Ex Parte Black et al

Patent Trial and Appeal Board

Jan 14, 2013

11491622 (P.T.A.B. Jan. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDRE B. BLACK, SUDHAKAR CHALIMADUGU, DAVID F.
CHEUNG, RUBY KENNEDY, YUCHUN LEE, and PATRICK MARTIN
___________

Appeal 2011-006361
Application 11/491,622
Technology Center 2100
____________

Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006361
Application 11/491,622

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STATEMENT OF THE CASE
Andre B. Black et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the non-final rejection of claims 1-34. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE. 1

THE INVENTION
This invention is “a computer implemented method for target group
management.” Spec. 1:12-13.
Claim 1, reproduced and marked up below, is illustrative of the
subject matter on appeal.
1. A computer implemented method for executing
marketing campaign software to manage a
target group of contacts, the method comprises:
[A] producing by a computer, a table, the
table including one or more contact group
entries corresponding to one or more defined
contact group entities with each of the entries
having a first set of group attributes;
[B] generating by the computer, a marketing
campaign from executing the marketing
campaign software;
[C] producing by the computer, a visual

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Nov. 30, 2010) and Reply Brief (“Reply Br.,” filed Feb. 23,
2011), and the Examiner’s Answer (“Ans.,” mailed Jan. 31, 2011).

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representation of the marketing campaign
resulting from execution of the market
campaign software, the representation including
one more instances of defined contact group
entities, with the one or more instances having
a second set of group attributes and with the
representation of the marketing campaign
linked to the table according to the second set
of group attributes; and
[D] generating a graphical user interface
with the graphical user interface when
displayed on a display device rendering the
visual representation of the marketing
campaign.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Herz
Lee
US 2001/0014868 A1
US 2003/0083924 A1
Aug. 16, 2001
May 1, 2003

The following rejections are before us for review:
1. Claims 14-26 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1-34 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Lee and Herz.

ISSUES
The issue is whether the Examiner’s combination of Lee and Herz
renders obvious producing a visual representation of the marketing
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campaign resulting from execution of the marketing campaign software,
where the representation includes one or more instances of defined contact
group entity.

FINDINGS OF FACT
We find that the findings of fact, which appear in the Analysis below,
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

ANALYSIS
The rejection of claims 14-26 under §101 as being directed to non-statutory
subject matter
On pages 2-3 of the Non-Final Rejection, mailed April 29, 2010, from
which this appeal is taken, the Examiner rejected claims 14-26 under 35
U.S.C. § 101 as being directed to non-statutory subject matter. However, on
page 3 of the Examiner’s Answer, the Examiner appears to now interpret
these claims to require statutory subject matter, but does not formally
withdraw the rejection. Therefore, the rejection of claims 14-26 under 35
U.S.C. § 101 is reversed.

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The rejection of claims 1-342 under §103(a) as being unpatentable over Lee
and Herz
At issue is the step of producing a visual representation having the
claimed requirements. The step is labeled C above. In the rejection, the
Examiner admits that Lee does not explicitly disclose the claimed visual
representation, and relies upon portions of Herz, to teach this step. Ans. 5-6
and 12-15. The relied upon portions of Herz describe identifying likely
shoppers and enticing them with “the most effective visual and textual
advertisements.” Herz Abstract, ll. 12-15 and para. [0005]. We are
persuaded by the Appellants’ argument on page 20 of the Appeal Brief (see
also Reply Br. 4-5) that modifying Lee to includes Herz’ advertisement
does not result in the claimed visual representation (i.e., the advertisement)
having the claimed requirements, including one or more instances of defined
contact group entities and the link. Accordingly, the rejection of claims 1,
14, and 27, and claims 2-13, 15-26, and 28-34, dependent thereon, under 35
U.S.C. § 103(a) as being unpatentable over Lee and Herz is reversed.

DECISION
The decision of the Examiner to reject claims 1-34 is reversed.

2 Upon any further prosecution, the Examiner may want to consider whether
all of the dependent claims have proper antecedent basis for their limitations.
For example, we note that claim 2 recites “the flowchart representing
promotions assigned to contact group entities in a marketing campaign”
(emphasis added) and that this limitation lacks proper antecedent basis. It is
not until claim 6 that the visual representations of claim 1 are required to be
flow charts.
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REVERSED

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