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In re Charles D. Huston

October 17, 2002

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Last Month at the Federal Circuit - November 2002

In In re Huston, No. 02-1048 (Fed. Cir. Oct. 17, 2002), the Federal Circuit affirmed an Examiner’s finding of obviousness despite what it identified as a convoluted path supporting the decision.

The technology at issue concerns a method and apparatus for displaying advertising messages to a golfer on a screen based on the golfer’s current position, as targeted by a global positioning satellite (“GPS”) system. Charles D. Huston and Darryl J. Cornish (collectively “Huston”) filed U.S. Application Serial No. 08/926,293 (“the ‘293 application”) on December 30, 1994, claiming the benefit of an earlier application, U.S. Application Serial No. 07/804,368, filed December 10, 1991. The Examiner determined that the ‘293 application was not entitled to the priority date of
the earlier application, and the Board upheld this determination. Specifically, the earlier application did not disclose the later claimed concept of “displaying an advertising message” to a golfer based on position. The Federal Circuit agreed, noting that the issue is not whether this claim limitation would have been obvious, but whether the parent application provides any such written description.

The Court then reviewed the Board’s determination that claim 1 of the ‘293 application was obvious in light of the prior art as of December 30, 1994. The obviousness analysis was conducted in two steps, first focusing on the “use of a GPS system on a golf course” limitation, and then focusing on the “positional advertising” limitation.

The Board had found the use of a GPS system on a golf course obvious in light of a combination of two references, the Wang and Fukumishu patents. Huston appealed, arguing that there wasno motivation to combine these references, the proposed modification would change the operating principle of the claimed invention, there was no reasonable expectation of success in view
of the teachings of Wang, and the claim limitations were not taught or suggested by the proposed combination. The Federal Circuit answered these questions by pointing to the Paul patent, which described the use of a GPS system on a golf course to determine a golfer’s position. Although the Paul patent was not expressly recited by the Board as a basis for obviousness, the Federal Circuit recognized “judicial indulgence” in discerning the Board’s reasoning and affirming its decision.

In dissent, Judge Prost disagreed that the Board’s reasoning was “readily discernable,” concluding instead that since the Board had not cited the Paul patent as a basis for finding obviousness, the Federal Circuit could not substitute what it considers to be a more adequate or proper basis.