Ex Parte Self et al

Board of Patent Appeals and Interferences

Apr 29, 2010

10064959 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte CARL SELF, CYNTHIA TAAFFEE, GORDON LOUIS 8
HOPCIAN, JEFF IANNUZZI, JULIE TROSEN, and ROD WENDEL 9
____________________ 10
11
Appeal 2009-006697 12
Application 10/064,959 13
Technology Center 3600 14
____________________ 15
16
Decided: April 29, 2010 17
____________________ 18
19
20
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R. 21
MOHANTY, Administrative Patent Judges. 22
23
CRAWFORD, Administrative Patent Judge. 24
25
26
DECISION ON APPEAL27
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STATEMENT OF THE CASE 1
Appellants appeal under 35 U.S.C. § 134 (2002) from a Final 2
Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b) 3
(2002). 4
Appellants invented online systems and methods for facilitating 5
improvements in the consistency, deliverability, and/or measurability of 6
launch practices (Spec. [0002]). 7
Independent claim 1 under appeal reads as follows: 8
1. An online method for facilitating 9
improved consistency, deliverability and/or 10
measurability of a launch practice utilized in a 11
product development launch cycle across a first 12
launch program team during a first launch program 13
and a second launch program team during a second 14
launch program, the online method comprising: 15
determining a launch practice item based on 16
a set of key sources, wherein the launch practice 17
item is determined by a committee separate from 18
the first and second launch program teams; 19
transmitting the launch practice item to an at 20
least one member of the second launch program 21
team; and 22
the at least one member of the second launch 23
program team using the launch practice item to 24
improve consistency, deliverability and/or 25
measurability of the launch practice during the 26
second launch program. 27
28
The prior art relied upon by the Examiner in rejecting the claims on 29
appeal is: 30
Jordan Kogler US 2003/0040998 A1 Feb. 27, 2003 31
Linde US 2003/0105773 A1 Jun. 5, 2003 32
Bieda US 2003/0171897 A1 Sep. 11, 2003 33
34
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The Examiner rejected claims 1-10, 19, and 20 under 35 U.S.C. § 101 1
for failing to recite statutory subject matter; rejected claims 1-2 and 6-20 2
under 35 U.S.C. § 103(a) as being unpatentable over Linde in view of Bieda; 3
and rejected claims 3-5 under 35 U.S.C. § 103(a) as being unpatentable over 4
Linde in view of Bieda and Jordan Kogler. 5
We AFFIRM. 6
7
ISSUES 8
Did the Examiner err in asserting that claims 1-10, 19, and 20 do not 9
recite statutory subject matter under 35 U.S.C. § 101? 10
Did the Examiner err in rejecting claims 1-20 as being unpatentable 11
under 35 U.S.C. § 103(a) over various combinations of references including 12
Linde and Jordan Kogler, because Linde and Jordan Kogler are non-13
analogous art to the claimed invention? 14
Did the Examiner err asserting that a combination of Linde and Bieda 15
renders obvious the subject matter of independent claim 11? 16
Did the Examiner err asserting that a combination of Linde and Bieda 17
renders obvious “the launch practice item is selected from the group 18
consisting of launch elements, procedures, guidelines, standards, policies, 19
and work instructions,” as recited in dependent claims 12 and 16? 20
Did the Examiner err asserting that a combination of Linde and Bieda 21
renders obvious “the launch practice item is a procedure and a document 22
supporting the procedure includes measurables and deliverables,” as recited 23
in dependent claims 13 and 17? 24
Did the Examiner err asserting that a combination of Linde and Bieda 25
renders obvious “the launch practice item is a standard and a document 26
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supporting the standard includes information regarding how the launch 1
practice should be performed,” as recited in dependent claims 14 and 18? 2
3
FINDINGS OF FACT 4
Specification 5
Appellants invented online systems and methods for facilitating 6
improvements in the consistency, deliverability, and/or measurability of 7
launch practices ([0002]). 8
An object of the present invention is to provide a mechanism for 9
launch program members to make observations that are integrated into 10
existing launch practices if integration improves the consistency, 11
deliverability, and/or measurability of launch practices ([0007]). 12
Appellants’ invention is directed towards a quality management 13
system for use during a product development launch cycle (App. Br. 5-6, 16-14
18). 15
16
Linde 17
Linde discloses: 18
It is desirable for companies to monitor and process information as 19
regards the market situation for a particular product in a more effective 20
manner. In particular, there is a desire for obtaining information related to a 21
pre-launch strategy of a product, in terms of complete and correct pre-launch 22
decisions, in order to determine the post-launch performance of the product 23
on its relevant markets. In this manner, the post-launch performance and 24
consequently also the success of the product can be expected to be optimized 25
([0010]). 26
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When a company intends to launch a product, a number of decisions 1
have to be taken. The total number of possible decision combinations which 2
influence the post-launch success of the product can be substantial, which 3
means that it is difficult to take the correct decisions for a product launch. In 4
particular, there is difficulty in determining which combination of decisions 5
will render the highest number of patients for the product, i.e., the highest 6
impact on the relevant markets ([0011]). 7
Any form of business, in the form of a manufacturer, research center, 8
marketing agency, department store or similar enterprise, may use the 9
invention in a suitable manner in order to obtain information related to the 10
post-launch success of a particular product. In this manner, the invention 11
can be used in order to meet certain desired business objectives including 12
incremental sales and obtaining increased market shares for the product 13
([0027]). 14
For the purpose of understanding the present invention, a number of 15
key “‘success factors’” for obtaining improved market performance of a 16
product, such as a medical drug, will now be described. The invention relies 17
on the insight that such key success factors are crucial for the expected 18
future sales of the product in question, and also for the possibilities of 19
processing, presenting, and transmitting relevant information regarding the 20
market situation of a drug and for the quantification of the post-launch 21
performance ([0032]). 22
This set of information is normally provided by a service provider 23
such as a medical marketing company, and is supplied, in accordance with 24
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the invention, to a client which normally is in the form of a medical 1
company, a drug manufacturer, a research center, or a similar enterprise 2
([0033]). 3
It can be noted that the key success factors provide transparency of a 4
market for fast understanding, benchmarking, forecasting, and strategic 5
decision-making. By means of the key success factors, the structure, 6
dynamics, and trends on a particular market for a particular drug and/or 7
disease can be studied and analyzed. As will be described in greater detail 8
below, the result of such a process can then easily be stored for subsequent 9
transmission to a client ([0034]). 10
A quantification of the future, i.e., post-launch, performance on the 11
market of the drug can then be estimated based on three types of 12
information: i) market information including, for example, data about the 13
number of patients which enter the system per month and per physician, ii) 14
information related to the unmet needs on the market, quantified in terms of 15
the proportion of physicians for which such unmet needs are relevant, and 16
iii) information related to the propensity to prescribe a particular drug, 17
quantified in terms of the proportion of physicians who would prefer the 18
drug instead of competing drugs ([0076]-[0079]). 19
The calculation of the post-launch performance will now be described 20
with reference to Figure 6 ([0080]-[0081]). 21
A client may obtain the finished result, i.e., the information regarding 22
the marketing parameters described above, in various ways ([0085]). 23
The client can be a medicine manufacturer, a research center, or even 24
an advertising agency, who then may use the principles according to the 25
invention in order to gain access to valuable marketing information. In 26
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particular, the information which can be provided by means of the invention 1
can be used for benchmarking of various products, for example on different 2
markets or during specific time periods ([0087]). 3
4
Bieda 5
Bieda discloses that its present method and apparatus provides an 6
understanding of the total cost of quality as well as the quality cost 7
components. These costs as well as the stored lessons learned from each 8
complete product development are stored for future use. This simplifies 9
future product development programs by enabling quality issues to be 10
shifted to the design and process development stage rather than later in the 11
product prototype development or field use stages ([0025]). 12
13
Jordan Kogler 14
Jordan Kogler discloses: 15
A system and method of direct marketing of secondary products 16
through channels opened by the direct marketing of primary products, 17
thereby acquiring new customers for the secondary product (Abstr.). 18
The marketing agent 410 uses the customer information and customer 19
lists of the customer data to generate, revise, evaluate, or the like, the 20
marketing strategy, market penetration, market demographics, and the like, 21
of the credit card company 420. The marketing agent 410 may analyze the 22
customer data and customer lists to gain knowledge of which product offers 23
garner more customer acceptance. The marketing agent may refine the 24
customer offers based on information from previous offers to increase 25
product acceptance. Additionally, the marketing agent 410 may analyze the 26
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customer data to determine which, if any, second product extensions may be 1
offered. These aforementioned additional analyses may be iterative 2
processes with further refinement as more data is collected ([0069]). 3
4
5
PRINCIPLES OF LAW 6
Statutory Subject Matter 7
The test to determine whether a claimed process recites patentable 8
subject matter under § 101 is whether: (1) it is tied to a particular machine or 9
apparatus, or (2) it transforms a particular article into a different state or 10
thing. In re Bilski, 545 F.3d 943, 961-62 (Fed. Cir. 2008) (en banc). 11
Nominal recitations of structure in an otherwise ineligible method fail 12
to make the method a statutory process. Ex parte Langemyr, 89 USPQ2d 13
1988, 1996 (BPAI 2008) (Informative) (citing Gottschalk v. Benson, 409 14
U.S. 63, 71-72 (1972)). 15
The use of a specific machine or transformation of an article must 16
impose meaningful limits on the claim's scope to impart patent-eligibility. 17
Bilski, 545 F.3d at 961(Fed. Cir. 2008), cert. granted, 129 S. Ct. 2735 (2009) 18
(citing Benson, 409 U.S. at 71-72). 19
Whether a claim is drawn only to a fundamental principle is 20
essentially an inquiry into the scope of that exclusion; i.e., whether the effect 21
of allowing the claim would be to allow the patentee to pre-empt 22
substantially all uses of that fundamental principle. If so, the claim is not 23
drawn to patent-eligible subject matter. In re Bilski, 545 F.3d at 953 (citing 24
Diamond v. Diehr, 450 U.S. 175, 185, 187 (1981)). 25
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Non-Analogous Art 1
The test for determining whether a reference is analogous art is (1) 2
whether the reference is in the field of the Appellants’ endeavor or (2) 3
whether the reference is reasonably pertinent to the problem with which the 4
Appellants were concerned. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 5
1992). 6
7
Claim Construction 8
During examination of a patent application, a pending claim is given 9
the broadest reasonable construction consistent with the specification and 10
should be read in light of the specification as it would be interpreted by one 11
of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 12
1359, 1364 (Fed. Cir. 2004). 13
14
Obviousness 15
Where the printed matter is not functionally related to the substrate, 16
the printed matter will not distinguish the invention from the prior art in 17
terms of patentability. In re Gulack, 703 F.2d 1381, 1385-86 (Fed Cir. 18
1983). 19
20
ANALYSIS 21
Statutory Subject Matter 22
We are not persuaded that the Examiner erred in asserting that claims 23
1-10, 19, and 20 do not recite statutory subject matter under 35 U.S.C. § 101 24
(Exam’r’s Ans. 3; Reply Br. 2-3). As an initial matter, independent claim 1 25
does not meet the second prong of the machine-or-transformation test 26
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because no transformation, even of data, occurs. See In re Bilski, 545 F.3d 1
at 961-62. 2
Regarding the first prong, Appellants assert that the recitation in 3
independent claim 1 of an “online method” and “transmitting” is “more than 4
purely mental steps,” and thus are sufficiently tied to a machine to be 5
statutory subject matter (Reply Br. 2). However, the recitations of “online 6
method” and “transmitting,” while insinuating the use of a machine, do not 7
in and of themselves recite a machine. Moreover, even if they did 8
sufficiently recite a machine, the machine amounts to no more than a general 9
purpose computer, which is insufficient to impart patentability, as a general 10
purpose computer is not a “particular machine” as required by Bilski. See Ex 11
parte Langmyr, 89 USPQ2d at 1996. 12
The same analysis is applied to “updating an at least one server 13
computer” recited in dependent claim 5 (Reply Br. 3). The “at least one 14
server” computer is a general purpose computer insufficient to impart 15
patentability to the method of claim 5. 16
Furthermore, even if independent claim 1 is taken as performing 17
online transmitting via a particular computer, such a recitation of structure 18
does not impose meaningful limits on the claim, because any online 19
transmitting must be performed via a computer. Thus, the implicit recitation 20
of a computer in the online transmitting step is not, in fact, a limitation at all 21
to the scope of the claim, and the claim is directed, in essence, to the online 22
transmitting step performed by any means. See Bilski, 545 F.3d at 953, 961. 23
Such a method claim, where a recited structure does not impose meaningful 24
limits, is not drawn to patent-eligible subject matter. See Id. 25
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Except as set forth herein, we do not reach the merits of the prior art 1
rejections of claims 1-10, 19, and 20 of our decision because we have 2
determined that the aforementioned claims on appeal do not recite patent-3
eligible subject matter under § 101. We do not reach these rejections. See 4
Diehr, 450 U.S. at 188; In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009) 5
(declining to reach an obviousness rejection on appeal after concluding 6
many claims were non-statutory under § 101); Bilski, 545 F.3d at 951 n.1 7
(noting that § 101 is a threshold requirement and that the Examiner may 8
reject claims solely on that basis); In re Rice, 132 F.2d 140, 141 (CCPA 9
1942) (finding it unnecessary to reach rejection based on prior art after 10
concluding claims were directed to nonstatutory subject matter); Ex Parte 11
Gutta, 93 USPQ2d 1025, 1036 (BPAI 2009) (per curiam) (expanded panel) 12
(precedential) (as the claims on appeal do not recite patent-eligible subject 13
matter under § 101, the prior art rejections need not be considered). 14
15
Non-Analogous Art 16
We are not persuaded that the Examiner erred in asserting that claims 17
11 to 18 are unpatentable under 35 U.S.C. § 103(a) over various 18
combinations of references including Linde and Jordan Kogler, because 19
Linde and Jordan Kogler are non-analogous art to the claimed invention 20
(App. Br. 4-8, 16-18). Concerning Linde, Appellants’ invention is directed 21
towards a quality management system for use during a product development 22
launch cycle (App. Br. 5-6, 16-18). Linde is directed towards optimizing 23
pre-launch procedures to maximize post-launch success ([0010]-[0011]). 24
Accordingly, Appellants’ invention and Linde are both directed to the same 25
problems of optimizing the pre-launch product development cycle, and thus 26
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meet the second prong of the analogous arts test. See In re Oetiker, 977 F.2d 1
at 1447. 2
Concerning Jordan Kogler, Appellants’ invention is directed to 3
providing a mechanism for launch program members to make observations 4
that are integrated into existing launch practices if integration improves the 5
consistency, deliverability, and/or measurability of launch practices 6
([0007)]. Jordan Kogler discloses analyzing customer data and lists to 7
generate, revise, evaluate, or the like, the marketing strategy, market 8
penetration, market demographics, and the like ([0069]). Accordingly, 9
Appellants’ invention and Jordan Kogler are both directed to analyzing and 10
incorporating data to improve deliverables, and thus also meet the second 11
prong of the analogous arts test. See In re Oetiker, 977 F.2d at 1447. We 12
note that the problem solved does not need to be the primary problem set 13
forth by either Appellants’ invention or the reference; any problem will 14
suffice. 15
16
Independent Claim 11 17
We are not persuaded that the Examiner erred asserting that a 18
combination of Linde and Bieda renders obvious the subject matter of 19
independent claim 11 (App. Br. 14-16). Linde discloses “during the first 20
launch program, transmit a launch practice item to an at least one 21
member of the first launch program team, wherein the at least one 22
member uses the defined launch practice item to improve consistency, 23
deliverability and/or measurability of the launch practice” (Exam’r’s 24
Ans. 29). Current drug data is used to benchmark future drugs. This data is 25
transmitted from the medical marketing company to the “manufacturer, 26
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research centre, marketing agency, department store or similar enterprise” 1
set forth in paragraph [0027]. Increased data makes benchmarking more 2
accurate, which improves at least measurability. 3
Bieda discloses that at least one server computer is configured to 4
“receive an at least one member observation regarding the launch practice 5
item from the at least one member of the first launch program team” and 6
“transmit a revised launch practice item and/or a new launch practice item 7
implementing the at least one member observation . . . if implementing the 8
observation improves the consistency, deliverability and/or measurability of 9
the launch practice” (Exam’r’s Ans. 29-31). Bieda discloses that lessons 10
learned are collected by one team and stored for future use by another team 11
([0025]). The lessons learned correspond to both the recited observations 12
and revised launch practice item. The storing of the lessons learned between 13
the collection by the first team and use by the later team is a transmission 14
under a broadest reasonable construction. See In re Am. Acad. of Sci. Tech. 15
Ctr., 367 F.3d at 1364. 16
17
Launch Practice Item 18
We are not persuaded that the Examiner erred asserting that a 19
combination of Linde and Bieda renders obvious “the launch practice item is 20
selected from the group consisting of launch elements, procedures, 21
guidelines, standards, policies, and work instructions,” as recited in 22
dependent claims 12 and 16 (App. Br. 10-12). The Examiner cites the data 23
collection, calculation, and presentation to the client of post-launch 24
performance and marketing parameters in paragraphs [0076]-[0081], [0085] 25
of Linde (Exam’r’s Ans. 26-27). At least procedures, guidelines, standards, 26
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and work instructions were utilized to collect and calculate the data to arrive 1
at the output presented to the client. Furthermore, paragraph [0087] of 2
Linde discloses benchmarking, which is a standard. Moreover, all of the 3
referenced launch practice items are printed matter. See In re Gulack, 703 4
F.2d at 1385-86. 5
6
Measurables and Deliverables 7
We are not persuaded that the Examiner erred asserting that a 8
combination of Linde and Bieda renders obvious “the launch practice item is 9
a procedure and a document supporting the procedure includes measurables 10
and deliverables,” as recited in dependent claims 13 and 17 (App. Br. 12-11
13). The Examiner cites the data collection, calculation, and presentation to 12
the client of post-launch performance and marketing parameters in 13
paragraphs [0076]-[0081], [0085] of Linde (Exam’r’s Ans. 26-27). 14
Procedures were utilized to arrive at the “measurables and deliverables” 15
presented to the client concerning post-launch performance and marketing 16
parameters. Moreover, procedures and their associated documents are 17
printed matter. See In re Gulack, 703 F.2d at 1385-86. Specifically, the 18
contents of procedures and their associated documents are merely data that 19
does not change the operation of any underlying apparatus; they do not 20
include code used to operate such an apparatus. Thus, these data contents 21
could be interchanged for other data contents without changing the operation 22
of the underlying claimed computer system. Accordingly, varying the 23
contents of these documents in such a manner is obvious. 24
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Standard 1
We are not persuaded that the Examiner erred asserting that a 2
combination of Linde and Bieda renders obvious “the launch practice item is 3
a standard and a document supporting the standard includes information 4
regarding how the launch practice should be performed,” as recited in 5
dependent claims 14 and 18 (App. Br. 13). The Examiner cites paragraph 6
[0034] of Linde as disclosing that key success factors are necessary to 7
provide transparency of a market for fast understanding, benchmarking, 8
forecasting, and strategic decision making (Exam’r’s Ans. 28). 9
Quantification of the key success factors is measured, via a defined process, 10
against benchmarks or standards to understand how the market will play out 11
for a particular drug. Moreover, standards and their associated documents 12
are printed matter. See In re Gulack, 703 F.2d at 1385-86. 13
14
CONCLUSION OF LAW 15
The Examiner did not err in rejecting claims 1-20. 16
17
DECISION 18
The decision of the Examiner to reject claims 1-20 is affirmed. 19
No time period for taking any subsequent action in connection with 20
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 21
§ 1.136(a)(1)(iv) (2007). 22
23
AFFIRMED 24
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