Ex parte Curry

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parfe JAMES PRESCOTT CURRY
Appeal No. 2005-0509
Application No. 091449,237
ON BRIEF
Before BARRETT, BARRY, and MACDONALD, Administrative Patent Judges.
MACDONALD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 81-93 and
95-97. Claims 1-80 and 94 have been canceled.
Invention
Appellant's invention relates to a method and system that allows users to
custom design interactive fitness, diet, and rehabilitation programs and purchase
goods. The system and method includes at least one portal, a distributed
network, and a controller or server. The portals are distributed to sponsors to
provide distributed access to the controller. For example, a sponsored portal
could be a kiosk placed in a heath club, fitness center or shopping mall. An

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authorized non-sponsored portal could be an authorized user's home computer.
In operation, when a user corlnects to the controller, the controller initiates a
validation sequence. The controller seamlessly accesses a record system or a
database to identify the portal and the user. When the portal and the user are
identified, the controller assigns an access code. 	Preferably, the access code
defines the user's access rights that determine the level of services and
discounts offered to the user. While the access code is being assigned, the
controller may transparently access a payment database or a payment controller
that retains records of user accounts receivable. If the user is delinquent, the
controller can prompt the user to tender payment. 	Payment may then be
tendered, for example, through credit cards, electronic fund transfer, debit cards,
digital cash, vending systems, or other known electronic commerce methods.
Appellant's specification at page 2, lines 2-1 8.
Claim 81 is representative of the claimed invention and is reproduced as
follows:
81. 	A method of providing wellness-related services, including at least one of
wellness, health, or fitness services through a publicly accessible distributed
network to authorized users using authorized portals, comprising:
providing an online site that enables wellness-related databases to be
accessed from at least one of a sponsored and a non-sponsored portal;
placing in corr~municationat least one of a sponsored and non-sponsored
portal to the online site through the publicly accessible distributed network
wherein the publicly accessible distributed network includes the Internet,
wherein the sponsored portal is at least in part sponsored by and located at, a
fitness center, and wherein at least one of the non-sponsored portals accesses
the on-line site through the Internet;

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receiving a request at the online site requesting access to the wellness-
related databases;
processing the request at the online site to determine whether the portal
was sponsored and whether the request was received from an authorized user;
and
responding to the request based in part on whether the portal was
sponsored and whether the user is authorized.
References
The references relied on by the Examiner are as follows:
Baker et al. (Baker) 	5,678,041
Roth 	5,890,997
Szabo 	5,954,640
Oct. 14, 1997
Apr. 	6, 1999
Sep. 21, 1999
Rejections At Issue
Claims 81 and 93 stand rejected under 35 U.S.C. § 103 as being obvious
over Baker.
Claims 82-87, 90, and 95-97 stand rejected under 35 U.S.C. § 103 as
being obvious over the combination of Baker and Szabo.
Claims 88, 89, 91 and 92 stand rejected under 35 U.S.C. § 103 as being
obvious over the combination of Baker and Szabo and Roth.
Throughout our opinion, we make references to the Appellant's briefs,
and to the Examiner's Answer for the respective details thereof.'
' Appellant filed an appeal brief on October 8, 2003. Appellant filed a reply brief
on June 4, 2004. The Examiner mailed an Examiner's Answer on April 2, 2004.

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With full consideration being given to the subject matter on appeal, the
Exan-liner's rejections and the arguments of the Appellant and the Examiner, for
the reasons stated infra, we affirm the Examiner's rejection of claims 81, 82, 85,
and 93 under 35 U.S.C. § 103, and we reverse the Examiner's rejection of claims
83-84, 86-92, and 95-97 under 35 U.S.C. § 103.
Only those arguments actually made by Appellant have been considered
in this decision. Arguments that Appellant could have made but chose not to
make in the brief have not been considered. W e deem such arguments to be
waived by Appellant [see 37 CFR § 41.37(c)(l)(vii) effective Septerr~ber13, 2004
replacing 37 CFR § 1.192(a)].
Appellant has indicated that for purposes of this appeal, the claims stand
or fall together in twelve groupings. 	See page 5 of the brief. However, Appellant
does not argue each group of claims separately and explain why the claims of
each group are believed to be separately patentable. Rather, Appellant has
repeated the same few arguments for multiple groups. 	See pages 6-18 of the
brief and pages 2-4 of the reply brief. Appellant has not met the requirements of
37 CFR § 1,192 (c)(7) (July 1, 2002) as amended at 62 Fed. Reg. 53169
(October 10, 1997), which was controlling at the time of Appellant's filing of the
brief. 37 CFR § 1.192 (c)(7) states:
Grouping of claims. For each ground of rejection which
appellant contests and which applies to a group of two or
more claims, the Board shall select a single claim from the

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group and shall decide the appeal as to the ground of
rejection on the basis of that claim alone unless a statement
is included that the claims of the group do not stand or fall
together and, in the argument under paragraph (c)(8) of this
section, appellant explains why the claims of the group are
believed to be separately patentable. Merely pointing out
differences in what the claims cover is not an argument as to
why the claims are separately patentable.
W e will, thereby, consider Appellant's claims as standing or falling together in
five groups based on the distinct rejections and arguments presented by
Appellant, and we will treat:
Claim 81 as a representative claim of Group I (claims 81 and 93);
Claim 82 as a representative claim of Group II (claim 82);
Claim 85 as a representative claim of Group Ill (claim 85);
Claim 86 as a representative claim of Group IV (claims 83-84, 86-87, 90,
and 95-97), and
Claim 88 as a representative claim of Group V (claims 88-89 and 91-92).
If the brief fails to meet either requirement, the Board is free to select a single
claim from each group and to decide the appeal of that rejection based solely on
the selected representative claim. In r e McDaniel, 293 F.3d 1379, 1383,
63 USPQ2d 1462, 1465 (Fed. Cir. 2002). 	See also In re Watts, 354 F.3d 1362,
1368, 69 USPQ2d 1453, 1457 (Fed. Cir. 2004).

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Whether the Rejection o f Claims 81 a n d 93 Under 35 U.S.C. 	5 103
is proper?
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 invention as set forth in claims 81
and 93. Accordingly, we affirm.
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker,
977 F.2d 1443, 1445,24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In r e
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The
Examiner can satisfy this burden by showing that some objective teaching in the
prior art or knowledge generally available to one of ordinary skill in the art
suggests the claimed subject matter. In re Fine, 837 F.2d 1071, 1074,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial burden is met does
the burden of coming forward with evidence or argument shift to the Appellant.
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d
at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and consideration of
all the pertinent evidence and arguments. "In reviewing the [E]xaminerls
decision on appeal, the Board must necessarily weigh all of the evidence and
argument." Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. "[Tlhe Board must
not only assure that the requisite findings are made, based on evidence of

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record, but must also explain the reasoning by which the findings are deemed to
support the agency's conclusion." In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d
1430, 1434 (Fed. Cir. 2002).
With respect to independent claim 81, Appellant argues at pages 6-1 1 of
the brief, that the Examiner has erred in finding 1) the type of data in the
database is nonfunctional descriptive material, 2) the physical location (a fitness
center) where part of the method is performed is merely a field of use limitation,
and 3) the sponsorship status of the portal is nonfunctional descriptive material.
W e note that Appellant also believes that the Examiner has read these
limitations out of the claims and may believe that these limitations are merely
business method limitations. On t.hese two points we ,find nothing in the record
before us to support Appellant's business method contention and rather than
reading the limitations out of the claims, we find that the Examiner has
addressed each of the three limitations listed above.
As to the type of data in the database, we find the Examiner's position to
be the better. We find that the "wellness-related" data in the databases and
communicated on the distributed network does not functionally change either the
data storage system or communication system used in the method of claim 81.
Nonfunctional descriptive material cannot render nonobvious an invention that
would have otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339, 70
USPQ2d 1862, 1864 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385,
21 7 USPQ 401, 404 (Fed. Cir. 1983) (when descriptive material is not

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functionally related to the substrate, the descriptive material will not distinguish
the invention from the prior art in terms of patentability)
Common situations involving nonfunctional descriptive material are:
- a computer-readable storage medium that differs from the prior
art solely with respect to nonfunctional descriptive material, such
as music or a literary work, encoded on the medium,
- a computer that differs from the prior art solely with respect to
nonfunctional descriptive material that cannot alter how the
machine functions (i.e., the descriptive material does not
reconfigure the computer), or
- a process that differs from the prior art only with respect to
nonfunctional descriptive material that cannot alter how the
process steps are to be performed to achieve the utility of the
invention.
Thus, if the prior art suggests storing a song on a disk, merely choosing a
particular song to store on the disk would be presumed to be well within the level
of ordinary skill in the art at the time the invention was made. The difference
between the prior art and the claimed invention is simply a rearrangement of
nonfunctional descriptive material.
As to the physical location (in a fitness center) being merely a field of use
limitation, again we find the Examiner's position to be the better. W e find that
the claimed fitness center does not differ structurally from the school taught by
Baker (colunin 1). W e find that they differ solely based on their intended use.
Appellant himself reinforces this in the specification at page 2, where he
discloses the portalcould be in either a fitness center or a shopping mall.
Clearly, the fitness center and shopping mall are the same structurally and differ

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only as to their intended uses. Statements of intended use do not serve to
distinguish structure over the prior art. See In r e Pearson, 494 F.2d 1399,
1403, 181 USPQ 641, 644 (CCPA 1974); In r e Yanush, 477 F.2d 958, 959,
177 USPQ 705,706 (CCPA 1973); In r e Casey, 370 F.2d 576, 580,
152 USPQ 235,238 (CCPA 1967).
As to the sponsorship status of the portal, again we find the Examiner's
position to be the better. Appellar~tat page 8 of the specification states that
sponsorship is related to location data including portal addresses and at page 3
states that users' access rights are adjusted according to their location. That is,
portal addresses control access rights. As the Examiner has pointed out in the
rejection, Baker teaches this at column 4. W e find that Baker clearly teaches
differing access rights based on location data including portal addresses. W e
find that the further labeling of a portal as sponsored or unsponsored does
nothing to change the structure or functionality of the portal. W e concur with the
Examiner that this is nonfunctional descriptive material.
Finally, we note that while Baker teaches "authorized portals" (referred to
as users or user terminals), Baker does not appear to have "authorized users"
within the meaning of claim 81. However, authorization of individual users (as
opposed to terminals) is such a pervasive concept in the art that we presume
this is why Appellant did not argue it. Regardless, we deem this argument to be
waived by Appellant as Appellant chose not to make the argument.
Therefore, we will sustain the Examiner's rejection under 35 U.S.C. § 103.

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11. 	Whether the Rejection of Claim 82 Under 35 U.S.C. 5 103 is
proper?
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 invention as set forth in claim 82.
Accordingly, we affirm.
With respect to dependent claim 82, Appellant argues at page 14 of the
brief, that neither reference teaches ""fitness related data" as the data entered
and accessed in the database. As we have discussed above with respect to
claim 81, the type of data does not functionally change either the data storage
system or communication system used in the method
Therefore, we will sustain the Examiner's rejection under 35 U.S.C. 5 103.
111. 	Whether the Rejection of Claim 85 Under 35 U.S.C. 5 103 is
proper?
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 invention as set forth in claim 85.
Accordingly, we affirm.
With respect to independent claim 85, Appellant repeats the arguments of
claim 81 at pages 11-13 of the brief. We find these arguments unpersuasive for
the reasons already discussed above with respect to claim 81.
Therefore, we will sustain the Examiner's rejection under 35 U.S.C. fj103.

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IV. 	Whether the Rejection of Claims 83-84, 86-87, 90, and 95-97
Under 35 U.S.C. 5 703 is proper?
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 not have
suggested to one of ordinary skill in the art the invention as set forth in claims
83-84, 86-87, 90, and 95-97. Accordingly, we reverse.
With respect to independent claim 86, Appellant argues at page 13 of the
brief, "Szabo discusses adaptive models for users already in groups, not
automaticallv assigning users to groups based on user attributes." W e have
reviewed the references, and we agree with Appellant. We find that the second
assigning step of claim 86 is not reasonably taught by the references.
Therefore, the Examiner has not met the initial burden of establishing a prima
facie case of obviousness and we will nOf sustain the Examiner's rejection under
35 U.S.C.5 103.
V. 	Whether the Rejection of Claims 88-89 and 97-92 Under
35 U.S.C. 5 703 is proper?
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 not have
suggested to one of ordinary skill in the art the invention as set forth in claims
88-89 and 91-92. Accordingly, we reverse.
With respect to dependent claims 88-89 and 91-92, we note that the
Examiner has relied on the Roth reference solely to teach "workout guidelines

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and advise" (answer at page 10). The Roth reference in combination with the
Baker and Szabo patents fails to cure the deficiencies of Baker and Szabo noted
above with respect to claim 86. Therefore, we will not sustain the Examiner's
rejection under 35 U.S.C. Cj 103 for the same reasons as set forth above.
Conclusion
In view of the foregoing discussion, we have sustained the rejection under
35 U.S.C. Cj 103 of claims 81, 82, 85, and 93, and we have not sustained the
rejection under 35 U.S.C. Cj 103 of claims 83-84! 86-92, and 95-97.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR Cj 1. I 36(a)(l)(iv).
AFFIRMED-IN-PART
Administrative Patent Judae
/ ' 	Administrative ~ 	a 	t 	e 	n 	w- j
ALLEN R. MACDONALD 	' 	)
BOARD OF PATENT
APPEALS AND
INTERFERENCES
Administrative Patent Judge 	)

Appeal No. 2005-0509
Application No. 091449,237
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