Ex Parte Martin

Board of Patent Appeals and Interferences

Sep 20, 2010

11598277 (B.P.A.I. Sep. 20, 2010)

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.
11/598,277 11/13/2006 David Martin 03445-P0002B 8020
24126 7590 09/20/2010
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
LE, KHANH H
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
09/20/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID MARTIN
____________

Appeal 2009-010051
Application 11/598,277
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-010051
Application 11/598,277

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
Examiner’s final decision rejecting claims 1 to 23. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b) (2002).
We AFFIRM.
BACKGROUND
Appellant’s invention is directed to method of measuring the
promotional impact of sales promotion efforts (Spec., para. [0049]).
Claim 1 is illustrative:
1. A method of testing effectiveness of
direct personal promotion efforts in a sales or
marketing environment in which sales
representatives make contact with a customer in
accordance with a prioritized suggested list,
comprising the steps of:
using an existing customer contact
prioritization system which provides a prioritized
suggested list of customers to sales representatives
to create on a computer an electronic prioritized
suggested list of customers for sales
representatives of an organization to use in
contacting customers, said sales representative
having the ability to alter the specified contact
frequency, said electronic prioritized suggested list
including an identification of a customer identity
and a specified contact frequency for each such
customer to be executed by said sales
representatives;
conducting an experiment through use of the
existing customer contact prioritization system by
incrementally adjusting the specified contact
frequency for a selected subset of customers to
Appeal 2009-010051
Application 11/598,277

3
create an electronic experimentally incrementally
adjusted prioritized suggested list with an
incrementally adjusted specified contact
frequency;
communicating said electronic
incrementally adjusted prioritized suggested list to
said sales representatives;
measuring changes in a sales or other
promotional response among said selected subset
of customers relative to an unadjusted subset of
customers on said prioritized suggested list whose
specified contact frequency was not incrementally
adjusted, and recording data relating to said
changes in an electronic data storage system.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Ed Roseman, How to establish quality control of the sales force, 27
Med. Mkt. & Media, 44 (Oct. 1992).
Anonymous, Mkt. Telemkt. Awards 1997 Sup., 18-19 (Jun. 19, 1997)
(hereinafter “Anonymous”).

Gordon H. Bell, I want my MTV, 6 Direct Mkt., 34-35 (Dec. 1997)
(hereinafter “Bell”).

Appellant appeals the following rejections:
Claims 1, 5 to 9, 13 to 15, 19, and 23 under 35 U.S.C. § 103(a) as
being unpatentable over Roseman in view of Anonymous.
Claims 2 to 4, 10 to 12, 16 to 18, and 20 to 22 under 35 U.S.C. §
103(a) as unpatentable over Roseman in view of Anonymous and Bell.

ISSUE
Appeal 2009-010051
Application 11/598,277

4
Did the Examiner err in rejecting claims 1, 5 to 9, 13 to 15, 19, and 23
because the prior does not disclose a method in which an experiment is
Appeal 2009-010051
Application 11/598,277

5
conducted in which the contact frequency is incrementally adjusted and in
which the sales representatives have the ability to alter the contact
frequency?

FACTUAL FINDINGS
We adopt all of the Examiner’s findings as our own. (Ans. 4 to 7).

ANALYSIS
The Appellant’s argument that Roseman does not disclose conducting
an experiment through use of the customer contact prioritization system as
claimed is unconvincing. We agree with the Examiner that as Roseman
discloses that research was conducted to determine that the sales response
curve tends to peak at about six calls, Roseman does indeed disclose
conducting an experiment. Clearly, an experiment was conducted to arrive
at the optimum call frequency. In addition, the Roseman discloses that the
calls are made on target physicians which form, as found by the Examiner,
an existing customer contact prioritization system. In our view, the targeted
physician list disclosed in Roseman is an “existing customer contact
prioritization system” as broadly recited. We note that the Appellant has not
directed our attention to a specific definition for this phrase in the
Specification.
We are also unconvinced of error by the Examiner by Appellant’s
argument that the prior art does not disclose incrementally adjusting the
contact frequency. As Roseman discloses that research was done to
determine the optimum call frequency, such optimum call frequency must
have been arrived at by changing the call frequency during the research.
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Application 11/598,277

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This change in call frequency which occasions the research disclosed in
Roseman is an incremental change in the call frequency as broadly claimed.
In addition, Anonymous discloses changing contact frequency from none to
some which is an incremental change as broadly claimed.
Appellant has not convinced us of error on the part of the Examiner
by his argument that the prior art does not disclose “sales representatives
having the ability to alter the specified contact frequency.” We note that the
claim does not recite that the sales representatives alter the contact frequency
but rather that the sales representatives have the ability to change the contact
frequency. This ability to change the frequency is inherent in the Roseman
method as a sales representative can always make more or fewer calls than
directed.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that there is no suggestion to combine the references.
To the extent Appellant is looking for an explicit motivation, suggestion, or
teaching in the art, this rigid test has been foreclosed by the Supreme Court's
recent holding in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). In
KSR, the Court characterized the teaching, suggestion, motivation test as a
“helpful insight” but found that when it is rigidly applied, it is incompatible
with the Court's precedents. KSR, 550 U.S. at 418-19. The holding in KSR
makes clear that it is no longer absolutely necessary to find motivation in the
references themselves. See KSR, 550 U.S. at 418-19. In our view to
combine the Roseman method of testing effectiveness of direct personal
promotion with the known method of targeting a selected subset of
customers yields no more than predictable results and thus would have been
obvious to an ordinary artisan at the time of the invention. See KSR at 416.
Appeal 2009-010051
Application 11/598,277

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In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain the rejection as it is directed to claims 5 to 9,
13 to 15, 19, and 23 because the Appellant has not argued the separate
patentability of these claims.
We will sustain the Examiner’s rejection of claim 2 under 35 U.S.C. §
103(a) as being unpatentable over Roseman in view of Anonymous and Bell.
In response to this rejection, the Appellant repeats the arguments made for
the first rejection. We will sustain this rejection for the same reasons as
explained above when discussing the preceding rejection. We will also
sustain the rejection as it is directed to claims 10, 16, and 20 because the
Appellant has not argued the separate patentability of these claims.
We are not persuaded of error on the part of the Examiner by the
Appellant’s statements in the Brief in regard to claims 3, 4, 11, 12, 17, 18,
21 and 22. The statements restate the recitations in the claims and as such
are not considered arguments regarding separate patentability. See 37
C.F.R. 41.37(c)(1)(vii) (2010). These statements do not address the specific
findings and reasoning of the Examiner in regard to these claims found on
pages 10 to 11 of the Answer.

Appeal 2009-010051
Application 11/598,277

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DECISION
We AFFIRM the decision of the Examiner.

TIME PERIOD
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) (2007).
AFFIRMED

hh

ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619