Order Granting I Denying Request For
`Ex Parte Reexamination
`
`90/008,817
`
`5179566
`
`Jimmy G. Foster
`
`3993
`
`--The MAILING DA TE of this communlcaUon appears on the cover sheet with the correspondence address-
`
`The request for ex parte reexamination filed 09 August 2007 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached .
`
`Attachments: a)D PTO-892,
`
`b )~ PTO/SB/08,
`
`c)D Other: __
`
`1. 181 The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b» . EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`For Requeste(s Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owne(s Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITIED.
`If Patent Owner does riot file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`2. D The request for ex parte reexamination is DENIED.
`
`This decision is not appealable (35 U.S.C. 303(c» . Requester may seek review by petition to the
`Commissioner under 37 CFR 1.181 within ONE MONTH from the mailing dale of this communication (37
`CFR 1.515(c)). EXTENSION OF TIME TO FILE SUCH A PETITION UNDER 37 CFR 1.181 ARE
`AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER
`37 CFR 1.1 83.
`
`In due course', a refund under 37 CFR 1.26 ( c ) will be made to requester:
`a) 0 by Treasury check or,
`b) 0 by credit to Deposit Account No. _
`, or
`c) 0 by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).
`
`~----J-'o~
`
`Jimmy Foster
`Prima Examiner
`Art Uni : 3993
`
`Office Action In Ex P.r1e Reexamination
`
`Pa~ Of Paper No. 20071003
`
`SKYHAWKE Ex. 1003, page 1
`
`

`

`Application/Control Number: 90/008.817
`Art Unit: 3993
`
`DECISION
`
`Page 2
`
`A substantial new question of patentability affecting claims 1-37 of United States Patent Number
`5,779,566 to Wilens is raised by the request for ex parte reexamination.
`
`Extensions of time under 37 CFR 1. 136(a) will not be pennitted in these proceedings because the
`provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties in a reexamination
`proceeding. Additionally. 35 U.S.C. 305 requires that ex parte reexamination proceedings "will
`be conducted with special dispatch" (37 CFR 1.550(a)). Extensions of time in ex parle
`reexamination proceedings are provided for in 37 CFR 1.550(c).
`
`The patent owner is reminded of the continuing responsibility under 37 CFR 1.565(a) to apprise
`the Office of any litigation activity, or other prior or concurrent proceeding, involving Patent No.
`5,779,566 throughout the course ofthis reexamination proceeding. The third party requester is
`also reminded of the ability to similarly apprise the Office of any such activity or proceeding
`throughout the course of this reexamination proceeding. See MPEP §§ 2207. 2282 and 2286.
`
`After filing of a request [or reexamination by a third party requester, any document filed by the
`patent owner or the third party requester must be served on the other party (or parties where two
`or more third party requester proceedings are merged) in reexamination proceedings in a manncr
`provided in 37 CFR 1.248. See 37 CFR 1.550(1).
`
`Patent owner is notified that any proposed amendment to the specification and/or claims in this
`reexaminatio.n proceeding must comply with 37 CFR 1.530(d)-(j), must be fonnally presented
`pursuant to 37 CFR 1.52 (a) and (b). and must contain any fees required by 37 CFRR 1.20(c).
`
`Patent owner is notified of the opportunity to waive the ti!TIe for filing a Patent Owner's
`Statement if patent owner does not intend to file one. This waiver may be made by filing
`appropriate correspondence to the Office in response to this Order, including a statement clearly ·
`indicating that patent owner will not be filing a Patent Owner's Statement.
`
`The Request indicates that requester considers claims 9 and 14 of Wi lens to be unpatentable over
`
`Canadian Patent No. 1.264,495' to Bonito et a1 (Bonito).
`
`I The document number 1,264,494 was inaccurately cited in the Request
`
`SKYHAWKE Ex. 1003, page 2
`
`

`

`Application/Control Number: 90/008,817
`Art Unit: 3993
`
`Page 3
`
`The Request also indicates that requester considers claim 8 of Wi lens to be unpatentable over
`
`Bonito in view of Patent Abstracts of Japan Publication No. 02·209173 to Matsuzakj et al
`
`(Matsuzaki).
`
`The Request also indicates that requester considers claim 9 of Wi lens to he unpatentable over the
`
`publication "Easy to Use Operating Instructions, Eagle Scoremasler Golf Computer," published
`
`1981 ("the Scoremaster Reference") in view of "Sharp Electronic Organizer Model ZQ-5000
`
`ZQ:5200 Operation Manual," published 1990 ("the Sharp Reference").
`
`Additionally, the Request on page 3 nOli-specifically indicates that requester considers claims 1-
`
`37 of Wi lens to be unpatentahle.over various reference combinations involving Bonito,
`
`Matsuzaki, the Scoremaster Reference, the Sharp Reference, Patent Abstracts of Japan
`
`Publication No. 03-\55883 to Murakawa, and the publication "The PGA Manual of Golf,"
`
`Wiren, 1991 ("the PGA Reference"). However, a detailed explanation in the Request of the
`
`pertinency and manner of applying the cited prior art to every claim for which reexamination is
`
`requested, more precisely indicates that requester in the Request considers the claims
`
`respectively to be unpatentable over the following specifically pointed out combinations:
`
`The Request indicates that requester considers claims J -5 and 9 of Wilens
`
`to be unpatentable over a combination of the Scoremaster Reference and the
`
`Sharp reference.
`The Request indicates that requester considers claim 6 of Wilens to be
`
`unpatentable over a combination of the Scoremaster Reference, the Sharp ·
`
`reference and Matsuzaki.
`
`The Request indicates 'hat requester considers claims 7, 9, 10, II, 14 and
`
`18 of Wi/ens to be unpatentable over the Bonito.
`
`The Request indicates thaI requester considers claims 13, 15 and 17 of
`
`Wi/ens to be unpatentable over a combination of Bonito, the Scoremaster and the
`
`Sharp reference.
`
`The Request indicates that requester considers claim 8 of Wi/ens to be
`
`unpatentable over a combination of Bonito in view of Matsuzaki.
`
`SKYHAWKE Ex. 1003, page 3
`
`

`

`Application/Control Number: 90/008,817
`Art Unit: 3993
`
`Page 4
`
`The Request indicates lhat requester considers claim J 6 of Wi/ens to he
`
`unpatentable over a combination of Bonito and the Sharp reference.
`
`The Request indicates that requester considers claims 12, /9-2 J. 24, 25.
`
`and 30-37 of Wi/ens to be unpatentable over a combination of Bonito the PGA
`
`reference.
`
`The Request indicates that requester considers claims 22 and 23 a/Wi/ens
`
`to he Ilnpatentable over a combination of Bonito, the PGA reference and Sharp.
`
`The Request indicates that requester considers claims 26-29 of Wi/ens to
`
`he unpatentable over a combinatioll of Bonito. the PGA reference and Matsuzala'.
`
`It is agreed that the consideration of the Bonito raises a substantial new question of patentability
`
`as to claims 9 and 14 of Wi lens substantially for the reasons set forth on pages 4-7, 9-13 and the
`
`Claim Charts I and 2 of the Request. Bonito discloses a golf cart computer which can record
`
`information, such as score, handicap, etc. (see page 14. lines 22-26), and which can recall such
`
`information (see page 2, lines 7-11; page 3, lines 13-18) and a wide range of other information,
`
`such as golf course landscape features and conditions. The computer can further provide such
`
`information. on demand, as data and pictorial representations on a display screen (see page 2 •
`
`. lines 12-16; page 2, line 29 through page 3, line 1; also Fig. 9 and page 4, lines 16-18; page 6,
`
`line 31 throu.gh page 7. line 2). Alternatively, the course information may be provided in a text
`
`format only, at the player's discretion (see Fig. 8 and page IS, lines 25-28). The computer
`
`therefore includes display of the various features of the course and playing aspects of the game,
`
`theoretically helping the golfer to playa better game and thereby improve the golfer's score (see
`
`page I, line 9 through page 2, line 6).
`
`The cart computer includes said display and includes memory storage and data entry
`,
`devices, such as a light-pen and keyboard-entry keys (see page 2,lines 7-17; page 2, line 29
`
`through page 3, line 18; page 5, line 26 through page 6, line 30). The memory holds multiple
`
`"screens" of golf play information, which further includes mUltiple screens that have screen(cid:173)
`
`dependent data input fields, regarding the nine or eighteen holes of golf. For example, the
`
`computer is equipped with a light pen that may be used to mark, as with an asterisk, the golfer's
`
`SKYHAWKE Ex. 1003, page 4
`
`

`

`Application/Control Number: 90/008,817
`Art Unit: 3993
`
`Page 5
`
`position on the graphical representation of the hole on the display. for each hole as the game is
`
`played (page 6, lines ·1 0-13 and lines 22-24). Upon this being done, physical distances on the
`
`golf course, represented by the distances from the asterisk to any graphics representation of a
`
`land feature of the golf course, may then be computed and displayed (see page 6, lines 13-19),
`The light pen may also be used to indicate a selection "from a displayed list. The memory will
`
`also hold player-input infonnation (see page 2, lines 7-10). Regarding thi~, the keyboard may he
`used to incrementally input the score of each hole played into memory (ibid), and the cumulative
`
`score, up to and including that hole or the previous hole, also may be computed. stored in
`memory. and displayed at the data region on the game-interactive screen (page 3, lines 13-25;
`
`page 6, lines 31-37). This means that at least the cumulative score for the last hole in
`combination with the display of the last hole will provide post-game information (and therefore a
`
`post-game screen). Additionally, the handicap, player names, etc., which will have been
`initially input by way of the keyboard upon a pre-game prompting by the computer (page 14,
`
`lines 22-26), may also be displayed in the data region of the screen (see Fig. 3). The keyboard is
`
`also used to select the type of graphical output to the display on the screen from a variety of
`presentations which may be provided, as well as to detennine what types of data information will
`
`be provided on the screen (see page 2, line 29 through page 3, line 12; page 5, lines 26-31; page
`
`6, line 37 through page 7, line 2; page IO,lines 11-19; page IS, lines 25-28; page 16, lines 3-8),
`
`Further, there is a plug-in graphics memory module which may be used to update the computer
`regarding course changes and conditions, which can be conveniently inserted into the computer
`
`as the need arises (see page 7, line 32 through page 8, line 3; page 8, lines 16-20). Additionally
`there is a two-way communications link provided between the cart computer and a remote printer
`on the course for printing off the results, as well as other information, at the end of the game
`
`(page 8, lines 21-28; page 9, lines 13-22),
`
`The subject matter disclosed by Bonito is relevant to claimed subject matter of claim 9
`which substantially calls for, among other things:
`
`providing a computer with a memory and data selection entry keys, storing
`plurality of information screens that include screen-dependent data input fields,
`selectively displaying infonnation screens on the display in a logical
`sequence of pre-game and game-interactive screens so that data is prompted by
`
`SKYHAWKE Ex. 1003, page 5
`
`

`

`Application/Control Number: 90/008,817
`Art Unit: 3993
`
`Page 6
`
`the pre-game information screen for entry thereo f regarding game-play
`parameters and data is recorded for the game on the game-interactive screen,
`selecting data input fields on an information screen, selecting golf
`information corresponding to a data input field,
`.
`and storing golf information into the memory as reports for retrieval by the
`user after the game .
`
`. The subject matter disclosed by Bonito is relevant to the claimed subject matter of claim
`
`14 which substantially calls for, amon$ other things,
`
`storing a plurality of pre-game, interactive-game, and post-game
`information screens in the memory of a computer unit having a display, in which
`the information screens have screen dependent data input fields for entry of data;
`displaying in an information screen that prompts for data input regardi.ng
`an upcommg game;
`providing a choice among a plurality of game· interactive screens for
`recording data defined by parameters entered in the pre· game information screen;
`displaying a chosen game·interactive screen;
`entering information on the game interactive screen and simultaneously
`into the memory; providing post·game reports based upon the information that
`was provided in the game· interactive screen; and having the game·interactive
`information screens include respectively first and second detail levels of
`information.
`
`Accordingly, there is a substantial likelihood that a reasonable examiner would consider
`
`the teachings of Bonito to be important in deciding whether each of claims 9 and 14 are
`
`patentable.
`
`The teaching of Bonito was not of record in the prosecution of the application for the
`
`Wi lens patent. Accordingly, the substantial question of patentability raised by the Bonito
`
`reference is new.
`
`It is also agreed that the consideration of Bonito in combination with Matsuzaki raises a
`
`substantial new question ofpate'ntability as to claim 8 of Wi lens for substantially the reasons set
`
`forth above with respect to claim 14 (already discussed above) and the additional reasons
`
`indicated on pages 14-18 and Claim Chart 3 of the Request. Claim 8 is similar to claim 14,
`
`except for the additional limitation calling for an interactive advice/feedback information screen.
`
`More spec~fically, in addition to Bonito which has been already described relative to the
`
`limitations of claim 14, Matsuzaki discloses enhancing a golf·scoring data·and·graphic
`
`SKYHAWKE Ex. 1003, page 6
`
`

`

`Application/Control Number: 90/008,817
`Art Unit: 3993
`
`Page 7
`
`calculator, by providing means for generating an alternative screen by actuating certain touch
`
`keys (H. I and advice key 5D) for the purpose of producing an advice message on a golf-score
`calculator, including an alternative advice picture. This combination of teachings is relevant to
`
`the subject matter of claim 8 which further calls for a feedback/advice screen.
`
`Accordingly. there is a substantial likelihood that a reasonable examiner would consider
`
`the combination of teachings afBonito and Matsuzaki to be important in deciding whether the
`
`claims are patentable . .
`
`Inasmuch as the reference combination, Bonito and Matsuzaki. was not of record in the
`
`prosecution of the application for the Wilens patent, the substantial question of patentability
`
`raised by the combination is new.
`
`It is also agreed that the consideration of the Scoremaster Reference in view of the Sharp
`
`Reference, raises a substantial new question of patentability as to claim 9 of Wilens for the
`
`reasons set forth on pages 20-25 and in the Claim Chart 4 of the Request. More specifically, the
`
`Scoremaster Reference records golf information, such as scores, puts and points, with respect to
`
`accuracy-related golf games and with respect to the respective holes of play, thereby providing a
`
`means for increasing a player's ability with respect to playing golf (see pages 2, 19, 21, 30 and
`
`31). The Scoremaster golf computer includes means for recording and for comp~ting scores,
`
`presses and course information for a multitude of golf situations (see page 2).
`
`The computer of the Scoremaster includes a display and entry keys and includes a
`
`memory for holding information, such as regarding stroke-hole information for each hole or
`
`regarding the number points awarded each player for each hole (in special golf games). For
`
`example, the number of points re~ated to each golfer may be entered into the computer by
`
`pressing PTSIPUT after choosing the hole and the player. Stroke-hole information may be
`
`entered, for example, by pressing HOLE plus #1 for beginning er;ltry of the information. This
`
`may be followed by pressing STK HL plus the hole number for hole # I. Pressing ENTER
`
`stores the information in the computer.
`
`,
`Further, regarding the display. the computer stores mUltiple information screens,
`
`including for Stroke-hole data (pre-game data) and for each player's handicap (pre-game data for
`
`each player), and additionally for the gross score (game-interactive data for each player), etc.
`
`SKYHAWKE Ex. 1003, page 7
`
`

`

`Application/Control Number: 90/008,817
`Art Unit: 3993
`
`Page 8
`
`The user presses certain keys to access a particular infonnation screen. Additionally, regarding
`each information screen, the user will press a key to access a particular field and then will enter a
`
`value with regard to that field. For example, after pressing H9LE and the hole number to access
`
`the display screen information with respect to the gross score regarding a particular hole. the
`
`user will press the G# (e.g., "GIn, "02", etc.) for a particular player, thus addressing a particular
`
`display field, followed by the entering/selecting a particular golfer's score, which is a value.
`
`This will be repeated for each player's G# (see page 19).
`
`The screens of the Scoremaster computer include those for receiving pre-game
`
`infonnation, including the stroke-hole infonnation and handicap infonnation. and those for
`
`receiving game-interactive infonnation, including the gross score.
`
`The Scoremaster computer further pennits a user to select the data input field of a
`
`displayed information screen for viewing previously entered infonnation. For example. after
`
`selecting the screen regarding hole-score, the player may select the particular hole in order to
`
`view the individual score regarding that hole.
`
`Further, the Scoremaster computer will store the entered infonnation into memory for
`
`creating later a factuaVstatistical report. More specifically, the scores are kept on the
`
`Scoremaster computer for eventually displaying the cumulative gross score for all the holes of
`
`play, such as regarding 9 or 18 holes of golf.
`
`Additionally, the Sharp reference dis~loses a handheld computer having a display that
`
`includes a capacity fQr mUltiple rows ofinfonnation for each of the multiple screens which may
`
`be selectively provided to the display. The infonnation may be entered onto each screen in
`selected fields. More specifically, the calculator includes a date/time screen which has fields for
`,
`receiving date and time values, a monthly calendar screen which has fields for receiving day and
`
`month values, a.schedule/agenda screen which includes a field for receiving agenda items, and a
`
`telephone listing screen which has a field for receiving telephone numbers. See pages 29, 30, 37,
`
`38 and 75. Thus,'with the newer technology of the Sharp reference, mUltiple infonnation screens
`
`may each include multiple fields .
`
`A combinat~on the Scoremaster reference takt:n with the Sharp reference is relevant 10 the
`
`claimed subject matter of claim 9 since claim 9 calls for (among other things):
`
`SKYHAWKE Ex. 1003, page 8
`
`

`

`Application/Control Number: 90/008,817
`Art Unit: 3993
`
`Page 9
`
`providing a computer with a memory and data selection entry keys, storing
`plurality of information screens that include screen-dependent data input fields,
`selectively displaying information screens on the display in a logical
`sequence of pre-game and game-interactive screens so that data is prompted by
`the pre-game information screen for entry thereof regarding game-play
`parameters and data is recorded for the game on the game-interactive screen,
`selecting data input fields on an information screen, selecting golf
`information corresponding to a data input field,
`and storing golf information into the memory as reports for retrieval by the
`user after the game.
`Accordingly, there is a substantial likelihood that a reasonable examiner would consider
`
`the combination of teachings of the Scoremaster reference and the Sharp reference to be
`
`important in deciding whether the claim 9 is are patentable.
`
`Inasmuch as the reference combination of the Scoremaster reference and the Sharp
`
`reference was not of record in the prosecution of the application for the Wit.ens patent, the
`
`substantial question of patentability raised by the combination is new.
`
`It is also agreed that the consideration of the combination of the Scoremaster Reference and the
`
`Sharp reference raises a substantial new question of patentability as to claims 1-5 of Wi lens, in
`
`ad.dition to claim 9 (indicated abovel, for the reasons set forth on pages 26-30 and 32 of the
`
`Request, which are incorporated herein by reference. More specifically. as described in the
`
`Request and as pointed out above, the Scoremaster reference teaches a handheld, powered. golf
`computer, including 3: display, memory and a keyboard. Screens may be selected to be
`
`represented ~y the display, and for each screen a field may be selected for the input of a value.
`
`With the use of pre-game screens, values regarding the handicap of each player and the stroke(cid:173)
`
`rating of each hole may be recorded. With game-interactive screens, the gross score of each
`
`player and the number of puts for each hole may be recorded. Screens may be recalled and
`
`reviewed. Use of the computer is considered to have the potential to improve golf play.
`
`As pointed out in the Request, the Sharp Reference demonstrates advances in user
`
`interface technology for hand-held computers nine years after the Scoremaster Reference was
`
`.published. As pointed out above, the Sharp Reference teaches a multi-row display and a
`
`keyboard including multiple directional keys. The Sharp Reference also teaches navigating
`
`between multiple information screens. For example, the display may be used to alternatively
`
`SKYHAWKE Ex. 1003, page 9
`
`

`

`Application/Control Number: 90/008,817
`Art Unit: 3993
`
`Page 10
`
`view time and date data, day and month data, scheduling data and telephone listing data. The
`
`keyboard will be used to update the information of the screens by facilitating entry into certain
`
`fields of the respective screens (see page 29, 30, 37, 38, 75 and 186). The reference also teaches
`
`the use ofbi-directional keys for scrolling in opposite directions though predefined data that is
`
`associated with a screen-dependen~ data input field (see page 14).
`
`The reference combination is relevant to the claimed invention set forth in claim 9 for the
`reasons as indicated herein above, and as set forth in claim 1 as follows :
`
`a self-contained computer unit having a memory, a power source and a
`display for selectively displaying a plurality of infomiation screens and associated
`data stored in the memory, the information screens including screen·dependent
`data input fields for the associated data;
`key entry means for retrieving and selectively displaying the infonnation
`screens from the memory on the display, and for retrieving, selecting, and
`recording the associated data with each infonnation screen, wherein the key entry
`means includes first key means comprising one entry key for selectively
`displaying infonnation screens, second screen·dependent field select key means
`for selecting a particular· data input field of predefined data on a displayed screen,
`the second screen·dependent field select key means comprising two bi·directional
`tab keys for scrolling in opposite directions through the data input fields on a
`displayed information screen, and third screen·dependent value select key means
`for displaying and selectively recording or altering selected data in a selected data
`input field, the third screen·dependent value elect key means comprising two bi·
`directional scroll keys for scrolling in opposite directions through the predefined
`data associated with the data input field on the displayed information screen.
`
`Accordingly, there is a substantial likelihood that a reasonable examiner would consider a.
`
`combination of the teachings of the Scoremaster Reference and the Sharp reference to be
`
`important in deciding whether the claims are patentable. Further, inasmuch as this combination
`
`of references was not of record in the application for the Wilens patent, the substantial new
`
`question of patentability raised by the combination is new. ·
`
`It is additionally agreed that the consideration of the Scoremaster Reference, the Sharp reference
`
`and Matsuzaki raises a substantial new question of patentability as to claim 6 of Wi lens for the
`
`reasons set forth on pages 26, 27 and 31 of the Request, which are incorporated herein by
`
`reference. In addition to the teachings of the Scoremaster reference and the Sharp .reference,
`
`pointed out above; the Matsuzaki reference teaches providing a multi· function electronic golf
`
`SKYHAWKE Ex. 1003, page 10
`
`

`

`Application/Control Number: 901008,817
`Art Unit: 3993
`
`Page II
`
`scorer that also has multiple. alternative game-interactive screens. These screens include a first
`
`screen having a picture of the current hole and having the recor~ed scoring data. By contrast, the
`other screen has an advice picture accompanied by an advice message (see Abstract). Additional
`
`to the scoring information, the device records players' names and records the date, time and
`
`duration of game play throughout the game (see Figures 3 and 6).
`
`This teaching is relevant to the claimed limitations calling for the entry of information
`
`and calling for (pertinent to claim 6) one or more game-interactive screens. Accordingly. there is
`
`a suhstantiallikelihood that a reasonable examiner would consider the teachings of the
`
`Scoremaster Reference, the Sharp reference and Matsuzaki to be important in deciding whether
`
`the claims are patentable.
`
`Further, inasmuch as this combination of references was not of record in the application
`
`for the Wilens patent, the substantial new question of patentability raised by the combination is
`
`new.
`
`It is additionally agreed that the consideration of Son ito raises a substantial new question of
`
`patentability to claims 7, 9,10, II, 14 and 18 of Wi I ens (claims 9 and 14 have been discussed
`
`above) for the reasons set forth on pages 26, 27, 31 , 33, 35 and 39 of the Request, which are
`
`incorporated herein by reference, and as already indicated. More specifically, Bonito teaches
`
`providing a computer for assisting golfers, wherein the computer includes, pre-game information
`
`screens, game-interactive screens, and post-game reporting screens. The screens include screen(cid:173)
`
`dependent input fields for entering information upon being prompted by the display. The
`
`information includes pre-game information, regarding handicap and side bets, and the
`
`information includes game-interactive information regarding score,location, and the distance to
`
`golf course land features, such as sand traps and particular golf hole. The computer used includes
`
`a display, memory, a keyboard, and a light pen. Game-interactive screen types may be selected,
`
`including text-only screens and text-with-display screens. The reference teaches a logical
`
`sequence for sel~ctively displaying the various screens. Data entered into the computer may be
`
`later retrieved for producing factual reports of game play, such as the cumulative scores.
`
`The Bonitio reference is relevant to the claim limitations of Wi lens, including limitations
`
`that (1) call for the storing of a plurality of pre-game and game-interactive screens, (2) call for
`
`SKYHAWKE Ex. 1003, page 11
`
`

`

`Application/Control Number: 90/008,817
`Art Unit: 3993
`
`Page 12
`
`entering into pre-game mode and entering information regarding parameters of an upcoming
`
`game, (3) call for entering into game-interactive mode and entering information into a game(cid:173)
`
`interactive screen, and (4) call for providing post-game reports. Banilio is also relevant to a step
`
`of selecting data fields for entering values.
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`Accordingly. there is a substantial likelihood that a reasonable examiner would consider
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`the teachings of Bonito alone to be important in deciding whether the claims are patentable.
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`Further, inasmuch as Bonito was not of record in the application for the Wilens patent, the
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`substantial new question of patentability raised by the reference is new.
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`It is also agreed that the consideration of Bonito, the Scoremaster reference and the Sharp
`references raises a substantial new question of patentability to claims 13, 15 and 17 of Wi lens for
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`the reasons set forth on pages 26-28 and 34-38 of the Request, which are incorporated herein by
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`reference. Additionally, ,Bonito. the Scoremaster reference and the Sharp reference are explained
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`above.
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`This reference combination is relevant to limitations of the claims of Wi lens concerning a
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`computer, including memory. a power source, display and entry key means; concerning pre(cid:173)
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`game and game-interactive screens having screen-dependent data input fields, a post-game
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`information screen providing post game reports; concerning the prompting of pre-game
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`infonnation; and concer:ning means and steps for selecting screens, fields, and values.
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`Accordingly, there is a substantial likelihood that a reasonable examiner would consider such
`
`teachings of the combination to be important in deciding whether the claims are patentable.
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`Further, inasmuch as this combination of references was not of record in the application
`
`for the Wilens patent, the substantial new question of patentability raised by the combination is
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`new.
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`It is also agreed that the consideration of Bonito in view ofMatsuzaki raises a substantial new
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`question of patentability to claim 8 of Wilens for the reasons set forth on pages 25-27 and 32 of
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`the Request, which are incorporated herein by reference, and for the reasons indicated above
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`regarding·claim 8.
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`SKYHAWKE Ex. 1003, page 12
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`

`

`Application/Control Number: 90/008,817 .
`Art Unit: 3993
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`Page 13
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`Accordingly, there is. a substantial likelihood that a reasonable examiner would consider
`
`the teachings of Bonito in view of Matsuzaki to be important in deciding whether the claims are
`
`patentable. Further; inasmuch as this combination of references was not of record in the
`
`application for the Wi lens patent, the substantial new question of patentability raised by the
`
`combination is new.
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`It is also agreed that the consideration afBenite and the Sharp reference raises a substantial new
`question of patentability as to claim 16 of Wi lens for the reasons set forth on pages 25-27, 36 and
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`37 of the Request, which are incorporated herein by reference, and as indicated above. In
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`addition to the subject matter taught by Bonito, indicated above, and especially including
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`multiple (text-only and text-with-graphic) game.-interactive screens, the Sharp reference teaches
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`providing means, in the form of keys, for the purpose of non-sequentially selecting screens (see
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`page 14). This is relevant to the limitation of claim 16 which calls for the game-interactive
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`screens to include means for selecting of non-sequential option screens.
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`Accordingly, there is a substantial likelihood that a reasonable examiner would con.sider
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`the teachings of Bonito. and the Sharp reference to be important in deciding whether the claims
`
`are patentable. Further, inasmuch as this combination of references was not of record in the
`
`application for the Wi lens patent, the substantial new question of patentability raised by the
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`combination is new.
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`It is also agreed that the consideration of Bonito. and the PGA reference raises a substantial new
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`question of patentability as to claims 12, 19-21 , 24, 25, and 30-37 of Wi lens for the reasons set
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`forth on pages 25-27, 33, 34 and 40-47 of the Request, which are incorporated herein by
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`reference. In addition to the teachings of Bonito, already pointed out above, Bonito discloses
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`providing a special information memory 46, which may be optionally provided to report on the
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`conditions of the golf course (see page 8, lines 16-20). The PGA reference sugges!s aspects that
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`may affect a golf game, which in addition to including a disc