Ex Parte Balestrieri et al

Patent Trial and Appeal Board

Jul 15, 2016

13357850 (P.T.A.B. Jul. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/357,850 01125/2012 Filippo Balestrieri
56436 7590 07119/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82892257 6523
EXAMINER
ROTARU, OCTAVIAN
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
07/19/2016 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):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FILIPPO BALESTRIERI and JULIE WARD DREW
Appeal2014-004602 1
Application 13/357 ,8502
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-19. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Throughout this opinion, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed Oct. 9, 2013), Reply Brief ("Reply Br.," filed Feb. 24,
2014), and Specification ("Spec.," filed Jan. 25, 2012), and the Examiner's
Answer ("Ans.," mailed Dec. 24, 2013) and Final Office Action ("Final
Act.," mailed May 10, 2013).
2 According to the Appellants, the real party in interest is Hewlett-Packard
Development Company, LP. Appeal Br. 1.
Appeal2014-004602
Application 13/357,850
STATEMENT OF THE CASE
The Appellants' invention is related to "a survey-based analysis
system ... to make a determination of whether or not a new type of offering
... is to be launched by an enterprise." Spec. i-f 10.
Claims 1, 11, and 18 are the independent claims on appeal.
Independent claim 1 (Claims Appendix), reproduced below, is illustrative of
the subject matter on appeal (with bracketing added for reference):
1. A method, comprising:
[(a)] receiving survey responses regarding user
interest in offerings of plural different types based on
proposed incentives for the offerings of the plural different
types; and
[(b)] performing, by a computer, an analysis of the
survey responses, the analysis comprising:
[ ( c)] deriving measures based on the survey
responses regarding user interest in the offerings of
the plural different types, the derived measures
including a first measure based on a number of users
who expressed interest in purchasing a first of the
plural different types of offerings, and a second
measure based on a number of users who expressed
interest in purchasing a second of the plural
different types of offerings;
[ ( d)] computing, based at least on a
relationship between the first and second measures,
an indication of profitability regarding the second
type of offering; and
[ ( e)] outputting the indication of profitability
to allow for a determination of whether to launch
the second type of offering.
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Appeal2014-004602
Application 13/357,850
REJECTIONS
Claims 1-8, 11, 15, 16, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hartman et al., "Designing and Pricing
Menus of Extended Warranty Contracts," Wiley lnterScience, Feb. 2009
("Hartman") and Padmanabhan et al., "Warranty Policy and Extended
Service Contracts, Theory and the Application to Automobiles," Marketing
Science, vol. 2, no. 3, pp 230-247, 1993 ("Padmanabhan").
Claims 9, 10, and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hartman, Padmanabhan, and Stolze
(US 2012/0046975 Al, pub. Feb. 23, 2012).
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hartman, Padmanabhan, Stolze, and Bergh
(US 6,112,186, iss. Aug. 29, 2000).
Claims 17 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hartman, Padmanabhan, and Blischke WR, Product
Warranty Handbook, ISBN 0-8246-8955-5, (selection), 1996 ("Blischke").
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 3
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2014-004602
Application 13/357,850
ANALYSIS
Preliminary Matters
The Appellants contend the Examiner's objection to claim 11 is in
error. Appeal Br. 6-7. We note that review of objections must be requested
by petition to the Director. 37 C.F.R. §§ 1.113(a), 1.181. Accordingly, we
do not address the merits of the objection.
Obviousness
The Appellants contend, in relevant part, that the Examiner erred in
rejecting independent claims 1, 11, and 18 as unpatentable under 35 U.S.C.
§ 103(a) because Hartman and Padmanabhan do not disclose the subject
matter in the deriving clause, limitation ( c) above, of claim 1 and similarly
recited in claims 11 and 18. Appeal Br. 8, 12, 15.
Specifically, the Appellants argue that Hartman's "[s]olving [of] an
integer program based on assumed mixes of consumer types clearly
provides no teaching or hint of performing analysis of survey responses, as
recited in claim 1," because "the measures [of claims 1, 11, and 18] are
based on numbers of users who expressed interest in purchasing the first
and second types of offerings." Id. at 9. The Appellants further argue that
Padmanabhan's responses to questions "does not provide any teaching or
hint of deriving the first and second measures based on such survey
responses as recited in claim 1." Id. at 10.
The Appellants' arguments are persuasive. The Examiner does not
adequately show how the combination of Hartman and Padmanabhan
teaches the limitation of deriving measures based on survey responses and a
number of users who expressed interest. The Examiner finds that Hartman
teaches deriving measures based on a number of users who expressed
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Appeal2014-004602
Application 13/357,850
interest. See Final Act. 7, 8 (citing Hartman 210-211 ); see also Ans. 9-11.
The Examiner finds Padmanabhan teaches receiving survey responses, as
recited in limitation (a), and "performing an analysis of the survey
responses, the analysis comprising: [ ... ]." Ans. 12 (internal citation
omitted); see also Final Act. 10. However, we agree with the Appellants
that Hartman derives measures based on the assumed or expected interest of
users based on consumer risk type. See Appeal Br. 9; see also Hartman 210.
Padmanabhan discloses testing the validity of predictions about consumer
actions when presented with a menu of service contract by obtaining
information on the purchase (if any) of extended service contracts from
survey responses of new car buyers, obtaining a measure of risk preference
from responses to "lottery" questions, and using a binary logic model.
Padmanabhan 240-241. The Examiner does not explain how the measures
derived in Hartman based on expected interest are modified by
Padmanabhan's responses to survey or lottery questions regarding user
interest in offerings to meet the claims' requirement of deriving measures
based on expressed interest in types of offerings.
Thus, we are persuaded that the Examiner erred in the rejection of
independent claims 1, 11, and 18 under 35 U.S.C. § 103(a), and we do not
sustain the rejection. We therefore also do not sustain the rejections of
dependent claims 2-10, 11-17, and 19. Cf In re Fritch, 972 F.2d. 1260,
1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent
claims from which they depend are nonobvious").
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Appeal2014-004602
Application 13/357,850
DECISION
The Examiner's rejections of claim 1-19 under 35 U.S.C. § 103(a) are
REVERSED.
REVERSED
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