Ex Parte Baydar

Board of Patent Appeals and Interferences

Mar 12, 2010

10190004 (B.P.A.I. Mar. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CEM M. BAYDAR
___________

Appeal 2009-005965
Application 10/190,004
Technology Center 3600
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Decided: March 12, 2010
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-005965
Application 10/190,004

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STATEMENT OF THE CASE
Cem M. Baydar (Appellant) seeks our review under 35 U.S.C. § 134
(2002) of the final rejection of claims 1, 6, 9, 12, 14-16, and 18-26. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
This invention is a “one-to-one marketing system[s] for providing
individual discounts to each customer to optimize a store’s performance.”
Specification [0003].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An individual discount system for optimizing
retail store performance using a computer, the
computer comprising:
an objective function comprising relative
objectives for at least profits, sales volume and
customer satisfaction,
input parameters comprising at least a
number of subpopulations, subpopulation, size,
starting temperature, temperature reduction rate
and cooling temperature,
a plurality of customer models comprising at
least one of a shopping frequency, price sensitivity

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed Jun. 12, 2008) and the Examiner’s Answer (“Answer,” mailed Jul. 24,
2008).

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and consumption rate, at least one customer model
being supplied for each individual customer, and
a modified simulated annealing operation,
where the modified simulated annealing operation
has a deterministic selection of initial starting
points, and where the modified simulated
annealing operation has a weighted selection of
next generation starting points,
wherein the modified simulated annealing
operation optimizes the objective function by
providing individual discounts to the individual
customers in response to the input parameters and
the plurality of customer models, and
wherein a computer screen outputs results
for profits, sales volume and customer satisfaction
after applying the individual discounts.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Herz
Ouimet
US 2001/0014868
US 2002/0107819
Aug. 16, 2001
Aug. 8, 2002
S. Kirkpatrick, C. D. Gelatt, Jr. and M.P. Vecchi, Optimization by
Simulated Annealing, Science, May 1983. [Hereinafter, Kirkpatrick.]

The following rejection is before us for review:
1. Claims 1, 6, 9, 12, 14-16, and 18-26 are rejected under 35
U.S.C. §103(a) as being unpatentable over Herz, Ouimet, and
Kirkpatrick.
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ISSUE
The issue is whether claims 1, 6, 9, 12, 14-16, and 18-26 are obvious
over Herz, Ouimet, and Kirkpatrick. Specifically, the issue is whether the
Appellant has overcome the Examiner’s prima facie showing of
obviousness.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. The Examiner makes specific findings of fact with regards to the
each limitation of claim 1 in the rejection under §103(a) as
unpatentable over Herz, Ouimet, and Kirkpatrick. Answer 3-7. See
also Answer 8-12.
2. The Examiner’s rejection includes specific references to the
figures, pages, and paragraphs of Herz, Ouimet, and Kirkpatrick.
Answer 3-7. See also Answer 8-12.
3. The Examiner provides a rationale for combining Herz, Ouimet,
and Kirkpatrick in the manner suggested. Answer 4-5.

PRINCIPLES OF LAW
Obviousness
Section 103 forbids issuance of a patent
when ‘the differences between the subject matter
sought to be patented and the prior art are such that
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the subject matter as a whole would have been
obvious at the time the invention was made to a
person having ordinary skill in the art to which
said subject matter pertains.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 1, 6, 9, 12, 14-16, and 18-26 under §103(a) as being
unpatentable over Herz, Ouimet, and Kirkpatrick.
The Appellant argues claims 1, 6, 9, 12, 14-16, and 18-26 as a group.
Br. 6-10. We select claim 1 as the representative claim for this group, and
the remaining claims 6, 9, 12, 14-16, and 18-26 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii) (2009).
The Appellant argues that the Examiner has not established a prima
facie showing of obviousness. See Br 7-11. However, we find that the
Examiner has established a prima facie showing of obviousness in rejecting
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claim 1 under 35 U.S.C. §103(a) as unpatentable over Herz, Ouimet, and
Kirkpatrick. See FF 1-3.
The Appellant has the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
The Appellant argues that “[t]he prior art of record does not disclose
all of the limitations claimed by the Applicant” and “in particular,” all of the
limitations of claim 1. See Br. 7-8. First the Appellant argues that Examiner
only found that Herz disclosed an objective function for maximizing profits
and not for profits, sales volume and customer satisfaction. Br. 8. However,
the Examiner did find that Herz discloses an objected function for profit,
sales volume and customer satisfaction. See Answer 5-8.
Next, the Appellant then argues for each reference, that the reference
does not disclose all of the limitations of claim 1. For example, the
Appellant states, “Ouimet fails to disclose customer models with shopping
frequency, price sensitivity, or consumption rate. . .” (Br. 9) and makes the
same statement with regard to Herz (Br. 8-9) and Kirkpatrick (Br. 10).
However, the Examiner made specific finding that Herz taught this
limitation, including citing to specific paragraphs. Answer 3.
Further, the Appellant makes general arguments that the Examiner has
relied upon hindsight in rejecting the claims (Br. 6-7) and that “there is no
apparent reason in the prior art to combine all of the Applicant’s claim
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limitations to achieve the claimed inventions” (Br. 7). However, the
Examiner provided explicit reasoning in combining Herz, Ouimet and
Kirkpatrick. Answer 4 -5.
We find that the Examiner has established a prima facie showing of
obviousness. The Appellant’s arguments do not address the Examiner’s
specific findings or reasoning in rejecting the claims as obvious over the
combination of Herz, Ouimet, and Kirkpatrick. The Appellant does not
explain why the Examiner’s specific findings are in error.
Accordingly, we find that the Appellant has not overcome the prima
facie showing of obviousness, and we sustain the rejection of claims 1, 6, 9,
12, 14-16, and 18-26 under 35 U.S.C. §103(a) as unpatentable over Herz,
Ouimet, and Kirkpatrick.

CONCLUSIONS OF LAW
We conclude that the Appellant has not overcome the prima facie
showing of obviousness as to the rejection of claims 1, 6, 9, 12, 14-16, and
18-26 under 35 U.S.C. §103(a) as unpatentable over Herz, Ouimet, and
Kirkpatrick.

DECISION
The decision of the Examiner to reject claims 1, 6, 9, 12, 14-16, and
18-26 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

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Application 10/190,004

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AFFIRMED

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