Ex Parte Wyker

Patent Trial and Appeal Board

Nov 24, 2014

11242268 (P.T.A.B. Nov. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KENNETH S. WYKER
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Appeal 2012-008104
Application 11/242,268
Technology Center 3600
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
MICHAEL W. KIM, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 21–40. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.

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BACKGROUND
Appellant’s invention is directed to “a method for influencing
consumer purchase of retail sales items” through a synergy between a
manufacturer’s incentive and retail store pricing (Spec. ¶¶ 1–6).
Claim 21 is illustrative:
21. A business method utilized by a manufacturer of retail sales
items for strategically manipulating timing of manufacturer
incentives to effect a net retail sales price of the retail sales
items supplied by the manufacturer to a plurality of retail stores
and offered at the retail stores for sale to consumers, said
method comprising the steps of:
(a) creating an electronic consumer database for each of
the plurality of retail stores, the database indicating a purchase
history of items purchased by consumers at the retail store;
(b) determining when a common item is offered for sale
by each of the retail stores at a reduced retail sales price, the
reduced retail sales price being effective for a promotion period
determined by each retail store;
(c) considering the promotion periods for the common
item at respective retail stores and the purchase history of the
consumers; and
(d) after step (c) and based on the promotion periods for
the common item at respective retail stores and the purchase
history of the consumers, the manufacturer offering a
manufacturer incentive to a predetermined select group of
consumers for purchase of the common item at at [sic] least one
of the retail stores, the manufacturer incentive coordinating
with the reduced retail sales price offered by the retail store to
reach a manufacturer-influenced targeted sales price adapted to
influence purchase by the consumer.

Appellant appeals the following rejections:
Claims 21–25 and 27–40 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Deaton (US 5,687,322; iss. Nov. 11, 1997) and Kepecs
(US 6,330,543 B1; iss. Dec. 11, 2001).
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Claim 26 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Deaton, Kepecs, and Barnett (US 6,321,208 B1; iss. Nov. 20, 2001).

FACTUAL FINDINGS
We adopt the Examiner’s findings as our own. Ans. 5–21. Additional
findings of fact may appear in the Analysis that follows.

ANALYSIS
We are not persuaded by Appellant’s arguments that the Examiner
erred in asserting that a combination of Deaton and Kepecs renders obvious
the subject matter of independent claims 21, 33, and 39 (App. Br. 15–21;
Reply Br. 5–8). Specifically, Appellant asserts that the combination of
Deaton and Kepecs fails to address the subject matter of claims 21, 33, and
39, because Deaton fails to disclose or suggest “a business method utilized
by a manufacturer for strategically manipulating timing (or value) of
manufacturer consumer incentives (e.g., consumer coupon/discount
programs) to effect a ‘net’ retail sales price offered to certain manufacturer-
selected consumers at competing retail stores” (App. Br. 17–21; Reply Br.
8). Appellant’s assertion is misplaced, as the Examiner does not rely solely
on Kepecs to disclose this aspect, but rather on a combination of Deaton and
Kepecs (Ans. 17–21). See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (the argument that a single reference alone does not disclose the
recited claimed steps is not persuasive because nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures) (citing In re Keller,
642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness by
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attacking references individually where, as here, the rejections are based on
combinations of references” (citation omitted)).
Here, the Examiner relies on to Deaton to describe a targeted
customer marketing system which allows the manufacturer to interact with
the retailer for product promotions and discounts (Deaton col. 74:17–29, col.
104:15–43, col 106:8–25). In this regard, Deaton describes coordinating
manufacturer and retailer discounts on the same product in order to provide
the optimal total discount in regards to the goals of the manufacturer and the
retailer (Deaton col. 105:1034). Thus, Deaton describes strategically
manipulating the timing or value of manufacturer consumer incentives to
effect a “net” retail sales price offered to certain manufacturer-selected
consumers. The Examiner relies on Kepecs to describe that manufacturer
and retailer discounts can be coordinated and optimized (Kepecs col. 3:59 –
col. 4:11) based upon various constraints such as cost basis and profit
requirements, and the timing of promotions (Kepecs col. 5:31–44, col 7:26–
43, col. 13:65 – col. 14:12). Accordingly, we agree with the Examiner that
the combination of Deaton and Kepecs discloses the argued aspects of
independent claims 21, 33, and 39 (see Ans. 17–21).
For these reasons above, we consider that the Examiner to have
established a prima facie case of obviousness.
We recognize that evidence of secondary considerations, such as that
presented by the Appellant must be considered in route to a determination of
obviousness under 35 U.S.C. § 103. Accordingly, we consider anew the
issue of obviousness under 35 U.S.C. § 103, carefully evaluating and
weighing both the evidence relied upon by the Examiner and the objective
evidence of nonobviousness provided by the Appellant. Here, Appellant
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asserts that the declaration of Kenneth S. Wyker (“Wyker Declaration”), the
inventor of the instant application, is sufficient to fully rebut the Examiner’s
prima facie case obviousness (App. Br. 15–21; Reply Br. 5–8). Specifically,
Appellant purports that the Wyker Declaration provides evidence that
independent claims 21, 33, and 39 “would not have been obvious to one of
ordinary skill in the industry in view of the teachings of Deaton and Kepecs”
(App. Br. 15–21; see also Reply Br. 5–8). Appellant also asserts that the
Wyker Declaration provides evidence of “long-felt and unresolved needs in
the industry” (App. Br. 15–21; Reply Br. 5–8).
Appellant first argues that paragraph 17 of the Wyker Declaration
provides evidence that the combination of Deaton and Kepecs fails to render
obvious the subject matter of independent claims 21, 33, and 39 (App. Br.
16–17; Reply Br. 5–8). However, paragraph 17 of the Wyker Declaration
merely states:
[a]s an individual of at least ordinary skill in the present
industry, and in view of the long-felt and unresolved needs
outlined above and met using my invention. I disagree with the
patent examiner’s assertion that the claimed method would have
been obvious to one of ordinary skill in the industry in view of
the teachings of Deaton und Kepecs.
While Mr. Wyker may disagree with the Examiner’s conclusion of
obviousness, we find this statement to be conclusory, as it fails to provide
any factual support to support Mr. Wyker’s statement. Declarations fail in
their purpose when they merely state unsupported conclusory statement. See
In re Wright 999 F.2d 1557, 1563 (Fed. Cir. 1993) and In re Brandstadter
484 F.2d 1395, 1405 (CCPA 1973). Accordingly, based on the conclusory
nature of the statement in paragraph 17, the Wyker Declaration is entitled to
but little weight. The remaining portions of the Declaration also fail to
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provide any factual support to substantiate the conclusory statement
provided by Mr. Wyker in paragraph 17.
In regards to Appellant’s assertion that the Wyker Declaration
provides evidence of “long-felt and unresolved needs in the industry,” we
disagree, and find that establishing long-felt need requires objective
evidence that an art recognized problem existed in the art for a long period
of time without solution. In particular, the evidence must show that the need
was a persistent one that was recognized by those of ordinary skill in the art.
In re Gershon, 372 F.2d 535, 539 (CCPA 1967). Here, Appellant relies on
paragraphs 13 and 14 of the Wyker Declaration, however, neither of these
paragraphs provides any objective evidence that any problem existed in the
art for a long period of time.
In addition, the long-felt need must not have been satisfied by another
before the invention by applicant. See Newell Cos. v. Kenney Mfg. Co., 864
F.2d 757, 768 (Fed. Cir. 1988) (“[O]nce another supplied the key element,
there was no long-felt need or, indeed, a problem to be solved . . . .”) On the
record, Appellant has not provided persuasive evidence sufficient to
establish this element. That is, the Wyker Declaration only states that
“[p]rior to my invention, I was unaware of any commercially practiced
method which met the long-felt need . . .” (Wyker Declaration ¶ 14).
Lastly, Appellant must establish that the invention must, in fact,
satisfy the long-felt need. See In re Cavanagh, 436 F.2d 491, 496 (CCPA
1971) (One must also show that the others who failed had knowledge of the
critical prior art.). Although, Appellant sets forth five elements which
Appellant contends a long-felt need exists for (see Wyker Declaration ¶ 13),
the Wyker Declaration fails to establish that the claimed invention satisfies
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these needs (see Wyker Declaration ¶ 14). Moreover, the five elements
provided in paragraph 13 of Wyker Declaration are not limitations appearing
in the claims. We note that evidence of secondary considerations must be
relevant to the subject matter as claimed. Ashland Oil, Inc. v. Delta Resins
& Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985), cert. denied,
475 U.S. 1017 (1986).
For these reasons, Appellant has failed to demonstrate a long-felt need
in the art.
In considering the evidence in total, the evidence of secondary
considerations does not outweigh the evidence of record pointing to the
obviousness of the claimed invention. See Asyst Techs., Inc. v. Emtrak, Inc.,
544 F.3d 1310, 1316 (Fed. Cir. 2008) (“[E]vidence of secondary
considerations does not always overcome a strong prima facie showing of
obviousness.”) (citations omitted). Accordingly, for the reasons outlined
above, we sustain the rejection of independent claims 21, 33, and 39, as well
as the rejections of dependent claims 22–32, 34–38, and 40, which stand or
fall with their respective independent claim (see App. Br. 14), under
35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 21–40 under 35 U.S.C.
§ 103(a).
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).

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AFFIRMED
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