Ex Parte Linde et al

Board of Patent Appeals and Interferences

Feb 27, 2009

10006600 (B.P.A.I. Feb. 27, 2009)

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte VIVEKA LINDE and MATS LINDE
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Appeal 2008-4097
Application 10/006,600
Technology Center 3600
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Decided:1 February 27, 2009
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Before MURRIEL E. CRAWFORD, DAVID B. WALKER, and BIBHU R.
MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-4097
Application 10/006,600

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Appellants appeal under 35 U.S.C. § 134 (2002) from a non-final
rejection of claims 1 to 3. Claims 4 to 7 have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
Appellants invented a method of determining the post-launch
performance of a product on a market (Specification 1).
Claim 1 under appeal reads as follows:
1. A method for determining the post-launch performance
of a product on a market, comprising:
storing, in a database, collected first data related to at
least one key success factor associated with at least a market
performance which is related to said product;
storing, in a database, collected second data related to
unmet product needs on said market;
storing, in a database, collected third data related to a
propensity of a decision-maker to choose said product;
linking a computer to said databases; and
using a simulation model on said computer to calculate a
future market share of said product based on said collected first,
second, and third data, thereby determining said post-launch
performance on said market.

The Examiner rejected claims 1 to 3 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the Appellant regards
as the invention. The Examiner is of the opinion that the phrase “related to”
in lines 3, 5 and 7 of claim 1 is not clear.
The Examiner rejected claims 1 to 3 under 35 U.S.C. § 103(a) as
being unpatentable over Delurgio.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Delurgio et al. US 7,092,896 B2 Aug. 15, 2006
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Application 10/006,600

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ISSUES
Have the Appellants shown that the Examiner erred in holding that the
phrase “related to” in lines 3, 5 and 7 of claim 1 is unclear?
Have the Appellants shown that the Examiner erred in rejecting the
claims under 35 U.S.C. § 103(a) as being unpatentable over Delurgio,
because Delurgio does not disclose or suggest using a simulation model on a
computer to calculate future market share of a product and thereby
determine the post-launch performance on the market from data related to
one key success factor, unmet product needs on the market, and a propensity
of a decision maker to choose the product?

FINDINGS OF FACT
Delurgio discloses a promotion optimization method for a group of
products within a store or group of stores (col. 5, ll. 35 to 38). Delurgio
discloses that three main elements must be balanced in order to produce an
optimized plan (col. 5, ll. 53 to 55). The three elements are merchandising
events 101, supplier offers 102 and rules and objectives 103 (col. 5, ll. 55 to
57). Exemplary types of merchandising events 101 are featured displays,
advertising and variously types of temporary price reductions such as
coupons (col. 5, ll. 61 to 65). Rules and objectives include timing and
frequency of promotions, objectives of the promotion such as maximizing
volume, revenue and profit (col. 6, ll. 21 to 26). Delurgio includes an
optimization engine 234 connected to a results processor 233 which receives
data from a customer data base 238 (Figure 2). The customer data base 238
includes customer data sets 239 corresponding to a plurality of customers
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(col. 7, ll. 14 to 15). The customer data sets include point of sale data from
files on the customer computers 210 and supplier offers (col. 7, ll. 16 to 22).
Delurgio does not disclose storing data related to at least one key success
factor associated with at least a market performance related to a product.
Delurgio does not disclose storing data related to unmet product needs in the
market. Therefore, it follows that Delurgio does not disclose a simulation
model that calculates a future market share based on the one key success
factor, unmet product need and propensity of a decision maker to choose the
product.

PRINCIPLES OF LAW
Indefiniteness 12
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The second paragraph of 35 U.S.C. § 112 requires claims to set out
and circumscribe a particular area with a reasonable degree of precision and
particularity. In re Johnson, 558 F.2d 1008, 1015 (CCPA 1977). In making
this determination, the definiteness of the language employed in the claims
must be analyzed, not in a vacuum, but always in light of the teachings of
the prior art and of the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill in the pertinent art.
Id.
The Examiner's focus during examination of claims for compliance
with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is whether the claims meet the threshold
requirements of clarity and precision, not whether more suitable language or
modes of expression are available. Some latitude in the manner of
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expression and the aptness of terms is permitted even though the claim
language is not as precise as the examiner might desire. If the scope of the
invention sought to be patented cannot be determined from the language of
the claims with a reasonable degree of certainty, a rejection of the claims
under 35 U.S.C. § 112, second paragraph, is appropriate.
Furthermore, Appellants may use functional language, alternative
expressions, negative limitations, or any style of expression or format of
claim which makes clear the boundaries of the subject matter for which
protection is sought. As noted by the Court in In re Swinehart, 439 F.2d
2106 (CCPA 1971), a claim may not be rejected solely because of the type
of language used to define the subject matter for which patent protection is
sought.
Obviousness 13
An invention is not patentable under 35 U.S.C. § 103 if it is obvious.
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1745-46 (2007). The facts
underlying an obviousness inquiry include: Under § 103, the scope and
content of the prior art are to be determined; differences between the prior
art and the claims at issue are to be ascertained; and the level of ordinary
skill in the pertinent art resolved. Against this background the obviousness
or nonobviousness of the subject matter is determined. Such secondary
considerations as commercial success, long felt but unsolved needs, failure
of others, etc., might be utilized to give light to the circumstances
surrounding the origin of the subject matter sought to be patented. Graham
v. John Deere Co., 383 U.S. 1, 17-18 (1966).
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ANALYSIS
We will not sustain the Examiner’s rejection of claims 1 to 3 under 35
U.S.C. § 112, second paragraph. We agree with Appellants that the phrase
“related to” following the noun “data” is a descriptor of the type of data
claimed. Pages 7 and 9 of the Specification explains that information
regarding success factors, unmet product need and propensity of a decision
maker to choose the product is crucial for the determination of the future
sales of the product. As such, the phrase meets the threshold requirements
of 35 U.S.C. § 112, second paragraph for clarity and precision.
We will not sustain the Examiner’s rejection of claims 1 to 3 under 35
U.S.C. § 103(a) because the Examiner has not established that Delurgio
discloses or suggests the subject matter recited in claim 1 from which claims
2 and 3 depend. Specifically, Delurgio does not disclose the step of using a
simulation model to calculate future market share based on data related to a
key success factor and unmet product needs as is required by claim 1. While
Delurgio does disclose an optimization engine that utilizes data to predict
sales and market share, the Examiner has not directed our attention to any
disclosure or suggestion of the storage or analysis of success factors and
unmet product needs.

DECISION
The decision of the Examiner is reversed. 22
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REVERSED

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LV:

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