Ex Parte Rojas et alDownload PDFPatent Trial and Appeal BoardMar 11, 201611450533 (P.T.A.B. Mar. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111450,533 0610912006 John W. Rojas 919 7590 03/15/2016 PITNEY BOWES INC. INTELLECTUAL PROPERTY & PROCUREMENT LAW DEPT. 37 EXECUTIVE DRIVE MSC 01-152 DANBURY, CT 06810 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. G-124-01 9716 EXAMINER GARTLAND, SCOTT D ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 03/15/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): iptl@pb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN W. ROJAS, KENNETH G. MILLER, JOHN H. WINKELMAN, CARLOS REYES, and JAMES R. NORRIS, JR. Appeal2013-008888 1 Application 11/450,5332 Technology Center 3600 Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and MATTHEWS. MEYERS, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 29--32. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Our decision references Appellants' Appeal Brief ("Appeal Br.," filed March 4, 2013) and Reply Brief ("Reply Br.," filed July 1, 2013), the Examiner's Answer ("Ans.," mailed May 1, 2013), and Final Office Action ("Final Act.," mailed October 4, 2012). 2 Appellants identify Pitney Bowes Inc., as the real party in interest (Appeal Br. 2). Appeal2013-008888 Application 11/450,533 CLAIMED fNVENTION Appellants' claimed invention relates generally to "creating a coordinated direct marketing contact strategy between" a direct mailing and other marketing channels (Spec. i-f 9). Claim 29, reproduced below with added bracketed notations, is illustrative of the subject matter on appeal: 29. A method for optimizing the response to a marketing campaign for a product offering, comprising the steps of: [a] determining an optimal contact date for delivery of the mail piece to a mail recipient, which optimal contact date is anticipated to result in a favorable response by the mail recipient[,] the optimal contact date being developed by processing historical data of a similar product offering which includes the steps of dynamically determining a date in the future which most closely corresponds to a previous date resulting in a favorable response in connection with the similar product offering; [b] calculating, by a computer, a predicted arrival date for delivery of the mail pieces of the marketing campaign to the direct mail recipients based upon an anticipated induction date, the predicted arrival date being developed by processing historical mailpiece delivery data which includes the steps of dynamically recording and storing the number of days required to deliver a mail piece from an induction to a delivery location; [ c] mailing the mail pieces of the marketing campaign on the induction date such that the mail piece arrives on or near the optimal contact date; and [ d] electronically contacting at least a portion of the mail piece recipients on or near the optimal contact date; [ e] wherein the step of electronically contacting the mail piece recipients is operative to reinforce the product offering and enhance the probability for the favorable response. 2 Appeal2013-008888 Application 11/450,533 REJECTION Claims 29--32 are rejected under 35 U.S.C. § 103(a) as unpatentable over Grossman (US 5,621,790, iss. Apr. 15, 1997), Mougey (US 2005/0256731 Al, pub. Nov. 17, 2005), and Ryan (US 2005/0065897 Al, pub. Mar. 24, 2005). ANALYSIS Independent claim 29 and dependent claims 30-32 We are not persuaded by Appellants' argument that the Examiner erred in rejecting independent claim 29 under 35 U.S.C. § 103(a) because the combination of Grossman, Mougey, and Ryan fails to disclose or suggest limitations [a], [b], and [d], as recited by independent claim 29 (see Appeal Br. 3-7; see also Reply Br. 1-2). Instead, we agree with the Examiner that the combination of Grossman, Mougey, and Ryan discloses the argued limitations (see Final Act 3-6; see also Ans. 3-9). Grossman is directed to "a system for the optimization of telephone contact campaigns by increasing the probability that an attempt to contact a party will be successful" (Grossman, col. 1, 11. 15-17). More particularly, Grossman discloses that "[ o ]ptimized campaigns reduce the number of wrong party contacts and achieve heightened levels of productivity by predicting when telephone contact attempts are most likely to be successful and/or which telephone contact attempts will result in maximum operator productivity" (id. at col. 2, 1. 63 - col. 3, 1. 1). Although Grossman's disclosure is related primarily to telephone campaigns, Grossman discloses "[b ]y refocusing the optimal contact analysis on days rather than hours and appropriately varying the definition of a successful or right party contact, the 3 Appeal2013-008888 Application 11/450,533 campaign optimizer could also be used to optimize a direct mail campaign" (id. at col. 5, 11. 3-7). In this regard, Grossman discloses "individual contact histories, in conjunction with behavior models, are used to generate telephone contact campaigns" (id. at col. 5, 11. 54--56) and its "predictive dialer system attempts to contact the targeted individuals associated with the selected account records at the times determined by campaign optimizer 20" (id. at col. 6, 11. 3-5). More particularly, Grossman discloses [ c ]hronological scheduling accounts for temporal variations in either the likelihood of contacting the targeted individual or operator productivity that are represented by call vectors 200. Call vectors 200 are constructed from individual contact histories 130, behavior models 160 at and, if desired, operator productivity data, at 180. Contact histories 130 reflect the outcome of previous attempts to contact a targeted individual that are maintained using predictive dialer 30 data uploaded into the campaign optimizer at 170 and new or changed information downloaded from host computer system 10 at 190. (Id. at col. 7, 11. 4--15). Grossman further discloses that [ c ]all vectors 200 may reflect either contact probability or maximum operator productivity. Call vectors 200 are produced by processing the individual contact histories 130 along with selected behavior models 160 that most closely correspond to the individual contact history. Call vectors 200 are normally produced or updated before the host-download preceding telephone contact campaigns. This is necessary to ensure that the required processing can be completed in a timely fashion so as to not delay commencement of a telephone contact campaign at the start of a workday. This is particularly important because of the high contact probabilities and operator productivity normally associated with early morning hours. (Id. at col. 7, 11. 33--42). 4 Appeal2013-008888 Application 11/450,533 Mougey is directed to a system for "calculating a delivery date using, for example, a postcode database" (Mougey i-f 2). Mougey discloses that its system determines a first estimated date and time that the item will be scanned at an outbound delivery office, and determines a second estimated date and time that the item will be scanned at an inbound delivery office. Thereafter, the delivery processor calculates the estimated delivery date based on the start date and time, the first estimated date and time, and the second estimated date and time, and provides the estimated delivery date to a source data processor. (Id. i-f 5; see also id. i-f 14). Ryan is directed to a system for processing refund requests in a postage system "wherein the delivery confirmation code is used as a unique identifier for refund tracking" (Ryan i-f 35). Ryan discloses that "data obtained by scanning PLANET codes on envelopes is used to monitor USPS delivery performance" and "mailers may use the information to plan mailing campaigns and to coordinate follow-up communications such as telephone calls" (id. at ,-r 96). We are not persuaded by Appellants' argument that Grossman has nothing to do with mail marketing campaigns and does not teach or suggest the claimed determination of the optimal contact date based on processing historical data associated with a similar product offering or calculating, based on historical data, an induction date for the mail piece to ensure delivery of the mail piece near the optimal contact date. (Appeal Br. 4; see also Reply Br. 1-2). Instead, we agree with the Examiner that Grossman's system for optimizing campaigns is indeed related to, and concerned with, mailing campaigns (see Ans. 2-3). In this regard, Grossman discloses that its 5 Appeal2013-008888 Application 11/450,533 "system for the optimization of telephone contact campaigns by increasing the probability that an attempt to contact a party will be successful" (Grossman, col. 1, 11. 15-17) is applicable to the "optimiz[ ation of] a direct mail campaign" "[b ]y refocusing the optimal contact analysis on days rather than hours and appropriately varying the definition of a successful or right party contact" (id. at col. 5, 11. 3-7). Moreover, Grossman discloses that its "[ c ]all vectors 200 may reflect either contact probability or maximum operator productivity. Call vectors 200 are produced by processing the individual contact histories 130 along with selected behavior models 160 that most closely correspond to the individual contact history" (id. at col. 7, 11. 33-37). Therefore, in the context of Grossman's disclosure that its "optimal contact analysis" which provides an optimal contact period that may provide a favorable response by the recipient, can be utilized "to optimize a direct mail campaign" (id. at col. 5, 11. 3-7), we agree with the Examiner that Grossman, in combination with Mougey and Ryan, discloses the argued limitations of independent claim 29. We note that Appellants do not present any persuasive argument or technical reasoning that the claimed features would not have been obvious over Grossman, in view ofMougey and Ryan, to a person of ordinary skill in the art using no more than the inferences and creative steps such a person would employ. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Appellants also argue that Grossman fails to disclose or suggest "electronically contacting at least a portion of the mail piece recipients on or near the optimal contact date," as recited by limitation [ d] of independent claim 29, because Grossman "discusses mail campaigns as alternatives to telephone campaigns and does not teach or suggest reinforcing a mail 6 Appeal2013-008888 Application 11/450,533 campaign with a follow up telephone call" (Appeal Br. 4--5; see also Reply Br. 1-2). However, Appellants' argument is not persuasive at least because independent claim 29 is rejected as unpatentable over the combination of Grossman, Mougey, and Ryan, and not over Grossman alone. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking the references individually where the rejection is based upon the teachings of a combination of references.") (citation omitted). Here, the Examiner relies on Grossman to the extent Grossman discloses "determining an optimal contact date for delivery of the mail piece to a mail recipient," as recited by limitation [a] (see Final Act. 3) and Grossman, in combination with Mougey, as disclosing "calculating, by a computer, a predicted arrival date for delivery of the mail pieces of the marketing campaign to the direct mail recipients," as recited by limitation [b] (see id. at 3--4), but relies on Ryan, in combination with Grossman and Mougey to address limitation [d] (see id. at 5). Thus, Appellants' argument is not persuasive. Appellants further argue that Ryan fails to disclose or suggest "electronically contacting at least a portion of the mail piece recipients on or near the optimal contact date," as recited by limitation [d]" because "[i]n Ryan, the follow up call is driven by live tracking" and "relying on tracking information to determine when to place a follow up phone call is not the same as determining when to make the follow up electronic communication based on an analytically determined optimal contact date" (Appeal Br. 6). However, Appellants' argument is not persuasive at least because claim 29 is rejected as unpatentable over the combination of Grossman, Mougey, and Ryan, and not over any of Grossman, Mougey, or Ryan alone. See In re 7 Appeal2013-008888 Application 11/450,533 Merck, 800 F.2d at 1097. Here, the Examiner does not rely on the "live tracking" utilized in Ryan; but instead, relies on Ryan only to the extent it discloses that "mailers may use the information to plan mailing campaigns and to coordinate follow-up communications such as telephone calls" (Final Act. 5 (citing Ryan i-f 96)). To address the "determined optimal contact date" called for by independent claim 29, the Examiner relies on the combination of Grossman and Mougey (see Final Act. 3-6). Thus, Appellants' argument is not persuasive. In view of the foregoing, we sustain the Examiner's rejection of independent claim 29 under 35 U.S.C. § 103(a). We also sustain the Examiner's rejection of claims 30-32, which depend from claim 1 and are not argued separately. DECISION The Examiner's rejection of claims 29-32 under 35 U.S.C. § 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation