The Nielsen Company (US), LLCDownload PDFPatent Trials and Appeals BoardDec 13, 20212021002602 (P.T.A.B. Dec. 13, 2021) Copy Citation 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). Appeal 2021-002602 Application 14/961,855 2 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. Appeal 2021-002602 Application 14/961,855 3 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 Appeal 2021-002602 Application 14/961,855 4 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.). Appeal 2021-002602 Application 14/961,855 5 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). Appeal 2021-002602 Application 14/961,855 6 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 Appeal 2021-002602 Application 14/961,855 7 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 Copy with citationCopy as parenthetical citation