Ex Parte Smith et al

Patent Trial and Appeal Board

Feb 27, 2014

11430126 (P.T.A.B. Feb. 27, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/430,126 05/08/2006 Emmitt J. Smith III 107504.00006 4637
33649 7590 02/27/2014
Mr. Christopher John Rourk
Jackson Walker LLP
901 Main Street, Suite 6000
DALLAS, TX 75202
EXAMINER
BECHTEL, KEVIN M
ART UNIT PAPER NUMBER
2491
MAIL DATE DELIVERY MODE
02/27/2014 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 EMMITT J. SMITH III,
VICTOR J. DUPUY II, and
THOMAS K. LEW1
________________

Appeal 2011-011042
Application 11/430,126
Technology Center 2400
________________

Before JOSEPH F. RUGGIERO, ERIC S. FRAHM, and
JASON V. MORGAN, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL2

Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION.

1 Prova Group, Inc., is the Real Party in Interest. App. Br. 2.
2 An oral hearing for this appeal was held February 18, 2014.
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Invention
Appellants invented “an interactive event display system that allows
observers at events to obtain information on items being used in the event
and other event details that are not of general interest and would not be
continuously displayed on the scoreboard.” Spec. ¶ 0001.
Exemplary Claims
Claims 1, 9, and 15, reproduced below with disputed and key
limitations emphasized, are illustrative and representative:
1. A system for displaying information to allow an observer at
an event to obtain event-related data of specific interest using a
pre-existing event general purpose display, comprising:
an item identification system configured to receiving an
RFID [radio frequency identification] code from an RFID
device attached to an item that is being checked out from
inventory to be used in the event and to associate the RFID code
with data that identifies the item;
an item information tracking system configured to
receive the data that identifies the item in use at the event and to
generate item availability data that indicates that the item can be
acquired by a third party;
an information control system configured to receive
contact information associated with the item in use at the event,
to format the contact information, and to provide the contact
information for use with the pre-existing event display to allow
the observer seeking the event-related data of specific interest
to contact the information control system;
a display control system configured to receive the contact
information and to provide the contact information to the
general purpose display; and
an information interface system configured to establish a
communications channel with the observer, retrieve requested
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event-related data of specific interest associated with the item in
use at the event from a data source, format the requested event-
related data of specific interest for transmission to the observer,
and to transmit the event-related data of specific interest to the
observer, wherein the item information tracking system is
further configured to receive a bid for the item in use at the
event from the observer and to identify the observer as the
winning bidder for the item in use at the event.
9. A method for displaying information to allow an observer at
an event to obtain event-related data of specific interest for an
i[]tem in use at the event using a pre-existing event general
purpose display, comprising:
receiving an RFID code from an RFID device attached to
an item that is being checked out from inventory to be used in
the event;
associating the RFID code with data that identifies the
item;
generating a notification that the item is available for
purchase;
receiving a request to display contact information
associated with the item for observers seeking event-related
data of specific interest;
selecting a display mechanism of the pre-existing event
display;
formatting the contact information and the data that
identifies the item for display using the display mechanism of
the pre-existing event display;
transmitting the formatted contact information and the
data that identifies the item to the display mechanism;
receiving a request from an observer to make a bid to
purchase the item;
retrieving the requested bid-related data from a data
source;
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formatting the requested bid-related data for transmission
to the observer; and
transmitting the requested bid-related data to the
observer;
receiving bid data from the observer;
associating the item with the observer if the observer
places a winning bid;
receiving the RFID code from the RFID device attached
to the item that is being checked into inventory after being used
in the event;
associating the RFID code with the observer; and
generating a notification to the observer that the item is
available to be picked up.
15. A system including a general purpose computer
programmed to carry out particular algorithms, the system for
displaying information to allow an observer at an event to
obtain event-related data of specific interest using a pre-existing
event general purpose display, comprising:
an item identification system configured to receiving an
RFID code from an RFID device attached to an item that is
being checked out from inventory to be used in the event and to
associate the RFID code with data that identifies the item;
an item information tracking system configured to
receive the data that identifies the item in use at the event and to
generate item availability data that indicates that the item can be
acquired by a third party;
an information control system configured to receive
contact information associated with the item, format the contact
information, and provide the contact information for use with
the pre-existing event display to allow the observer seeking the
event-related data of specific interest to contact the information
control system;
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a display control system configured to receive the contact
information and provide the contact information to the general
purpose display; and
means for establishing a communications channel with
the observer, retrieving requested event-related data of specific
interest from a data source, formatting the requested event-
related data of specific interest for transmission to the
observer, and transmitting the event-related data of specific
interest to the observer.
Rejections
The Examiner rejects claims 9–14 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Ans. 5–6.
The Examiner rejects claims 1–8 and 15–20 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.
Ans. 6.
The Examiner rejects claims 1–3, 6–13, and 15–20 under 35 U.S.C.
§ 103(a) as being unpatentable over Gurley (US 2006/0190384 A1 published
Aug. 24, 2006) and Kulakowski (US 2005/0289061 A1 published Dec. 29,
2005). Ans. 7–23.
The Examiner rejects claims 4, 5, and 14 under 35 U.S.C. § 103(a) as
being unpatentable over Gurley, Kulakowski, and Rackson (US 2002/
0165817 A1 published Nov. 7, 2002). Ans. 23–26.
ISSUES
1. Did the Examiner err in finding that the Specification does not
provide sufficient written description support for the claim 9 recitations
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“associating the RFID code with the observer; and generating a notification
to the observer that the item is available to be picked up”?
2. Did the Examiner err in finding that claim 1 is indefinite for failing
to particularly point out and distinctly claim the subject matter which
Appellants regards as the invention?
3. Did the Examiner err in finding that Kulakowski teaches or
suggests “receiving an RFID code from an RFID device attached to an item
that is being checked out from inventory to be used in the event,” as recited
in claim 1?
4. Did the Examiner err in relying on Kulakowski because other
recitations, such as the claim 1 limitation “the item information tracking
system is further configured to receive a bid for the item in use at the event
from the observer and to identify the observer as the winning bidder for the
item in use at the event,” are incompatible with the system of Kulakowski?
5. Did the Examiner err by failing to address all of the limitations of
claim 9?
6. Did the Examiner err by failing to include Hameen-Anttila in the
basis for rejecting claim 15?
ANALYSIS
35 U.S.C. § 112, first paragraph—Claims 9–14
The Examiner rejects claim 9 because the Examiner was “unable to
find support in the Specification for associating the RFID code with the
winning observer, but rather, merely the item itself.” Ans. 5 (citing Spec.
¶ 0027). Similarly, the Examiner was “unable to find support in the
Specification for alerting the observer that an item is available to be picked
up, but rather, merely that the item has been won.” Id. (citing Spec. ¶ 0026).
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Appellants only address the first basis for the Examiner’s rejection,
arguing that support for the recitation “associating the RFID code with the
winning observer” can be found in, “e.g., the materials incorporated by
reference.” App. Br. 9. Specifically, Appellants refer to the Specification’s
disclosure that:
At 404, the feature is authenticated and data can be
obtained about the feature. For example, if the request is for
information on a player that is not present at the event, the user
can be informed that the feature was not authenticated - the
player for which information was requested is not present at the
event. In another exemplary embodiment, the feature can be
authenticated by checking the feature against an authentication
system, such as that disclosed in U.S. Patent Application
10/694,311, entitled “System and Method for Tracking
Authenticated Items,” filed October 27, 2003, publication
US 2004-0088231-A1, which is hereby incorporated by
reference for all purposes. In this exemplary embodiment, the
authentication system can include data that uniquely identifies
the item, such as from an identification device on the item. For
example, an RFID tag, hologram tag, bar code tag, or other
suitable device can be used to uniquely identify an item, and the
item can be authenticated by reading data from the tag and
comparing that data to data associated with the item in a
database. This data can be checked to confirm that the item has
been checked out for use during the event, to determine the
current value for the item, to determine whether the event has
ended, to determine whether bidding for the item is closed, or
for other suitable purposes. For example, in one exemplary
embodiment a jersey, helmet, or other item that is being worn
by a player during a game can be bid on, with the end of the
game or other suitable times being designated as the close of
bidding. The method then proceeds to 406.
Spec. ¶ 0031 (emphasis added).
The material incorporated by reference is U.S. Patent Application
2004/0088231 A1, published May 6, 2004, (“Davis”). Davis is directed to a
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system and method for tracking authenticated items. This “system includes
an authentication device, such as an RFID tag, affixed to the item.” Davis
Abstr.
Appellants’ arguments are not persuasive of error because Appellants
do not identify, either in the cited portion of the Specification, in their
Summary of the Claimed Subject Matter, or in their arguments where Davis
provides written description support for the recitation of “associating the
RFID code with the observer.” App. Br. 6–7 and 9; Spec. ¶ 0031.
Appellants also do not identify written description support for the second
recitation of “generating a notification to the observer that the item is
available to be picked up.” Therefore, we agree with the Examiner that the
Specification does not provide sufficient written description support for the
claim 9 recitations “associating the RFID code with the observer; and
generating a notification to the observer that the item is available to be
picked up.”
Accordingly, we sustain the Examiner’s 35 U.S.C. § 112, first
paragraph, rejection of claim 9, and claims 10–14, which depend therefrom.
35 U.S.C. § 112, second paragraph—Claims 1–8 and 15–20
The Examiner finds that claim 1 is indefinite because the recitations
create “contention as to which system is driving the display.” Ans. 6.
Appellants argue “the Examiner has failed to recite a valid basis for the
rejection” because “no claim limitation recites that any system is ‘driving the
display.’” App. Br. 9.
In rejecting claim 1, the Examiner submits that Claim 1 recites the
limitations “‘an information control system . . . providing the contact
information to the pre-existing event display’ . . . [and] ‘a display control
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system . . . providing the contract information to the general purpose
display.’” Ans. 6 (emphasis added). However, Appellants amended claim 1
to read “an information control system . . . to provide the contact
information for use with the pre-existing event display . . . [and] a display
control system . . . to provide the contact information to the general purpose
display.” Amend. 2 (Aug. 24, 2010). Thus, claim 1 only recites that the
display control system provides the contact information to the general
purpose display. Therefore, we agree with Appellants that the Examiner’s
findings do not show that claim 1 fails to particularly point out and distinctly
claim the subject matter Appellants regard as the invention. App. Br. 9.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112,
second paragraph, rejection of claim 1, and of claims 2–8, which depend
therefrom. For similar reasons, we also do not sustain the Examiner’s 35
U.S.C. § 112, second paragraph, rejection of claim 15, which contains
similar recitations, and of claims 16–20, which depend therefrom.
35 U.S.C. § 103(a)—Claims 1–8
The Examiner finds that Kulakowski’s disclosure of an umpire’s ball
pocket with an RFID reader teaches or suggests “receiving an RFID code
from an RFID device attached to an item that is being checked out from
inventory to be used in the event,” as recited in claim 1. Ans. 10 (citing
Kulakowski ¶¶ 0009–0010). Appellants contend the Examiner erred
because “the baseballs of Kulakowski are 1) already checked out of
inventory, and 2) already in use at an event.” App. Br. 10.
The Examiner responds by correctly noting that Kulakowski’s umpire
ball pocket is a type of inventory. Ans. 30. The Examiner’s finding is
supported by Kulakowski, which teaches “when the umpire inspects a ball
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being put into play and throws the ball out of the mound baseball
identification will automatically occur.” Kulakowski ¶ 0010. Thus, the
Examiner correctly finds that Kulakowski teaches or suggests receiving an
RFID code from an RFID device attached to an item (e.g., a baseball) that is
being checked out from inventory (e.g., an umpire’s ball pocket) to be used
in an event (e.g., to be put into play). Ans. 30–31. Therefore, we agree with
the Examiner that Kulakowski teaches or suggests “receiving an RFID code
from an RFID device attached to an item that is being checked out from
inventory to be used in the event,” as recited in claim 1. Id. at 10.
Appellants also argue that “is well known in baseball that the balls
that are used in the game are never returned to the umpire, but rather are
normally hit or thrown into the stands, where a random attendee catches and
keeps the baseball.” App. Br. 10. Therefore, Appellants argue, other
recitations are “incompatible with the system of Kulakowski, as there is no
way for anyone to bid for the baseballs of Kulakowski, as they will be hit or
thrown to random attendees and not to a winning bidder.” Id. at 10–11.
The Examiner correctly finds that “Kulakowski’s system explicitly
teaches tracking additional items which are easily returned to an inventory of
an affiliated sports organization.” Ans. 32 (citing Kulakowski ¶ 0042).
While many (although not all) of the additional items listed by Kulakowski
would not fit in an umpire’s ball pocket, an artisan of ordinary skill would
have recognized the use of an RFID device to detect when an item is being
checked out from inventory is not limited in application to baseballs and
umpire ball pockets, but would include other trackable items (such as those
listed in Kulakowski) and inventories appropriate to those other trackable
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items. Therefore, Appellants’ arguments do not persuasively show error in
the Examiner’s reliance on Kulakowski in rejecting claim 1.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 1, and of claims 2–8, which Appellants do not argue separately with
sufficient specificity. App. Br. 14–16.
35 U.S.C. § 103(a)—Claims 9–14
Appellants argue that the Examiner’s rejection of claim 9 does not
address all of the recitations of claim 9. App. Br. 11; Reply Br. 3–4. We
agree. Specifically, the Examiner’s findings do not show that the
combination of Gurley and Kulakowski teaches or suggests the recitations of
“associating the RFID code with the observer; and generating a notification
to the observer that the item is available to be picked up,” as recited in claim
9. See Ans. 14 and 32–33. The Examiner finds that “claim 9 is a claim to a
method implementing the system of claim 1.” Id. at 14. However, the
Examiner does not identify, and we do not see, what recitations in claim 1
correspond to the claim 9 recitations identified above. Thus, the Examiner’s
findings with respect to the rejection of claim 1 are insufficient to show the
combination of Gurley and Kulakowski teaches or suggests all the
recitations of claim 9. See id. at 7–11. Therefore, we agree with Appellants
the Examiner erred by failing to address all of the limitations of claim 9.
App. Br. 11.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claim 9, and of claims 10–14, which depend therefrom.
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35 U.S.C. § 103(a)—Claims 15–20
In rejecting claim 15, the Examiner finds that “Gurley does not
disclose the implicit requirement of formatting information transmitted to
the displays of the user devices.” Ans. 21. The Examiner does not rely on
Kulakowski, the other reference relied on, to reject claim 15. Instead, the
Examiner points to the teachings of Hameen-Anttila, U.S. 2002/0049507
A1, which teaches, among other things, “‘adapting the sport data to the
desired format for each individual output device’ including audio, video and
SMS [short message service] text-messages (depending upon the capabilities
of the output terminal used).” Ans. 22 (citing Hameen-Anttila ¶ 0031). The
Examiner concludes that it would have been obvious to an artisan of
ordinary skill “to modify/develop the interactive controller of Gurley’s
system to utilize formatting of the requested event-related data.” Ans. 22.
However, the Examiner explicitly notes that Hameen-Anttila is “additionally
cited as [an] evidentiary reference[] to provide support for features
commonly known in the art.” Id. at 7 (emphasis added). Specifically, the
Examiner notes that Hameen-Anttila, “while not required, was explicitly
cited in the basis for the rejection under 35 U.S.C. [§ ]103(a) as an
evidentiary reference to show the inherency of formatting information that’s
provided to an electronic display.” Id. at 35 (emphases added).
Appellants argue the Examiner erred by failing to include Hameen-
Anttila in the rejection of claim 15 even though Hameen-Anttila’s teachings
“are necessary to show that each claim element is present in the prior art.”
App. Br. 13. “Where a reference is relied on to support a rejection whether
or not in a ‘minor capacity,’ there would appear to be no excuse for not
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positively including the reference in the statement of the rejection.” In re
Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970).
The Examiner unambiguously disclaims any reliance on the teachings
and suggestions of Hameen-Anttila to reject claim 15. Ans. 7 and 35. Yet,
the Examiner also points to Hameen-Anttila as teaching or suggesting
recitations in claim 15. Id. at 21–23. As such, we agree with Appellants that
the Examiner erred by failing to include Hameen-Anttila in the basis for
rejecting claim 15. App. Br. 13.
Accordingly, we are constrained by the record before us and do not
sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claim 15 as being
unpatentable over Gurley and Kulakowski. We also do not sustain the
Examiner’s 35 U.S.C. § 103(a) rejections of claims 16–20, which depend
therefrom. Our decision with respect to the 35 U.S.C. § 103(a) rejection of
claim 15 does not affect our decision with respect to the 35 U.S.C. § 103(a)
rejection claims 1–8 because the Examiner does not point exclusively to
Hameen-Anttila, or other references not relied upon, to teach or suggest
recitations in claims 1–8. Ans. 7–14.3
NEW GROUNDS OF REJECTION
While we do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 15, based on the combined teachings of Gurley and Kulakowski

3 The Examiner finds that Hameen-Anttila also teaches a recitation in claim
3, but this is in addition to the Examiner’s finding that Gurley teaches or
suggests this same recitation. Ans. 12. Thus, the rejection of claim 3 differs
from the rejection of claim 15 because the Examiner finds that both Gurley
and Hameen-Anttila teach or suggest the same recitation. Thus, with respect
to the rejection of claim 3, the Examiner did not error in relying on the
combined teachings of Gurley and Kulakowski. Id.
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alone, we do not find any error in the Examiner’s findings showing the
combination of Gurley, Kulakowski, and Hameen-Anttila teaches or
suggests all of the recitations of claim 15. Ans. 18–22 and 34–37.
Appellants argue the Examiner “has failed to carry the initial burden of
showing that the prior art structure of [Hameen-Anttila] corresponding to the
claimed function [of the means plus function limitations at issue] is either
the same or equivalent to the identified structure.” App. Br. 12–13.
However, Appellants’ arguments do not persuasively show error in the
Examiner’s explicit claim construction of the means plus function
limitations at issue, Ans. 18–20, or persuasively show error in the
Examiner’s findings showing that the combination of Gurley and Hameen-
Anttila teaches or suggests these limitations, id. at 20–23.
The Examiner also finds that “claims 16–20 are claims to a computer
system implementing the system of claims 2–6 . . . . Therefore, claims 16–
20 are rejected for the reasons set forth for claims 2–6.” Id. at 23.
Appellants’ arguments, App. Br. 20–21, do not persuasively show error in
this finding and in the Examiner’s reliance on the findings set forth with
respect to claims 2–6, Ans. 11–13 and 23–25.
Accordingly, pursuant to our authority under 37 C.F.R. § 41.50(b), we
newly reject claims 15, 16, 17, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Gurley, Kulakowski, and Hameen-Anttila. Similarly, we
newly reject claims 18 and 19 under 35 U.S.C. § 103(a) as being
unpatentable over Gurley, Kulakowski, Rackson, and Hameen-Anttila.
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DECISION
We affirm the Examiner’s decision to reject claims 9–14 under
35 U.S.C. § 112, first paragraph.
We reverse the Examiner’s decision to reject claims 1–8 and 15–20
under 35 U.S.C. § 112, second paragraph.
We affirm the Examiner’s decision to reject claims 1–8 under 35
U.S.C. § 103(a).
We reverse the Examiner’s decision to reject claims 9–20 under 35
U.S.C. § 103(a).
We newly reject claims 15–20 under 35 U.S.C. § 103(a).

37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to
the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
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AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

bar