Ex Parte DeCotiis et al

Patent Trial and Appeal Board

May 27, 2016

13010459 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/010,459 01/20/2011
24108 7590
CARL TON FIELDS, P.A.
Attn: IP Dept.
P.O. BOX 3239
TAMPA, FL 33601-3239
05/31/2016
FIRST NAMED INVENTOR
Allen R. DeCotiis
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.
44000/25315 2748
EXAMINER
MALHOTRA, SANJEEV
ART UNIT PAPER NUMBER
3667
MAILDATE DELIVERY MODE
05/31/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALLEN R. DECOTIIS and MARTHA M. REA
Appeal2013-008832
Application 13/010,459
Technology Center 3600
Before JILL D. HILL, RICHARD H. MARSCHALL and GEORGE R.
HOSKINS, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Allen R. DeCotiis et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner's final decision rejecting claims 1-13, 19 and 20. 1 We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Claims 14--18 have been canceled. Appeal Br. 25185887.133-134. Our
citations to the Appeal brief use the page numbering scheme used by
Appellant, which is not consecutive.
Appeal2013-008832
Application 13/010,459
CLAIMED SUBJECT MATTER
Independent claims 1 and 19 are pending. Independent claim 1,
reproduced below, illustrates the claimed subject matter with key limitations
italicized.
1. A computer system for enhancing a customer list
for a targeted marketing campaign, the computer system
compnsmg:
a data storage device comprising: a customer list
comprising customer information for a plurality of customers;
and a survey results database for storing the results of a survey
of each of the plurality of customers;
a multivariate statistical computer model which models a
relationship between the customer information and the results
of the survey; and
a scoring algorithm configured to generate a score for
each of the plurality of customers based on the predictive
computer model.
Appeal Br. 25185887.133.
REJECTIONS
I. Claims 1-13, 19 and 20 stand rejected under 35 U.S.C. § 102(e)
as being anticipated Choi (US 6,996,560 Bl, iss. Feb. 7, 2006). Final Act. 3.
II. Claims 1-13, 19 and 20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Choi and Schulze, Jr. (US 6,233,564 Bl, iss. May 15,
2001 ). Final Act. 6.
OPINION
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Application 13/010,459
Rejection I
Claims 1, 5, 6, and 9
Appellants argue claims 1, 5, 6, and 9 as a group. Appeal Br.
25185887.16-114. We select independent claim 1 as representative. See 37
C.F.R. § 41.37(c)(l)(iv) (2015). Claims 5, 6, and 9 stand or fall with claim
1.
Independent claim 1 recites "a data storage device comprising: a
customer list comprising customer information for a plurality of customers."
Appeal Br. 25185887.133, Claims App. The Examiner finds that Choi
discloses, inter alia, the recited data storage device comprising a customer
list including customer information for a plurality of customers. Final Act.
3. The Examiner particularly cites to Choi's Abstract; col. 11 :35-55; col.
14:53---67; col. 15; col. 16:1-24; col. 21:5-12 as evidence of these particular
structures. Final Act. 3.
Appellants argue that Choi does not disclose storage for a customer
list comprising customer information combined with survey results as
required. Appeal Br. 25185887 .17. Appellants contrast what is disclosed in
Choi by stating that the instant invention's customer list comprises customer
information not obtained as a part of the survey itself. Id. According to
Appellants, all information within the disclosure of Choi, including the
customer list, is obtained through the survey, such that Choi does not
disclose a modeled relationship between survey data and non-survey
customer information as required in claim 1. Id.
Though not specifically argued by Appellants, we first determine
whether Choi discloses a customer list comprising customer information.
The Examiner specifically cites to Choi's column 11, lines 35-55, which
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Application 13/010,459
details a solution to Choi's problem within the composition analysis portion
of their computer-assisted method for typing customers/prospects. This
section discloses segment members and how the method of Choi
distinguishes between highly scored segment members and lower scored
segment members in determining who should be targeted for marketing
purposes. Choi goes on to disclose applications of its method by stating:
[T]his invention provides a quantitative method for efficiently
evaluating the "quality" of each segment member as described above.
Direct applications of this invention include: Greater precision in
creating gains charts, which are used to define how deep on a target
list a direct mail campaign should be mailed.
Choi, col. 11:61---67.
The targets from Choi' s target lists are additionally defined by Choi as
"individual customers/prospects." Choi, col. 9:50-57. Therefore, Choi
indeed teaches a customer list comprising customer information, at least
through the target list of individual customers/prospects described above.
The Examiner responds to Appellants' argument regarding non-
survey information by stating that "Appellant[s] [have] not recited the
limitation 'non-survey information' in Claim 1." Ans. 12. We agree with
the Examiner. Claim 1 does not recite any limitations regarding where or
how the customer list originates, only that such information is available
within the computer system. Appellants' arguments are not based on
limitations that appear in the claim. See In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998) (The "name of the game is the claim" and unclaimed
features cannot impart patentability to claims). We conclude that the
Examiner's reliance on Choi for disclosing the customer list of claim 1 is
without error. We therefore sustain the rejection of claims 1, 5, 6, and 9 as
anticipated by Choi.
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Claim 2
Regarding dependent claim 2, Appellants further argue that Choi does
not disclose customer information that is a predictive variable. Appeal Br.
25185887.18.
The Examiner responds by pointing to support for findings regarding
the various disclosures in Choi of predictable purchases/sale behavior,
predicting political affiliation, predictive psychology questions, and
predictive sociology questions. Ans. 13-14 (citing Choi, col. 2:40-45, and
col. 31 ). Appellants do not refute these findings, and we are therefore not
persuaded of Examiner error.
Claim 3
Regarding dependent claim 3, Appellants further argue that Choi does
not disclose a multivariate statistical computer model that defines a
predictive equation which is processed by the scoring algorithm. Appeal Br.
25185887.19.
The Examiner finds such modeling in Choi' s disclosure of a unique
and distinctive set of business processes and econometric modeling
techniques, and detailed behavioral variables being combined using a
proprietary modeling technique. Ans. 14 (citing Choi, col. 2:20-30 and col.
16: 15-20). Appellants do not refute these findings, and we are therefore not
persuaded of Examiner error.
Claim 4
Regarding dependent claim 4, Appellants further argue that Choi does
not disclose the customer information comprising credit card use
information. Appeal Br. 25185887.19.
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The Examiner finds credit card information disclosed in Choi' s
disclosure of tracking customer-level credit card information. Ans. 14
(citing Choi, col. 16:20-25). Appellants do not refute these findings, and we
are therefore not persuaded of Examiner error.
Claim 7
Regarding dependent claim 7, Appellants further argue that Choi does
not disclose the customer list being received from the client via the
communications network. Appeal Br. 25185887 .110-111.
The Examiner finds that Choi discloses that "software tools such as
EDI, FTP, HTTP, HTML, XML, cXML, XSL, and WAP can be utilized for
communications between information devices," and the use of network-
centric software tools such as Java. Ans. 15 (quoting Choi, col. 29:28-33).
Appellants do not refute these findings, and we are therefore not
persuaded of Examiner error.
Claims 8, j 0, and j 3
Regarding dependent claim 8, Appellants further argue that Choi does
not disclose scores being provided to the client via the communications
network. Appeal Br. 25185887 .111.
Regarding dependent claim 10, Appellants further argue that Choi
does not disclose scores indicating the elements recited in claim 10. Appeal
Br. 25185887.112.
Regarding dependent claim 13, Appellants further argue that Choi
does not disclose providing scores in a sorted list. Appeal Br.
25185887.114.
The Examiner responds that some of Choi' s techniques utilize
scoring, such as fitness score calculation. Ans. 16 (citing Choi Fig. 10, cols.
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29 and 30; see also Choi, Fig. 2a, 2b, 2c ). Appellants do not refute these
findings, and we are therefore not persuaded of Examiner error.
Claim 11
Regarding dependent claim 11, Appellants further argue that Choi
does not disclose a model comprising plural consumer characteristics and a
corresponding weight for calculating the score. Appeal Br. 25185887 .113.
The Examiner finds such modeling in Choi' s disclosure of a unique
and distinctive set of business processes and econometric modeling
techniques, and detailed behavioral variables being combined using a
proprietary modeling technique. Ans. 17 (citing Choi, col. 2:20-30 and col.
16: 15-20). Appellants do not refute these findings, and we are therefore not
persuaded of Examiner error.
Claim 12
Regarding dependent claim 12, Appellants further argue that Choi
does not disclose a customer list that is modified to reflect the scores.
Appeal Br. 25185887.113-114.
The Examiner responds that Choi "at least teaches about 'customer
list/s' per citations used in Claim 7 as noted above," and "also teaches at
least about 'scoring' per citations used in Claims 8/10/13 as noted above."
Ans. 17. Appellants do not refute these findings, and we are therefore not
persuaded of Examiner error.
Claim 19
Independent claim 19 recites "the controller configured to: receive a
customer list from a client via the communications network, the customer
list comprising customer information for a plurality of customers." Appeal
Br. 25185887.135. The Examiner again relies on Choi to disclose the
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recited customer list. Final Act. 3. Appellants again argue that Choi fails to
disclose a system that has a customer list comprising non-survey customer
information. Appeal Br. 25185887.115-116. For the reasons set forth
above regarding claim 1, we are not persuaded that the Examiner's factual
findings are in error. We therefore sustain the rejection of claim 19 for the
reasons set forth regarding claim 1.
Claim 20
Appellants argue that Choi fails to disclose the score comprising a
probabilistic indicator of a consumer attribute, and the controller being
configured to provide the scores to the client. Appeal Br. 25185887 .117.
The Examiner responds by finding that Choi discloses "at least
teaches about 'scoring' per citations used in Claims 8/10/13 as noted above."
Ans. 19.
Lacking any explanation regarding why Choi' s fitness score does not
comprise a probabilistic indicator of a consumer attribute; and why Choi' s
controller 116 does not provide scores to the client, we are not persuaded by
Appellants' argument.
Rejection II
Claims 1, 5, 6, and 9
Appellants argue claims 1, 5, 6, and 9 as a group. Appeal Br.
25185887.118-127. We select independent claim 1 as representative. See
37 C.F.R. § 41.37(c)(l)(iv) (2015). Claims 5, 6, and 9 stand or fall with
claim 1.
Appellants again argue that Choi does not disclose modeling a
relationship between non-survey customer information and the results of a
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survey as required in claim 1 because Choi does not disclose non-survey
customer information. Appeal Br. 25185887 .118. For the reasons set forth
above regarding Rejection I, these arguments are not persuasive.
Appellants also argue that Schulze does not disclose a customer list
comprising customer information that is non-survey customer information.
Id. Because we agree with the Examiner that Choi discloses the claimed
customer list, and that the claim does not recite the customer list including
only "non-survey customer information," this argument is not persuasive.
Appellants next argue that Choi teaches away from the combination
proposed by Examiner, because Choi teaches that only solutions applying
microeconomics and psychological personality types can adequately predict
consumer behavior. Appeal Br. 25185 887 .119. According to Appellants,
because their invention does not require reference to psychological models
or personality types such as in Choi, then Choi teaches away from the
combination cited by Examiner. Id. Choi's assertion of superiority,
however, does not constitute a teaching away from the claimed invention,
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004). As explained above, Choi discloses the relatively broad limitations
of claim 1, in addition to teaching about the application of microeconomics
and psychological personality types for predicting consumer behavior.
Appellants further argue that the Examiner's suggested combination is
motivated by hindsight, because the Examiner's rationale "does not relate to
non-survey customer information." Appeal Br. 25185887.120. As noted
above, claim 1 does not recite non-survey customer information, and we
discern no reason why the Examiner's reasoning lacks a rational basis or is
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based on hindsight simply because the Examiner's rationale "does not relate
to non-survey customer information."
For the reasons stated above, we are not persuaded that the
Examiner's factual findings are in error, and we are not persuaded that the
Examiner's reasoning lacks a rational underpinning. We therefore sustain
the rejection of claims 1, 5, 6, and 9.
Claims 2--4, 7, 8, and 10--13
Regarding dependent claim 2, Appellants further argue that neither
Choi nor Schulze discloses customer information that is a predictive
variable. Appeal Br. 25185887.121.
Regarding dependent claim 3, Appellants further argue that neither
Choi nor Schulze discloses a multivariate statistical computer model that
defines a predictive equation which is processed by the scoring algorithm.
Appeal Br. 25185887.122.
Regarding dependent claim 4; Appellants further argue that neither
Choi nor Schulze discloses the customer information comprising credit card
use information. Appeal Br. 25185887.122-123.
Regarding dependent claim 7, Appellants further argue that neither
Choi nor Schulze discloses the customer list being received from the client
via the communications network. Appeal Br. 25185887.123-124.
Regarding dependent claim 8, Appellants further argue that neither
Choi nor Schulze discloses scores being provided to the client via the
communications network. Appeal Br. 25185887 .124.
Regarding dependent claim 10, Appellants further argue that neither
Choi nor Schulze discloses scores indicating the elements recited in claim
10. Appeal Br. 25185887.125.
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Regarding dependent claim 11, Appellants further argue that neither
Choi nor Schulze discloses a model comprising plural consumer
characteristics and a corresponding weight for calculating the score. Appeal
Br. 25185887.125-126.
Regarding dependent claim 12, Appellants further argue that neither
Choi nor Schulze discloses a customer list that is modified to reflect the
scores. Appeal Br. 25185887.126.
Regarding dependent claim 13, Appellants further argue that neither
Choi nor Schulze discloses providing scores in a sorted list. Appeal Br.
25185887.127.
The Examiner's response to each of these arguments, that Choi
discloses the claim recitations, is set forth in the above discussion of the
anticipation rejection. As above, lacking any explanation regarding why the
Examiner's explicit findings are in error, we are not persuaded of Examiner
error.
Claim 19
Appellants again argue that Choi and Schulze fail to disclose a system
that has a customer list comprising non-survey customer information.
Appeal Br. 25185887.127-128. For the reasons set forth above regarding
claim 1, we are not persuaded that the Examiner's factual findings are in
error. We therefore sustain the rejection of claim 19. At least Choi
discloses a customer list, and claim 19 does not recite that the list must be
limited to non-survey customer information.
Regarding Appellants' argument that Choi teaches away (Appeal Br.
25185887.128-129), as set forth above, Choi's assertion of superiority does
not constitute a teaching away from the claimed invention, because such
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disclosure does not criticize, discredit, or otherwise discourage the solution
claimed. See In re Fulton, 391 F.3d at 1201.
Regarding Appellants' hindsight argument (Appeal Br.
25185887.129-130), the fact that the cited motivation fails to relate to non-
survey information is not persuasive of error in the Examiner's conclusion of
obviousness, because the claims do not recite non-survey information.
Claim 20
Appellants argue that neither Choi nor Schulze discloses the score
comprising a probabilistic indicator of a consumer attribute, and the
controller being configured to provide the scores to the client. Appeal Br.
25185887.131.
As set forth above, the Examiner finds that Choi discloses these
limitations and, lacking any explanation regarding why Choi' s fitness score
does not comprise a probabilistic indicator of a consumer attribute, and why
its controller 116 does not provide scores to the client; we are not persuaded
by this argument.
DECISION
We AFFIRM the rejection of claims 1-13, 19 and 20 under 35 U.S.C.
§ 102( e) as being anticipated by Choi.
We AFFIRM the rejection of claims 1-13, 19 and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Choi and Schulze.
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)(l )(iv).
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AFFIRMED
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