
Emphasis added. Paragraph 74 of the Specification states:
Determining the characterizations of the fitness of the
one or more muscles and/or muscle groups is based, at least
in part, on a characterization of the maximum energy that
would be required to operate the first exercise machine at
full capacity for a given period of time. This maximum
energy may be referred to as the "machine maximum energy
value". This characterization is shown in Fig. 9 at 904, but will
likely be done once per exercise machine or type of exercise
machine and need not be repeated each time a person exercises
on the exercise machine.
Emphasis added.
Accordingly, we understand that the characterizations of fitness are a
function, at least in part, on the energy exerted. Further, the
characterizations of fitness are or can be a function of the maximum energy
that would be required to operate the first exercise machine at full capacity
for a given period of time.
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Paragraph 84 of the Specification states:
A characterization of the fitness of the person as a whole
may be determined at 922 based, at least in part, on the
characterizations of the fitness of the one or more muscles or
muscle groups. The characterization of the fitness of the person
as a whole may be based, at least in part, on a characterization
of a target fitness level. The target fitness level may be
determined from the fitness targets for the various muscles and
muscle groups.
Thus, the characterization of the fitness of the person as a whole may be
determined based, at least in part, on the characterizations of the fitness of
one or more muscles or muscle groups.
The above-quoted portions of the Specification set forth some
examples of the factors on which the recited “characterizations” are, at least
partially, based. However, neither the above-quoted portions nor the
remainder of the Specification and figures cited by the Appellant, provide
any guidance as to what the relationship between the characterizations and
factors is or what other factors may or may not form the basis for the recited
characterizations. In other words, knowing that certain factors affect the
characterizations of fitness is not the same as knowing what the scope of the
characterizations of fitness is.
Appellant has not offered any specific argument to clarify the scope of
claims 31–38 aside from the above-quoted section referring to paragraphs
70–84 of the Specification, which, as we have discussed, merely set forth a
set or subset of the factors that might affect the characterizations of fitness.
Therefore, based on the disclosures and record discussed above, one of
ordinary skill in the art would not have been able to ascertain with
reasonable certainty the scope of the expression “characterizations of
fitness,” in the claims, as no guidance or standard for determining such
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expression has been provided in the Specification. Nautilus, Inc., 134 S.Ct.
at 2124. We affirm the Examiner's § 112, second paragraph, rejection on
the basis of the presence of the term “characterizations of fitness,” which
limits all the claims.
The rejection of claim 32 as anticipated by Neil.
(I)
Claim 32 recites, in part:
a computer arranged to determine characterizations of the
fitness of the one or more muscles and/or muscle groups based,
at least in part, from the energy exerted.

(II)
The Examiner rejects claim 32 as anticipated by Neil. Regarding the
above-noted feature, the Examiner asserts Neil provides “a computer
(processor 14) arranged to determine characterizations of the fitness
of the muscle/muscle group based, at least in part, from the energy exerted
(number of repetitions, column 3, lines 24-45).” Ans. 6 (emphasis added).
(III)
Appellant traverses the Examiner’s anticipation rejection, stating:
With regard to the rejection of Claim 32 under 35 U.S.C. 102(e)
as being anticipated by Neil (US 6793607), contrary to the
Examiner's statement, Neil does not disclose a “computer
arranged to determine characterizations of the fitness of the one
or more muscles and/or muscle groups based, at least in part,
from the energy exerted” and therefore, the rejection should be
withdrawn.
Br. 4.
(IV)
Regarding the anticipation rejection of claim 32, Appellant has not
provided specific arguments as to how the Examiner has failed to show all
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the elements recited in claim 32. Rather, Appellant has restated a portion of
claim 32 and asserted that Neil fails to disclose the restated portion. We
note that our reviewing court has stated that the Board reasonably interprets
37 C.F.R. § 41.37 to require, in an appeal brief, more substantive arguments
than a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art (see In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011)). In any event, Appellant has not made
any argument as to why the portions of Neil cited by the Examiner do not
correlate to the recited “computer arranged to determine characterizations of
the fitness…from the energy exerted.” On page 4 of the Answer, the
Examiner set forth a claim construction for the “characterization of fitness”
as reading on “characteristics of repetitions performed while on an
exercise machine” (emphasis added), and Appellant has not challenged this
construction. Further, the portions of Neil cited by the Examiner disclose
features satisfying this unchallenged claim construction. See Neil, col. 3, ll.
24–45. In light of the discussion above, we affirm the rejection of claim 32
as anticipated by Neil.
The rejection of claims 31 and 33–38 as obvious over Neil.
Appellant states:
[A]lthough Neil recognizes that a particular exercising
mechanism is designed to exercise a targeted group of muscles,
Neil is silent regarding any characterization of the fitness of
the targeted group of muscles of a person based on energy
exerted by the person while exercising on the particular
exercising mechanism. Nowhere does Neil teach or suggest
that the video display is configured to play anything other
than instructional, demonstrational, and/or guiding videos.
When Neil teaches that the selection of a muscle group from the
graphical presentation of a human form may cause “the display
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... [to] play videos showing how the selected muscle groups
may be exercised, or provide other information relating to those
muscle groups” (Col. 5, lines 26-29), it is clear that the
information provided about the muscle groups is general
instructional, demonstrational, and/or guiding information.
Accordingly, in the absence of Applicant's teaching there is no
basis in the prior art of record for characterizing the fitness of
muscles or muscle groups based in part on energy exerted while
exercising on an exercise machine.
Br. 4–5 (emphasis added).
Neil states:
Digital workout assistant 10 may be adapted to receive
workout information from the exercise equipment. As an
individual exercises, the digital workout assistant may
receive and store exercise-specific information such as
resistance level, number of repetitions, range of motion,
exercise rate, exercise duration, heart rate, estimated
calories of energy used, and other relevant information.
This information may then be used to report progress and/or to
automatically adjust workouts to achieve maximum benefit.
The information may be made available to the individual in
real-time during exercise via a display mechanism and/or an
audio mechanism. The display and/or audio mechanism may 35
be a component of the digital workout assistant, the exercise
equipment, a monitoring system, or an external device adapted
to interface with at least one of the exercise equipment and the
digital workout assistant. The information may also be saved in
digital format. Such information may later 40 be analyzed, such
as by a personal computer. Furthermore, saved information
provides a convenient mode of saving workout information
over time, so that an individual can track progress, attempt to
correlate exercise improvements to other journaled life
activities, etc.
Neil, col. 3, ll. 24–45 (emphasis added). Thus, the digital workout assistant
10 receives information such as number of repetitions, exercise duration, and
estimated calories of energy used. The information may be used to report
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progress and adjust workouts. The information is made available to the
individual via a display.
In view of the portion of Neil quoted above, we are not persuaded that
the Examiner’s position is incorrect. Appellant has not shown Neil fails to
disclose the recited “determining an exercise-machine-specific workout
performance of the person from characterizations of fitness of muscle groups
of the person's body for the workout on a specific exercise machine” or the
recited “displaying visual indications of the workout result number and the
target number to enable a comparison thereof; and displaying on a per-
exercise machine basis visual indications of the exercise machine-specific
performance and the target performance to enable a comparison thereof.”
Accordingly, we affirm the rejection of claims 31 and 33–38 as obvious over
Neil.
DECISION
Although we have carefully considered all of Appellant’s arguments,
we are not persuaded that the positions taken by the Examiner with respect
to the indefiniteness of claims 31–38, anticipation of claim 32 by Neil, or the
obviousness of claims 31 and 33–38, are in error. Accordingly, all of the
rejections are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).

AFFIRMED

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