Ex parte Nickerson

Board of Patent Appeals and Interferences

Aug 12, 1999

07820261 (B.P.A.I. Aug. 12, 1999)

Application for patent filed January 14, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte DANNY L. NICKERSON
________________
Appeal No. 97-1277
Application 07/820,2611
________________
ON BRIEF
________________
Before JERRY SMITH, FLEMING, and FRAHM, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL

Appeal No. 97-1277
Application No. 07/820,261
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 13-19, 23, 30-32 and
34-44, which constitute all the claims remaining in the
application. An amendment after final rejection was filed on
October 30, 1995 and was entered by the examiner.
The disclosed invention pertains to an electronic
device for automatically maintaining a record of events which
take place during the course of a baseball game. More
particularly, the invention seeks to simplify the manual task
of keeping a scorecard of all events which describe the course
of a baseball game. Data representative of all the events of
a baseball game is entered into the device, and the device can
print out a complete record of the game at the conclusion of
the game.
Representative claims 13 and 41 are reproduced as
follows:
13. An electronic baseball scorekeeper, for keeping
the score of a real baseball game played by real players on a
field, comprising:
a plurality of field position manually operable elements
each of which elements is dedicated to a given field position,
a plurality of event manually operable elements each of
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Application No. 07/820,261
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which elements is dedicated to a single type of game event;
a plurality of manually operable alphabet elements for
entry of a list of player names by operating different ones of
said alphabet elements for the different letters of the
alphabet, respectively, that are entered;
storage means for storing said list of player names,
events and statistics;
display means for display of events, said list of player
names and statistics,
processor means, including said storage means, and having
a first mode for accepting said list of player names from said
alphabet elements, a second mode for providing said list to
said display, a third mode for entering data from said field
position elements and said event elements into said processor
means, a fourth mode for calculating statistics including the
score and a fifth mode for providing statistical information
to said display,
said processor means advancing from player to player on
said list as necessary to cause at least a part of said event
data and at least a part of said field position data to be
provided to said processor means as related to the proper
player on said list.
41. A device for providing information on a real baseball
game that progresses through plural half innings and that has
real players of two real teams playing on a real baseball
field with at least some of the players coming up to bat and
while at bat one or more events happen, comprising:
processor means including a memory,
user entry means for entering into said processor
means a list of at least some of said players that come to bat
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Application No. 07/820,261
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and including manually operable elements for entering into
said processor means signals that represent at least some of
said events,
said processor means including means for associating
with each of at least some of the names of players on said
list
the signals representing events that occurred while the player
was at bat, and
means for making a visual indication of the name of a
player together with at least one event that occurred while
the player was at bat.
The examiner relies on the following references:
Peters, Jr. (Peters) 4,266,214 May 05, 1981
Klose 4,324,402 Apr. 13, 1982
Claims 13-19, 23, 30-32 and 34-44 stand rejected under
35 U.S.C. § 103. As evidence of obviousness the examiner
offers Peters and Klose taken together.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
Appeal No. 97-1277
Application No. 07/820,261
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for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
skill in the particular art would have suggested to one of
ordinary skill in the art the obviousness of the invention as
set forth in claims 41-44. We reach the opposite conclusion
with respect to claims 13-19, 23, 30-32 and 34-40.
Accordingly, we affirm-in-part.
As a general proposition in an appeal involving a
rejection under 35 U.S.C. § 103, an examiner is under a burden
to make out a prima facie case of obviousness. If that burden
is met, the burden of going forward then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
the arguments.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
Appeal No. 97-1277
Application No. 07/820,261
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(Fed. Cir. 1992); In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart,
531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only
those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered [see 37 CFR § 1.192(a)].
With respect to each of the appealed claims, the
examiner has pointed out the teachings of Peters and Klose,
has pointed out the perceived differences between this prior
art and the claimed invention, and has indicated how and why
Peters and Klose would have been modified and/or combined to
arrive at the claimed invention [answer, pages 3-7]. In our
view, regardless of the ultimate outcome of this issue, the
examiner’s analysis is sufficiently reasonable that we find
that the examiner has satisfied the burden of presenting a
prima facie case of obviousness. That is, the examiner’s
analysis, if left unrebutted, would be sufficient to support a
rejection under
Appeal No. 97-1277
Application No. 07/820,261
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35 U.S.C. § 103. We also note that the examiner has responded
to each of appellant’s arguments so that the record is
complete on the examiner’s factual findings and reasoning upon
which the conclusion of obviousness is based. The burden is,
therefore, upon appellant to come forward with evidence or
arguments which persuasively rebut the examiner’s prima facie
case of obviousness. Appellant has presented several
substantive arguments in response to the examiner’s rejection.
Therefore, we consider obviousness based upon the totality of
the evidence and the relative persuasiveness of the arguments.
Before we consider the propriety of the rejection
against specific claims, a brief review of the applied prior
art and the skill of the artisan is presented. Peters teaches
an electronic device for automatically keeping score of a game
played by several players and which is dividable into
repetitive units. Although the main embodiment of Peters is
directed to the scoring of a golf game, Peters also suggests
that his device can be appropriately configured to score a
baseball game. Klose teaches an electronic device in which a
game of baseball can be simulated. Klose’s device has a
Appeal No. 97-1277
Application No. 07/820,261
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simulated playing field thereon, and display elements are
situated around the simulated field to simulate various
movements which occur in a real baseball game.
The rejection also depends to a great degree on the
knowledge of the avid baseball fan as to how a baseball game
is officially recorded and scored. It should be noted that
avid baseball fans have been manually filling out scorecards
for years to provide a complete record of the events of a
baseball game they are watching. There are many conventional
scoring notations and shortcuts used by these fans to simplify
the manual entry of this data onto the scorecard. The typical
scorecard has an area for the players of each team to be
listed in successive rows while the various innings to be
played are situated in successive columns. Events during the
course of a game are typically recorded on the scorecard at
the intersection of the player who is at bat and the inning
being played.
The main shortcut to scoring a game of baseball is
that each of the defensive positions is assigned a number from
1 to 9. Therefore, when a batter is thrown out at first on a
grounder to third for example, the event is manually recorded
Appeal No. 97-1277
Application No. 07/820,261
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as “5-3" indicating a throw out from third base (5) to first
base (3). A fly out to the left fielder for example is
manually recorded as simply “7" indicating a catch by the left
fielder (7). Hits and other events are also manually recorded
on the scorecard using some shorthand form of entry.
When we consider Peter’s desire to create an
electronic scoring device for a baseball game, we broadly
assume that the avid baseball fan would have been motivated to
electronically automate and duplicate the manual scorecard to
the extent necessary to provide an accurate record of the
baseball game. Appellant’s claims are directed to various
aspects of scoring a baseball game. Some of these scoring
aspects are recited fairly broadly and some scoring aspects
are necessary for an electronic device to properly maintain an
electronic scorecard of the game. Our obviousness
determinations are primarily controlled by the extent to which
appellant’s claims patentably distinguish appellant’s
electronic baseball scorekeeper from an electronic scorekeeper
created by the avid baseball fan in modifying Peter’s device
to be an accurate and complete baseball scorekeeper.
We consider first independent claim 13. Appellant
Appeal No. 97-1277
Application No. 07/820,261
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argues several features of this claim are not obviously
suggested by the prior art. Appellant argues that manually
operable elements for field position and events create a
highly advantageous data entry capability. Although we find
that Peters suggests such event keys to the avid baseball fan,
we agree with appellant that the manually operable elements
dedicated to a given field position are not suggested by the
prior art. This recitation of claim
13 means that there are nine keys whose sole function is to
indicate entry of one of the defensive positions. Since a
baseball scorecard normally indicates defensive positions by
numbers 1 through 9, these defensive positions could easily be
entered by standard, nondedicated number keys. Although the
use of dedicated field position keys enables data to be
entered more easily by the novice fan, such advantage is
apparent only from appellant’s own disclosure. There is no
suggestion in Peters or in the conventional scoring of a
baseball game that would have suggested the obviousness of
these dedicated keys.
The examiner apparently relies on Klose as overcoming
this deficiency of Peters. We agree with appellant that the
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Application No. 07/820,261
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combination of Klose with Peters, as proposed by the examiner,
makes no sense. Klose simulates a baseball game being played
so that there is a simulated baseball field permanently drawn
on the display. The display also has several defensive
positions indicated by permanently drawn characters (see
outfield, pitcher and catcher). Klose also has display
elements at strategic parts of the simulated field to indicate
movement within the baseball game. It should be noted that
Klose teaches no dedicated field position input elements. To
the extent that Klose teaches anything related to a field
position, Klose teaches output elements rather than input
elements. There is nothing in Klose which would have
suggested the obviousness of the claimed dedicated field
position manually operable elements.
Appellant also argues that the manually operable
alphabet elements and the five modes for the processor means
are not suggested by the prior art. With respect to the
alphabet input elements, we do not agree. The conventional
manually created scorecard clearly has an area for and
requires the input of the various player names in the lineup.
The artisan would have appreciated that an electronic baseball
Appeal No. 97-1277
Application No. 07/820,261
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scorecard must accept the input of player names. In our view,
the artisan would have found it obvious to enter the player
names into such an electronic device by manually operable
alphabet elements as broadly recited in claim 13.
With respect to the processor means, we do not agree
with appellant that the first three modes of claim 13 are not
suggested by the prior art. When the Peters’ device is
modified to become a baseball scorecard by the avid baseball
fan, the fan would realize that the entry of player names in
keeping a scorecard is essential. Likewise, the display of
this list of players (the lineup) would be clearly suggested
to the artisan. Finally, the Peters baseball scorecard device
would have to permit entry of field position information and
event information. Thus, the functions recited in claim 13
for the processor means would have to be carried out by any
electronic device accurately functioning as a baseball
scorecard. The identification of these different functions of
a baseball scorekeeper as different modes of operation is not
a patentably nonobvious distinction.
Although we have found many of appellant’s arguments
with respect to claim 13 to be nonpersuasive, we do agree with
Appeal No. 97-1277
Application No. 07/820,261
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appellant that the recitation of field position manually
operable elements dedicated to a given field position is not
suggested by the applied prior art. Therefore, we do not
sustain the rejection of claim 13 or of claims 14-19 and 30-32
which depend therefrom.
With respect to independent claim 23, appellant argues
that the prior art does not teach or suggest a means for
suspending the game mode and switching to the substitute
player entry mode as recited therein [brief, page 17]. The
examiner simply responds that it would have been obvious to
suspend the game mode and switch to the substitute player mode
because it was common in baseball to have substitute players
enter the game [answer, page 17]. Although we agree with the
examiner that it is common in the game of baseball to make
substitutions, we see no reason why the game would have to be
suspended in order to do this. Appellant has claimed a
specific way to make player substitutions, and this claimed
way is not suggested by the applied prior art.
Appellant also argues that claim 23 recites some dual
function manually operable elements which enter player names
in a player entry mode and event data in a game playing mode.
Appeal No. 97-1277
Application No. 07/820,261
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As we noted above with respect to claim 13, any baseball
scorekeeping device must permit the entry of player names and
the entry of event information. Peters suggests the use of a
switch which can adjust the mode of data being input into the
device. Thus, the idea of broadly using the same input
elements to enter two different kinds of data would have been
obvious in view of the teachings of Peters and the common dual
mode keys of conventional calculators.
Appellant also argues that a means for associating
event data entered in the processor with the name of the
player who was at bat at the time that the event occurred is
not suggested by the applied prior art. We are not persuaded
by this argument since the baseball fan would have realized
that events of a game such as balls and strikes must be
associated with the player who is at bat. The modified Peters
device would have to have this capability in order to create
an accurate record of a baseball game.
Although we have found many of appellant’s arguments
with respect to claim 23 to be nonpersuasive, we do agree with
appellant that the recitation of a program means for
suspending the game mode and switching to the substitute
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Application No. 07/820,261
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player entry mode is not suggested by the applied prior art.
Therefore, we do not sustain the rejection of claim 23 or of
claims 34-36 which depend therefrom.
With respect to independent claim 37, appellant makes
many of the same arguments which we have considered above.
Although we do not agree with all of appellant’s arguments for
reasons discussed above, we note that claim 37 recites a set
of manually operable elements, “each element of which is
dedicated to one of said player positions.” As we noted above
in our consideration of claim 13, the applied prior art does
not teach or suggest such a dedicated arrangement of input
elements. This simplifies the entry of event data into the
device. We also indicated above why Klose adds nothing of
interest or relevance with respect to this claim recitation.
Therefore, we do not sustain the rejection of claim 37 or of
claims 38-40 which depend therefrom.
With respect to independent claim 41, appellant argues
that the combination of means recited therein relates to
patentable subject matter [brief, pages 23-24]. The first
means of claim 41 is directed to manually operable elements
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Application No. 07/820,261
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for entering player names and events into the processing
means. For reasons discussed above, any electronic baseball
scorekeeper for the avid fan must permit the entry of player
names (the lineup) and events which take place such as balls
and strikes. The second means of claim 41 recites that the
processor means associates events with the player who was at
bat. We considered the obviousness of this feature in our
discussion of claim 23 above. Finally, the third means of
claim 41 recites a means for visually indicating the name of a
player and an event which occurred while the player was at
bat. This feature is the whole point of a baseball scorecard
and would clearly have been included in any scorekeeper of
Peters which is modified to be a complete and accurate
baseball scorekeeper. Therefore, we find that each of the
means of claim 41, as broadly recited therein, would
necessarily be present in any electronic baseball scorekeeper
created by the avid baseball fan. For purposes of the breadth
of claim 41, Peters alone and the knowledge of the baseball
fan are sufficient to suggest the claimed invention.
Therefore, we treat Klose as being unnecessary and cumulative
to the teachings of Peters and the knowledge of the baseball
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fan. Accordingly, we sustain the rejection of independent
claim 41 as being unpatentable over the teachings of Peters.
With respect to dependent claim 42, appellant argues
that Peters does not suggest the player entry mode and game
mode as recited therein. As noted previously, these two modes
have to be present in the Peters electronic baseball
scorekeeper whether or not Peters specifically refers to them
as modes. Player names must be entered before the game begins
and event data must be entered during the course of a game.
The obviousness of dual mode keys has been discussed above.
The recitations of dependent claim 43 would have clearly been
met by the ball or strike input means of the Peters baseball
scorekeeper. The obviousness of the recitations of claim 44
has been discussed above. Therefore, we also sustain the
rejection of dependent claims 42-44 as unpatentable over the
teachings of Peters.
We note appellant’s arguments that the examiner has
not properly interpreted the means language of the claims as
required by In re Donaldson, 16 F.3d 1189, 29 USPQ2d 1845
(Fed. Cir. 1994). The disclosed invention has a plurality of
manually operable input elements and a processing means. The
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Application No. 07/820,261
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electronic scorekeeper of Peters created by the avid baseball
fan would have manually operable input elements and a
processing means. Appellant has not presented any persuasive
arguments that would lead us to conclude that the claimed
invention is structurally nonobvious over the similar
structure of the modified Peters baseball scorekeeper.
In summary, we have sustained the examiner’s rejection
of claims 41-44, but we have not sustained the rejection of
claims 13-19, 23, 30-32 and 34-40. Accordingly, the decision
of the examiner rejecting claims 13-19, 23, 30-32 and 34-44 is
affirmed-in-part.
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
Appeal No. 97-1277
Application No. 07/820,261
19
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ERIC S. FRAHM )
Administrative Patent Judge )
JS/dm
William D. Hall
10850 Stanmore Dr.
Potomac, MD 20854-1522