The Nielsen Company (US), LLC

Patent Trials and Appeals Board

Dec 13, 2021

2021002602 (P.T.A.B. Dec. 13, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/961,855 12/07/2015 Martin Quinn 20004/87351US02 4337
81905 7590 12/13/2021
Hanley, Flight & Zimmerman, LLC (Nielsen)
150 S. Wacker Dr. Suite 2200
Chicago, IL 60606
EXAMINER
RINES, ROBERT D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
12/13/2021 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):
docketing@hfzlaw.com
jflight@hfzlaw.com
mhanley@hfzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARTIN QUINN, MARK HOGAN, and RICK FITZGIBBON
____________

Appeal 2021-002602
Application 14/961,855
Technology Center 3600
____________

Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and
TARA L. HUTCHINGS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed September 11, 2020) and Reply Brief (“Reply Br.,” filed March 3,
2021), and the Examiner’s Answer (“Ans.,” mailed January 6, 2021) and
Final Office Action (“Final Act.,” mailed April 16, 2020). Appellant
identifies The Nielsen Company (US), LLC as the real party in interest
(Appeal Br. 2).
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CLAIMED INVENTION
The Specification states, “[t]his disclosure relates generally to market
research, and, more particularly, to methods and apparatus to manage
marketing forecasting activity” (Spec. ¶ 2).
Claims 1, 10, and 17 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method to adjust displayed alerts in a vetted sales
forecast to prevent erroneous adjustments to a set of drivers
corresponding to the vetted sales forecast, the method
comprising:
[(A)] retrieving, by executing an instruction with a
processor, the vetted sales forecast of a marketing objective, the
set of drivers, and historical control data of the set of drivers;
[(B)] calculating, by executing an instruction with the
processor, (a) a first probability of not adjusting the set of drivers
when the historical control data and actual market performance
data are indicative that adjustment was necessary to meet the
marketing objective and (b) a second probability of adjusting the
set of drivers when the historical control data and the actual
market performance data are indicative that adjustment was
unnecessary to meet the marketing objective;
[(C)] overlaying, by executing an instruction with the
processor, default confidence limits associated with the vetted
sales forecast on a graphical display; and
[(D)] in response to an adjustment via a graphical user
interface to at least one of the default confidence limits,
adjusting, by executing an instruction with the processor, a
frequency of the displayed alerts of the vetted sales forecast to
prevent at least one of erroneous overestimation or
underestimation of adjustment of the set of drivers based on (a)
the first probability, (b) the second probability and (c) a cost of
adjusting the set of drivers.
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REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement.
ANALYSIS
Section 112(a) of the patent statute reads, in part,
[t]he specification shall contain a written description of the
invention, and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same.
35 U.S.C. § 112(a). Section 112(a), thus, imposes an “enablement”
requirement that “the specification teach those in the art to make and use the
invention without undue experimentation.” Bayer Healthcare LLC v.
Baxalta Inc., 989 F.3d 964, 981 (Fed. Cir. 2021) (quoting In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988). Some experimentation, even a
considerable amount, is not “undue” if, e.g., it is merely routine, or if the
specification provides a reasonable amount of guidance as to “the direction
in which the experimentation should proceed.” In re Wands, 858 F.2d
at 737.
To determine whether the disclosure would require undue
experimentation, we consider the following factors: (1) the quantity of
experimentation necessary; (2) the amount of direction or guidance
presented; (3) the presence or absence of working examples; (4) the nature
of the invention; (5) the state of the prior art; (6) the relative skill of those in
the art; (7) the predictability or unpredictability of the art; and (8) the
breadth of the claims. In re Wands, 858 F.2d at 737. These so-called
“Wands factors” are illustrative, rather than mandatory; therefore, not “all of
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the factors need . . . be reviewed when determining whether a disclosure is
enabling.” Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed.
Cir. 1999). What matters for the purpose of the enablement inquiry is the
particular facts being considered. Amgen, Inc. v. Chugai Pharm. Co.,
927 F.2d 1200, 1213 (Fed. Cir. 1991) (“[I]t is not necessary that a court
review all the Wands factors to find a disclosure enabling. They are
illustrative, not mandatory. What is relevant depends on the facts, and the
facts here are that Amgen has not enabled preparation of DNA sequences
sufficient to support its all-encompassing claims.”).
Independent Claim 1 and Dependent Claims 2–9
Applying these legal principles to the present case, we agree with the
Examiner that claim 1 includes subject matter that is not described in the
Specification in such a way as to enable a person of skill in the art to make
and use the claimed invention (Final Act. 8–10; see also Ans. 5–16). More
particularly, we agree with the Examiner that the Specification fails to
describe calculating a probability of taking action or not taking action, i.e.,
calculating, by executing an instruction with the processor,
(a) a first probability of not adjusting the set of drivers when the
historical control data and actual market performance data are
indicative that adjustment was necessary to meet the marketing
objective and (b) a second probability of adjusting the set of
drivers when the historical control data and the actual market
performance data are indicative that adjustment was unnecessary
to meet the marketing objective[,]
as recited in independent claim 1, in such a way as to enable one of ordinary
skill in the art to make and use the claimed invention without undue
experimentation (id.).
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Appellant asserts that “[c]oncepts related to calculating a probability
are well within the comprehension of persons having ordinary skill in the
art” (Appeal Br. 10), and points to Figures 7, 9A, and 9B as providing an
enabling disclosure (id. at 10–11). We, however, agree with the Examiner
that although the Specification describes in paragraph 53, with reference to
Figure 8, that an example action probability engine calculates a probability
of not taking action when action was actually needed and a probability of
taking action when action was not needed, and further describes in
paragraphs 54 and 55, with reference to Figures 9A and 9B, forecast plots
including alerting levels “that may be set in a manner that determines a
probability of not taking action when it should not have been taken” and “set
in a manner that determines a probability of taking an action when it was not
necessary to do so,” none of these paragraphs describes how a probability of
taking action or not taking action is calculated or provides examples of
calculating such probabilities (Final Act. 6–7; see also Ans. 5–9, 12).
Instead, the Specification merely describes that the probabilities are
calculated “based on the client profile” (Spec. ¶ 63), and that, once obtained,
the probabilities may be used to calculate a net expected loss and to set an
alerting level (see, e.g., id. ¶¶ 53–57).
Referencing paragraph 47 and Figure 7 of the Specification, Appellant
notes that the Specification describes that example distributions for a
plan 714 and a vetted sales forecast 716 have a bell curve shape (Appeal
Br. 10–11). And Appellant asserts that because “it is well known that the
highest point on a bell curve represents the most probable event in a series of
data,” “at least one well known probability determination is set forth by the
instant Specification” (id.; see also Reply Br. 2–5).
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There is no dispute; the Examiner, in fact, acknowledges that
“calculated outputs from a probability equation, when represented in a
graph[,] can provide a bell curve probability distribution. However, the
curve, when representative of a distribution, is derived from an equation
and/or calculated probabilities” (Ans. 11). Here, although “the figures may
depict a curve and possibilities of market performance, how these
possibilities have been calculated is absent from the supportive disclosure”
(id.).
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 112(a). Therefore, we sustain the
Examiner’s rejection of claim 1. We also sustain the Examiner’s rejection of
dependent claims 2–9, which are not argued separately.
Independent Claims 10 and 17 and Dependent Claims 11–16 and 18–20
Appellant argues that independent claims 10 and 17 are allowable for
at least the same reasons set forth with respect to independent claim 1
(Appeal Br. 12). We are not persuaded, for the reasons set forth above, that
the Examiner erred in rejecting claim 1 under 35 U.S.C. § 112(a).
Therefore, we sustain the Examiner’s rejection of independent claims 10 and
17, and claims 11–16 and 18–20, which depend therefrom and are not
argued separately, for the same reasons.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 112(a) Enablement 1–20
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED