Ex Parte Schultz

Patent Trial and Appeal Board

Sep 26, 2017

12760817 (P.T.A.B. Sep. 26, 2017)

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.
12/760,817 04/15/2010 Jonathan Dwight SCHULTZ EZLO-35522-US 9821
50639 7590 09/28/2017
HITCHCOCK EVERT LLP
P.O. BOX 131709
DALLAS, TX 75313-1709
EXAMINER
GURMU, MULUEMEBET
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
09/28/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket @ hitchcockevert. com
eevert @ hitchcockevert .com
j tower @ hitchcockevert. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN DWIGHT SCHULTZ
Appeal 2015-005690
Application 12/760,817
Technology Center 2100
Before JUSTIN BUSCH, CATHERINE SHIANG, and
NORMAN H. BEAMER, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1—46. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2015-005690
Application 12/760,817
CLAIMED SUBJECT MATTER
Claims 1,18, and 34 are independent claims. The claims relate
generally to selecting locations for a hole on a golf green and, more
specifically, to selecting a location for a golf hole from a plurality of
predefined potential locations based upon attributes of each potential
location. Spec., Abstract, || 33—34. Claim 1 is reproduced below:
1. A system for management of a physical golf green through
selection of a location for a physical golf hole on said green, the
system comprising:
a processor;
a memory; and
a determination component stored in the memory,
wherein said determination component is executed by said
processor to:
a) access a database, wherein said database
comprises a plurality of potential locations for
said physical golf hole on said green
b) determine an available set of potential locations
for said physical golf hole on said green, wherein
said available set of potential locations for said
physical golf hole on said green is determined by
analyzing an attribute associated with each of
said potential locations for said physical golf hole
on said green and removing a subset of potential
locations for said physical golf hole on said green
from said plurality of potential locations for said
physical golf hole on said green based upon said
analysis;
c) select said location for said physical golf hole on
said green from said available set of potential
locations for said physical golf hole on said
green; and
d) output a presentation of said location for said
physical golf hole on said green.
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Appeal 2015-005690
Application 12/760,817
REJECTIONS
Claims 1—8, 11—16, 18—25, 28-40, and42-461 stand rejected under
35 U.S.C. § 112 11 for failing to comply with the written description
requirement. Final Act. 2—3; Ans. 2.
Claims 1—46 stand rejected under 35 U.S.C. § 103(a) as unpatentable
in view of Cohodas (US 6,171,199 Bl; Jan. 9, 2001) and Aronchick (US
2007/0184910 Al; Aug. 9, 2007). Final Act. 3-27.
ANALYSIS
Rejection Under 35 U.S.C. $ 112
The Examiner rejected claims 1—8, 11—16, 18—25, 28-40, and 42 46
under 35 U.S.C. § 112 11 for failing to comply with the written description
requirement. Final Act. 2—3. In the Advisory Action, mailed on July 9,
2014, the Examiner withdrew the rejection under § 112. Adv. Act. 2.
However, in the Answer, the Examiner appears to have reintroduced the
rejection. Ans. 2.
Appellants did not respond to the rejection under § 112 because it was
withdrawn in the Advisory Action. App. Br. 8 (explaining that “[t]he only
remaining ground for rejection in the Final Office Action dated March 24,
2014 (as modified by the Advisory Action dated July 9, 2014) is the
Examiner’s rejection of all pending claims as obvious based upon the
1 Claims 9, 10, 17, 26, 27, and 41 depend directly from one of independent
claims 1,18, and 34, and incorporate each of the limitations of the respective
claim from which they depend. Accordingly, it is unclear why the Examiner
did not reject claims 9, 10, 17, 26, 27, and 41 under 35 U.S.C. § 112 12.
Nevertheless, because we find the Examiner erred in rejecting the claims for
failing to comply with the written description requirement for the reasons
discussed herein, we need not address the issue further.
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Appeal 2015-005690
Application 12/760,817
combination of Cohodas and Aronchick.”). Appellants contend the rejection
under § 112 is improper because it was previously withdrawn in view of
Appellants’ arguments that overcame the rejection. Reply Br. 2 (quoting
Adv. Act. 2; citing Manual of Patent Examining Procedure (“MPEP”)
§ 1205.02).
To the extent Appellants contend the rejection under 35U.S.C. § 112
reintroduced in the Answer should have been designated as a new ground of
rejection, such an argument is a petitionable matter, which we do not address
on appeal. 37 C.F.R. § 41.40; see MPEP § 1207.03(b) (explaining that “37
CFR 41.40 sets forth the exclusive procedure for an appellant to request
review of the primary examiner’s failure to designate a rejection as a new
ground of rejection via a petition to the Director under 37 CFR 1.181.”).
Nevertheless, we determine the rejection of claims 1—8, 11—16, 18—25,
28-40, and 42-46 for failing to comply with the written description
requirement under 35 U.S.C. § 112 11 is improper. Whether a specification
complies with the written description requirement of 35 U.S.C. § 112 11 is a
question of fact. Regents ofUniv. of Cal. v. Eli Lilly and Co., 119 F.3d
1559, 1566 (Fed. Cir. 1997) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563 (Fed. Cir. 1991)). The Examiner has the initial burden of
presenting evidence or reasoning to explain why persons skilled in the art
would not recognize in the original disclosure a description of the invention
defined by the claims. In re Wertheim, 541 F.2d 257, 263 (CCPA 1976).
Notwithstanding the numerous references in Appellants’ Specification to a
“golf hole,” the Examiner finds the recited “physical golf hole” is
unsupported. Ans. 2. The Examiner merely states “‘physical golf hole’ was
not described in the specification,” but provides no explanation. Ans. 2.
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Appeal 2015-005690
Application 12/760,817
To satisfy the written description requirement, a patent specification
must describe the claimed invention in sufficient detail that one skilled in the
art can reasonably conclude that the inventor had possession of the claimed
invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d
1306, 1319 (Fed. Cir. 2003); Vas-Cath, 935 F.2d at 1563. An applicant
shows possession of the claimed invention by describing the claimed
invention with all of its limitations using such descriptive means as words,
structures, figures, diagrams, and formulas that fully set forth the claimed
invention. Lockwood v. Amer. Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997).
Notably, Appellants’ originally-filed Specification included claims
that recited “[a] system for selecting a golf hole location on a green f and
descriptions including, for example: “selecting golf hole locations on a golf
green,” “[conventional methods for selecting golf hole locations on a golf
green typically involve a greens superintendent. . . choosing a hole
location,” “rotating the position of the cup or golf hole location,” “selecting
where to cut the golf hole location and placement of the cup,” “FIG. 1 is a
depiction of a green with multiple golf hole locations,” “golf hole location
110 should be cut on green 100 seven yards from front edge 112,” and
disclosed processes “may be applied serially, in parallel, or a combination
thereof to reach an output of a golf hole location for each of the eighteen
greens of the exemplary golf course.” Spec. 17 (claim 1), ^ 1,3, 5, 20, 50,
55 (emphases added). In addition to the description, Appellants’ Figure 1
depicts golf holes at various positions on a golf green.
Although Appellants’ Specification never uses the term “physical,”
the written description requirement does not require the Specification to
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Appeal 2015-005690
Application 12/760,817
disclose the claim terms in the same words. Martin v. Johnson, 454 F.2d
746, 751 (CCPA 1972) (stating “the description need not be in ipsis verbis to
be sufficient”). Moreover, it is unclear how the term “physical” modifies the
recitation of a “golf hole.” Appellants assert the term “physical” was added
by amendment at the suggestion of a Supervisory Examiner during an
interview on August 21, 2013.2 In light of Appellants’ Specification,
including the portions quoted above, a person of ordinary skill in the art
would have understood the recited “golf hole” is a physical entity.
Accordingly, because the term “physical” is superfluous, it cannot present
new matter that was not sufficiently disclosed in the originally-filed
Specification.
Furthermore, “[t]he ‘written description’ requirement must be applied
in the context of the particular invention and the state of the knowledge.”
Capon v. Eshhar, 418 F.3d 1349, 1358 (Fed. Cir. 2005). If a skilled artisan
would have understood the inventor to be in possession of the claimed
invention at the time of filing, even if every nuance of the claims is not
explicitly described in the specification, then the adequate description
requirement is met. See, e.g., Vas-Cath, 935 F.2d at 1563. We fail to see,
and the Examiner provides no explanation regarding, why a person of
ordinary skill in the art would not have understood Appellant’s Specification
to disclose a “physical golf hole.”
2 It is unusual, to say the least, for an Examiner to suggest an amendment to
the claims that is not supported by Appellants’ Specification only to then
reject Appellants’ amended claim under 35 U.S.C. § 112 11.
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Appeal 2015-005690
Application 12/760,817
For the above reasons, we reverse the Examiner’s rejection of claims
1—8, 11—16, 18—25, 28 40, and 42-46 for failing to comply with the written
description requirement under 35 U.S.C. § 112 11.
Rejection Under 35 U.S.C. $ 103
The Examiner rejects claims 1—46 as obvious in view of the combined
teachings of Cohodas and Aronchick. Final Act. 3—27. With respect to
claim 1, the Examiner finds Cohodas teaches many of the limitations but
finds Aronchick teaches “determin[ing] an available set of potential golf
hole locations for said physical golf hole on said green wherein said
available set of potential golf hole locations on said green is determined by
analyzing an attribute associated with each of said potential golf hole
locations on said green” and “select[ing] said location for said physical golf
hole on said green from said available set of potential golf hole locations on
said green.” Final Act. 5—6 (quoting Aronchick || 78, 116, 124, 192);
Ans. 8—9. The Examiner makes no findings relating to the proper
construction of the recited phrase “physical golf hole on said green” and
provides no explicit construction of that phrase.
Appellants argue the broadest reasonable interpretation, consistent
with Appellants’ Specification, of “physical golf hole on said green” is “a
shallow cylindrical hole in the putting green of a golf course into which the
ball is played.” App. Br. 10-13 (citing Appellants’ claims, Specification,
and various dictionaries). We agree with Appellants’ arguments and adopt
Appellant’s proposed construction for the reasons asserted. In particular, we
agree with Appellants because the claims recite the hole is on the green,
which supports Appellants’ proffered construction.
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Appeal 2015-005690
Application 12/760,817
Appellants argue the rejection is improper for various reasons,
including that the proposed combination of Cohodas and Aronchick fails to
teach or suggest the determining and selecting steps. In particular,
Appellants assert Aronchick is directed to designing a “compact golf course”
by identifying and selecting sets of tee boxes and greens to create a number
of golf holes comprising a course, which is not related to identifying and
selecting the location of a golf hole on a green. App. Br. 16—19. Appellants
further contend Aronchick’s “hole possibilities” are potential pairings of tees
and greens, which is not related to Appellants’ recitations of a golf hole on a
green. Id. at 18—19. Based on Aronchick’s focus on tee box and green
pairings, Appellants argue Aronchick does not teach or suggest the
determining or selecting steps because Aronchick does not teach
determining or selecting locations for a golf hole on a green, as recited in the
claims. Id. at 19.
Although we agree with the Examiner that Cohodas discloses a
“modification program [that] determines the next position for each” of a tee
area and a pin3 moving the location of a golf hole on a green based on
certain characteristics, such as “slope and other key parameters of the
putting green,” Cohodas 6:35—43, the Examiner has not explained how the
disclosures of Aronchick relate to determining or selecting a golf hole on a
green, as properly construed.
3 In the context of Appellants’ application and Cohodas, we consider
determining the location of the pin to at least suggest determining the
location of a golf hole on a green because a person of ordinary skill in the art
would have understood the location of a pin marks the location of a golf hole
on a green.
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Appeal 2015-005690
Application 12/760,817
The Examiner merely block quotes sections of Aronchick relating to
designing a compact golf course, which includes pairing tees and greens.
See Aronchick || 78, 83, 116, 124, 192. The Examiner provides no
explanation in the Final Action or the Answer how these portions of
Aronchick teach determining or selecting golf hole locations on a green.
The Examiner finds it would have been obvious to a person of ordinary skill
in the art to combine Cohodas’s teachings with Aronchick’s teachings, and
the Examiner states in the Answer that the combination of Cohodas and
Aronchick teaches the determining and selecting steps “in order to provide
the maximum hole possibilities and shot opportunities.” Final Act. 6—7;
Ans. 9-10 (quoting Aronchick || 78, 116, 124, 192). However, the
Examiner provides no explanation of how Aronchick’s compact golf course
design would be combined in a way that would result in a teaching or
suggestion of the determining or selecting steps.
Given Aronchick’s failure to teach or suggest potential golf hole
locations on a green, the Examiner’s proposed combination of Cohodas and
Aronchick does not teach or suggest the determining or selecting steps as
recited in claim 1 and commensurately recited in claims 18 and 34. Claims
2—17, 19—33, and 35—46 ultimately depend from one of claims 1,18, and 34.
Accordingly, on this record, we are persuaded the Examiner erred in
rejecting claims 1—46 under 35 U.S.C. § 103(a). Because this issue is
dispositive of the Appeal, we do not address Appellants’ other arguments.
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Appeal 2015-005690
Application 12/760,817
DECISION
For the reasons discussed above, we reverse the Examiner’s decision
to reject claims 1—46.
REVERSED
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