In Re Charles D. Huston and Darryl J. Cornish

308 F.3d 1267, 64 U.S.P.Q. 2d (BNA) 1801, 2002 U.S. App. LEXIS 21659, 2002 WL 31319741
CourtCourt of Appeals for the Federal Circuit
DecidedOctober 17, 2002
Docket02-1048
StatusPublished
Cited by27 cases

This text of 308 F.3d 1267 (In Re Charles D. Huston and Darryl J. Cornish) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
In Re Charles D. Huston and Darryl J. Cornish, 308 F.3d 1267, 64 U.S.P.Q. 2d (BNA) 1801, 2002 U.S. App. LEXIS 21659, 2002 WL 31319741 (Fed. Cir. 2002).

Opinions

Opinion for the court filed by Circuit Judge DYK. Dissenting opinion filed by Circuit Judge PROST.

DYK, Circuit Judge.

Charles D. Huston and Darryl J. Cornish (“appellants”) appeal the decision of the United States Board of Patent Appeals and Interferences (“Board”) affirming the final rejection of claims 1, 5-18, and 21-26 of U.S. Application Serial No. 08/926,293 (“the '293 application”). Ex parte Huston, No. 00-0947 (Bd. Pat.App. & Int. July 31, 2001). Because the Board properly concluded that the claims are not entitled to the filing date of an earlier filed application and would have been obvious to one of ordinary skill in the art at the time of invention, we affirm.

BACKGROUND

The claimed subject matter of the '293 application is directed to a method and apparatus for displaying an advertising message to a golfer on a screen based on the golfer’s current position as determined by a global positioning satellite (“GPS”) system. A GPS system is a constellation of satellites that circle the earth transmitting signals that are used to determine the location of a device receiving the signal.

Huston filed two earlier applications, U.S. Application Serial No. 07/804,368 [1270]*1270(“the '368 application”), on December 10, 1991, and a continuation-in-part (“CIP”) of the '368 application, United States Application Serial No. 08/313,718 (“the '718 application”), on September 22, 1994. The '718 application ultimately issued as U.S. Patent No. 5,364,093 (“the '093 patent”). Appellants contend that the application at issue, the '293 application, is entitled to the benefit of the filing date of the '368 application, making the effective filing date December 10, 1991, rather than December 30, 1994. The United States Patent and Trademark Office (“PTO”) contends that the '293 application should benefit only from its own December 30, 1994, filing date.

The '093 patent1 relates to a method and system for determining and displaying the approximate distance between a golf ball and a target on the golf course such as a golf cup or a hazard. The invention of the '093 patent utilizes a GPS receiver positioned near the golf ball to determine the position of the golf ball and, based on that position, calculates the distance to a golf cup or a hazard. The specification describes an embodiment of the invention that includes a bi-directional radio system capable of receiving error correction information and “other information.” '093 patent, col. 4,11. 63-65.

Claims 1, 5-18, and 21-26 of the '293 application are at issue on appeal. Claims 1, 21, and 24 are representative. Claim 1 provides:

1. A method for displaying an advertising message to a golfer on a golf course using the global positioning satellite system comprising the steps of:
positioning a remote global positioning satellite receiver on the golf course;
storing, a "plurality of predetermined locations on the golf course;
determining, a position of the remote receiver on the golf course using the global positioning satellite system; and
displaying the advertising message to the golfer on the golf course based on the position of the remote receiver relative to the predetermined locations on the golf course.

'293 application, claim 1 (emphasis added).

Claim 21 adds the limitation of a differential correction means for determining and transmitting an error correction. The differential correction means enables the GPS system to calculate the location of the golfer more accurately. Claim 21 provides:

21. A system for displaying an advertising message to a golfer on a golf course using a global positioning satellite system comprising:
differential correction means positioned at a known location for receiving signals from the global positioning, satellite system, for determining an apparent location, and for transmitting a correction based on the difference between the known location and the apparent location;
global positioning receiver means transportable for accompanying the golfer during play of golf on the golf course for receiving signals indicative of the [1271]*1271apparent position of the receiver means on the golf course using the global positioning satellite system and including a communication link for receiving corrections from the differential correction means, the global positioning receiver means being operable for determining an accurate position on the golf course based on the apparent position and the corrections;
storage means storing a plurality of predetermined accurate positions on a golf course;
means linked to said global positioning receiver means and said storage means for determining if the position of the receiver means coincides with one of the plurality of predetermined accurate positions; and
display means coupled to the global positioning receiver means for displaying the advertising message to the golfer if the position of the receiver means coincides with one of the predetermined accurate positions of the global positioning receiver means on the golf course.

'293 application, claim 21 (emphasis added).

Claim 24, which depends from claim 21, requires a communications link to receive and transmit the advertising message: “The system of claim 21, said communications link being operable for receiving an advertising message and for sending said received message to the display means for display.” '293 application, claim 24.

PROCEEDINGS BELOW

The examiner rejected claims 1, 5-18, and 21-26 as obvious under 35 U.S.C. § 103(a), relying on various combinations of eight references: U.S. Patent No. 5,056,106 to Wang et al. (“Wang”); U.S. Patent No. 5,095,430 to Bonito et al. (“Bonito”); U.S. Patent No. 5,095,430 to Fukushima et al. (“Fukushima”); U.S. Patent No. 5,326,095 to Dudley (“Dudley”); U.S. Patent No. 5,524,081 to Paul (“Paul”); U.S. Patent No. 5,664,948 to Dimitriadis et al. (“Dimitriadis”); Jeff Hurn, “GPS: A Guide to the Next Utility,” Trimble Navigation, 1989 (“Hurn”); and “RTCM Recommended Standards for Differential Nav-istar GPS Service,” Version 2.0, Jan. 1, 1990 (“RTCM”).

An initial question was whether the Paul and Dimitriadis patents should be considered as prior art under 35 U.S.C. § 102(e) against the '293 application.2 The application that ultimately issued as Paul was filed May 2, 1994, and the application that ultimately issued as Dimitriadis was filed October 11, 1994. Thus, if the '293 application were entitled to a filing date of December 10, 1991, the filing date of the '368 application, then Paul and Dimitriadis would not be prior art under section 102(e). The examiner determined that appellants were not entitled to the benefit of the filing date of the '368 application because the '368 application did not disclose the currently claimed subject matter in the manner provided by the first paragraph of 35 U.S.C.

Free access — add to your briefcase to read the full text and ask questions with AI

Related

In Re ANOVA HEARING LABS, INC.
Federal Circuit, 2020
In Re: Black
Federal Circuit, 2019
Polaris Industries, Inc. v. Arctic Cat, Inc.
882 F.3d 1056 (Federal Circuit, 2018)
In Re: Nuvasive, Inc.
842 F.3d 1376 (Federal Circuit, 2016)
In Re Joseph GIUFFRIDA
527 F. App'x 981 (Federal Circuit, 2013)
In Re Applied Materials, Inc.
692 F.3d 1289 (Federal Circuit, 2012)
In Re Chapman
595 F.3d 1330 (Federal Circuit, 2010)
PowerOasis, Inc. v. T-MOBILE USA, INC.
522 F.3d 1299 (Federal Circuit, 2008)
PowerOasis v. T-Mobile
2007 DNH 042 (D. New Hampshire, 2007)
RH MURPHY CO., INC. v. Illinois Tool Works, Inc.
409 F. Supp. 2d 53 (D. Massachusetts, 2006)
McMullin v. Carroll
153 F. App'x 738 (Federal Circuit, 2005)
Cynthia A. Guillebeau v. Department of the Navy
362 F.3d 1329 (Federal Circuit, 2004)
In Re Lavaughn F. Watts, Jr
354 F.3d 1362 (Federal Circuit, 2004)

Cite This Page — Counsel Stack

Bluebook (online)
308 F.3d 1267, 64 U.S.P.Q. 2d (BNA) 1801, 2002 U.S. App. LEXIS 21659, 2002 WL 31319741, Counsel Stack Legal Research, https://law.counselstack.com/opinion/in-re-charles-d-huston-and-darryl-j-cornish-cafc-2002.