Shoot-A-Way, Inc.

Patent Trials and Appeals BoardApr 28, 2021

2020004490 (P.T.A.B. Apr. 28, 2021)

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. 15/419,760 01/30/2017 John G. Joseph SHO2920-004H 9793 8698 7590 04/28/2021 STANDLEY LAW GROUP LLP 6300 Riverside Drive Dublin, OH 43017 EXAMINER ARYANPOUR, MITRA ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 04/28/2021 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): standleydocketing@standleyllp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN G. JOSEPH and TROY DAVID GEISER ____________ Appeal 2020-004490 Application 15/419,760 Technology Center 3700 ____________ Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and SEAN P. O’HANLON, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 3–5, 11–13, and 17–20.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Shoot-A-Way, Inc. Appeal Br. 2. 2 Claims 2, 6–10, and 14–16 are cancelled. Appeal Br. 16–18 (Claims App.). Appeal 2020-004490 Application 15/419,760 2 THE CLAIMED SUBJECT MATTER Claims 1, 13, and 18 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A basketball practice machine for assisting a user to improve his or her basketball skills comprising: a ball ejector configured to launch a series of basketballs to various positions on a basketball playing area; an interface comprising a plurality of individually selectable locations arranged in a spaced angular pattern along a rendering of a basketball playing surface to correspond with the positions on said basketball playing area; a sensor configured to count the number of made shots; and a controller in electrical communication with the interface and the ejector; wherein said controller is configured to receive selection data regarding the individually selectable locations directly and physically touched by the user and the order in which said individually selectable locations were touched, and transmit commands to said ball ejector based upon the selection data such that the ball ejector launches the series of basketballs to the positions on the basketball playing area corresponding to the individually selectable locations touched by the user in the order in which said individually selectable locations were touched. Appeal Br. 16 (Claims App.). EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Name Reference Date Feith US 4,269,163 May 26, 1981 Marty US 2007/0026975 A1 Feb. 1, 2007 Appeal 2020-004490 Application 15/419,760 3 Sniper: “The Sniper Basketball Training System,” available at https:// www.youtube.com/watch?v=X9SqMy8xdf4, pub. July 5, 2008, and “Sniper: The Ultimate Basketball Trainer,” Oct. 22, 1995.3 THE REJECTIONS4 I. Claims 1, 3–5, 11–13, and 17–20 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 2. II. Claims 1, 3–5, 13, and 17–20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sniper and Feith. Id. at 3–8. III. Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sniper, Feith, and Marty. Id. at 8–9. IV. Claims 1, 3–5, 11–13, and 17–20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Marty, Sniper, and Feith. Id. at 9–12. V. Claims 1, 3–5, 13, and 17–20 stand provisionally rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1–20 of U.S. Patent Application No. 15/152,262. Id. at 13–14. VI. Claims 1, 3–5, 11–13, and 17–20 stand provisionally rejected on the ground of non-statutory obviousness-type double patenting as being 3 The Sniper video and document were made of record by the Information Disclosure Statement and Non-Patent Literature filings dated February 15, 2017. 4 Each of the Examiner’s statements of Rejection II, Rejection IV, Rejection V, and Rejection VI includes claim 2 (Final Act. 3, 9, and 13–14), which was canceled by the Amendment filed March 8, 2019, and, thus, is not involved in this appeal. Appeal 2020-004490 Application 15/419,760 4 unpatentable over claims 1–24 of U.S. Patent Application No. 14/984,051. Id. at 14. OPINION Rejection I – Indefiniteness (i) First Basis: “individually selectable locations” Independent claim 1 recites, in relevant part, “a plurality of individually selectable locations.” Appeal Br. 16 (Claims App.). Independent claims 13 and 18 recite similar limitations. Id. at 18–19. The Examiner determines that these limitations render the claims indefinite because “[i]t is unclear what structure is encompassed by such language.” Final Act. 2. The Examiner explains that Appellant’s Specification describes “depressi[ng] one or more of the buttons 41 (figures 3A, 3B; paragraph 0101). If by ‘individually selectable locations’ [A]ppellant is referring to the buttons, then such should be made clear, since as noted above that is not readily apparent.” Ans. 3. Appellant argues that “[t]he claims require that such locations be capable of selection by direct physical touch.” Appeal Br. 7. Appellant asserts that “buttons 41 of figures 3A and 3B are an exemplary, non-limiting example of structure which falls within the scope of the claim limitation.” Reply Br. 2. We agree with Appellant that the scope of the identified claim language is sufficiently clear so as not to render the claims indefinite. The Specification describes that the system includes a user interface that enables the user to “select at least one or a plurality of different locations 22 at which the player P will shoot the basketball” and in an exemplary embodiment, a “user would select the various positions by Appeal 2020-004490 Application 15/419,760 5 depressing one or more of the buttons 41 (Fig. 3A) which are arranged on the interface 40 to generally correspond to the positions 22 labeled in Fig. 1.” Spec. ¶ 101. In other words, the individually selectable locations recited in the claims may be buttons that are depressible by a user or other structure to input a selection. The Examiner’s stated concern regarding the use of “individually selectable locations” in the claims, as opposed to “buttons” (Ans. 3) appears to address breadth of the claim language, not indefiniteness. See In re Miller, 441 F.2d 689, 693 (CCPA 1971); In re Gardner, 427 F.2d 786, 788 (CCPA 1970) (“Breadth is not indefiniteness.”). The Examiner does not explain adequately why the breadth of the claim should be equated to indefiniteness in this case. For these reasons, we do not sustain the Examiner’s first basis for rejecting claims 1, 3–5, 11–13, and 17–20 under 35 U.S.C. § 112, second paragraph, as indefinite. (ii) Second Basis: “were touched” Independent claim 1 recites, in relevant part, that the “controller is configured to receive selection data regarding the individually selectable locations directly and physically touched by the user and the order in which said individually selectable locations were touched.” Appeal Br. 16 (Claims App.). Independent claims 13 and 18 recite similar limitations. Id. at 18–19. The Examiner determines that the term “were” renders the claims indefinite because “the claims should not be described using past tense.” Final Act. 2. The Examiner explains that “[i]t is not readily apparent if the claims are presently capable of achieving the same result and that the claimed structure is capable of being touched. ‘[W]ere’ implies that the Appeal 2020-004490 Application 15/419,760 6 locations had been touched but not that they are currently capable of being touched.” Ans. 4. Appellant argues that “the limitation in question discusses how a controller responds following touch by a user at a user interface. Thus, the transmission of commands occurs after the user selection by touch is performed.” Appeal Br. 7. Appellant “fails to see how the use of the past tense implies that the locations are no longer capable of being touched. Instead, the use of past tense indicates the timing in which such locations were touched relative to receipt of data regarding the same at the controller.” Reply Br. 3. We agree with Appellant. In our view, the use of past tense merely indicates that the touching of an individually selectable location would occur before receipt of such an input by the controller and does not suggest that the individually selectable location would no longer have the current capability of being touched. Here, the claims make clear that the limitations regarding “the order in which said individually selectable locations were touched” reflect the current capability of the controller structure (i.e., the controller is configured to use the order in which a user touches the individually selectable locations to command the ball ejector to launch basketballs to corresponding locations on the basketball court). For these reasons, we do not sustain the Examiner’s second basis for rejecting claims 1, 3–5, 11–13, and 17–20 under 35 U.S.C. § 112, second paragraph, as indefinite. Rejection II – Obviousness based on Sniper and Feith The Examiner finds that Sniper discloses a basketball practice machine including, in relevant part, Appeal 2020-004490 Application 15/419,760 7 a ball ejector . . . configured to launch a series of basketballs to various locations on a basketball playing area (the machine can be programmed to launch a basketball to specific locations on the court). . . . The ball ejector can be operated manually to launch basketballs to a particular position on the court or it can be programmed to randomly launch basketballs to various locations on the basketball [court]. The basketballs are launched one at a time and in a preselected order. In other words, in the manual mode, the ejector will launch basketball[s] in the manner in which the operator has selected and in the preprogrammed mode, again the basketballs are launched in the order in which the ejector has been programmed[; and] . . . . a controller . . . configured to receive selection data regarding the individually selectable locations directly touched by a user and the order in which said individually selectable locations were touched, and transmit commands to said ball ejector based upon the selection data such that the ball ejector launches the series of basketballs to the positions on the basketball playing area corresponding to the individually selectable locations touched by the user in the order in which said individually selectable locations were selected. Final Act. 3–8. Appellant argues that Sniper does not disclose “that the controller receive[s] selection data regarding the order in which the individually selectable locations were touched and program the ball ejector to launch the series of basketballs to the positions on the basketball playing area corresponding to the order in which said individually selectable locations were touched.” Appeal Br. 8–9. Appellant asserts that “the cited references fail to teach programming passes according to an order of selected locations corresponding to shooting locations on the playing surface (e.g., spot 17, spot 2, spot 7, spot 3).” Id. at 9. Appellant contends that “[t]he threadbare recitation of a manual mode in the Sniper brochure provides no Appeal 2020-004490 Application 15/419,760 8 teaching regarding how such a manual mode would be accomplished or what it might provide.” Id. We agree with Appellant that a sustainable case of obviousness has not been established. Sniper discloses “5 pre-set shooting programs which simulate game conditions” and “15 custom programs which can be designed for any shooting drills or player training sessions.” Sniper 1.5 Sniper also discloses that “[a] player may select, through the remote control or through the control panel in the back of the machine, how many balls are ejected to which location on the court and at what height or time interval. The shooter con also choose either a chest or lob poss.” Id. at 4. The Examiner takes the position that [c]onsidering that the Sniper device has the ability to allow the user to preselect a drill or manually select the number of balls being delivered to one or more locations on the playing court and further allows the user to select the frequency of ball delivery[,] it would appear that depending on the user selection the end user can inherently achieve what [A]ppellant is now asserting. What [A]ppellant is currently asserting has been achieved for decades, there is nothing new or novel about programming a ball ejector to eject balls on the playing court, whether preselected pattern or random. Ans. 19. However, Appellant persuasively asserts that the “Examiner has provided no support for the assertion that Sniper, Marty, Feith, or other cited references teach recording the order in which such locations were selected and programming the device to eject the basketballs in said order.” Reply Br. 4; see also id. at 5 (asserting that “no order is recorded or used in 5 The Sniper document of record does not include page numbers. Thus, for convenience, we refer herein to the pages of the Sniper document as if numbered consecutively beginning with the page captioned “Sniper: The Ultimate Basketball Trainer” as page 1. Appeal 2020-004490 Application 15/419,760 9 programming” in Sniper). The Examiner has not identified, nor do we find, adequate disclosure in Sniper that the controller controls the ball ejector to launch basketballs based on the order in which a user touches individually selectable locations. In particular, we are not persuaded that the Examiner has adequately supported that Sniper inherently has the ability for a user to select a plurality of individually selectable locations in an order that can then be input to a controller merely because it discloses the ability to select a number of balls being delivered to a location and a time interval. Selecting a number of balls to be delivered to a location and a time interval could be limited to selecting these variables in shooting programs each having a default and unchangeable order for the plurality of locations. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (internal quotation marks and citations omitted) (“To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”). The Examiner further states that “there is nothing new or novel about programming a ball ejector to eject balls on the playing court, whether preselected pattern or random.” Ans. 19. The Examiner, however, does not explain adequately how the prior art teaches a machine having an interface comprising a plurality of individually selectable locations and a controller configured to receive the selected locations and the order of the selected locations. Although Sniper refers to “custom programs,” the reference does not disclose any detail regarding customization other than how many balls Appeal 2020-004490 Application 15/419,760 10 are ejected to a location, height, and time interval (Sniper 4), and, in particular, is silent as to launching basketballs to locations on a basketball court based on individual selections by a user and the order in which a user makes selections. On this record, one of ordinary skill in the art can only speculate as to whether Sniper’s customization includes the ability to select a plurality of individually selectable locations in an order for input to a controller as required by the claim, and such speculation is insufficient to support the rejection. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies” in the cited references.”). Accordingly, for the foregoing reasons, we do not sustain the rejection of claim 1, and its dependent claims 3–5, under 35 U.S.C. § 103(a) as being unpatentable over Sniper and Feith. Because the Examiner relies on the same deficient findings in rejecting independent claims 13 and 18, as well as dependent claims 17, 19, and 20 (Final Act. 3–8), we also do not sustain the rejection of claims 13 and 17–20 under 35 U.S.C. § 103(a) as unpatentable over Sniper and Feith. Rejection III – Obviousness based on Sniper, Feith, and Marty This rejection relies on the same findings as to the disclosure of Sniper that we find deficient for the reasons discussed above in connection with Rejection II. Final Act. 8–9. The Examiner relies on Marty for teaching additional features, but does not articulate any findings or reasoning that would cure the aforementioned deficiency the combination of Sniper and Feith. Accordingly, for the same reasons discussed above, we do not Appeal 2020-004490 Application 15/419,760 11 sustain the rejection of claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over Sniper, Feith, and Marty. Rejection IV – Obviousness based on Marty, Sniper, and Feith The Examiner finds that Marty discloses a basketball practice machine including, in relevant part, a controller configured to receive selection data regarding the individually selectable locations directly touched by the user and the order in which said individually selectable locations are were touched, and transmit commands to said ball ejector based upon the selection data such that the ball ejector launches the series of basketballs to the positions on the basketball playing area corresponding to the individually selectable locations selected by the user in the order in which said individually selectable locations are were touched (see paragraph 0017, 0029, 0176, 0177 and claim 20). Final Act. 10. Appellant argues that “[t]he cited passages of Marty discuss trajectory tracking, scoring, and tracking a player’s position. . . . However, these passages do not discuss tracking the order in which locations are selected at a user interface.” Appeal Br. 12 (citing Marty ¶¶ 17, 29, 171, 176–177); see also Reply Br. 4 (asserting that the “Examiner has provided no support for the assertion that Sniper, Marty, Feith, or other cited references teach recording the order in which such locations were selected and programming the device to eject the basketballs in said order”). We agree with Appellant. Marty discloses a device that generates trajectory parameters and provides feedback information for a plurality of different trajectories shot from locations on a basketball court. Marty ¶¶ 17, 29. Marty also discloses a training system providing a shooting program that directs a player to Appeal 2020-004490 Application 15/419,760 12 particular shooting locations on a playing area. Id. ¶ 170. The shooting locations may be marked by paint or lights on the floor of the playing area, or a visual display device “may include a map of the playing area” in which locations “may be indicated in some manner.” Id. ¶¶ 171–172. The system may also include a motorized ball return mechanism for directing balls to the different locations as part of the shooting program. Id. ¶ 169. Marty discloses that “the location where the ball is passed may be automatically controlled by the training system 702 as part of a shooting program or the location may be manually adjusted.” Id. Although Marty discloses that shooting locations may be manually adjusted, Marty does not provide detail as to such manual adjustments. The Examiner does not identify any disclosure in the cited portions of Marty indicating that manually adjusting the shooting locations means that the controller is configured to command the ball return mechanism to launch basketballs based on the order in which a user selects individually selectable locations. On this record, one of ordinary skill in the art can only speculate as to whether Marty’s disclosure that “the location may be manually adjusted” (Marty ¶ 169) includes the ability to select a plurality of individually selectable locations in an order for input to a controller as required by the claim, and such speculation is insufficient to support the rejection. Accordingly, for the foregoing reasons, we do not sustain the rejection of claim 1, and its dependent claims 3–5, 11, and 12, under 35 U.S.C. § 103(a) as being unpatentable over Marty, Sniper, and Feith. Because the Examiner relies on the same deficient findings in rejecting independent claims 13 and 18 (Final Act. 10), we also do not sustain the rejection of Appeal 2020-004490 Application 15/419,760 13 claims 13 and 18, and dependent claims 17, 19, and 20, under 35 U.S.C. § 103(a) as unpatentable over Marty, Sniper, and Feith. Rejections V and VI The Examiner provisionally rejected claims 1, 3–5, 13, and 17–20 on the ground of non-statutory double patenting as being unpatentable over claims 1–20 of Application No. 15/152,262, which is now US 10,870,045 B2, issued December 22, 2020. Final Act. 13–14. The Examiner also provisionally rejected claims 1, 3–5, 11–13, and 17–20 on the ground of non-statutory double patenting as being unpatentable over claims 1–24 of Application No. 14/984,051, which is now US 10,518,153 B2, issued December 31, 2019. Id. at 14. We decline to reach these rejections and leave it to the Examiner to determine whether the obviousness-type double patenting rejections remain proper. See Ex parte Jerg, Appeal No. 2011-000044, at 5–6 (BPAI Apr. 13, 2012) (designated informative) (“Panels have the flexibility to reach or not reach provisional obviousness- type double-patenting rejections.”) (citing Ex parte Moncla, Appeal No. 2009-006448 (BPAI June 22, 2010) (designated precedential)). CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–5, 11– 13, 17–20 112 Indefiniteness 1, 3–5, 11– 13, 17–20 1, 3–5, 13, 17–20 103(a) Sniper, Feith 1, 3–5, 13, 17–20 11, 12 103(a) Sniper, Feith, Marty 11, 12 Appeal 2020-004490 Application 15/419,760 14 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–5, 11– 13, 17–20 103(a) Marty, Sniper, Feith 1, 3–5, 11– 13, 17–20 1, 3–5, 11– 13, 17–20 Provisional Obviousness-type Double Patenting6 Overall Outcome 1, 3–5, 11– 13, 17–20 REVERSED 6 As discussed above, we do not reach the Examiner’s two provisional non- statutory double patenting rejections.