Ex Parte Boardman

Board of Patent Appeals and Interferences

Aug 28, 2006

09730266 (B.P.A.I. Aug. 28, 2006)

The opinion in support of the decision being entered today was not w
for publication and is
ritten
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRIS BOARDMAN
____________

Appeal No. 2006-1571
Application No. 09/730,266
Technology Center 3623
____________

HEARD: August 10, 2006
____________

Before CRAWFORD, LEVY, and FETTING, Administrative Patent Judges.
LEVY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-18, which are all of the claims pending in
this application.
We REVERSE.
BACKGROUND
The appellant's invention relates to a system and method for
estimating product distribution using a product specific universe
(specification, page 1).

Appeal No. 2006-1571
Application No. 09/730,266

Παγε 2
In particular, it is disclosed (specification, pages 4 and 5)
that
[A] method is provided for estimating the
sales of specialty products. The method
employs a two stage approach which includes
defining a first product specific universe
using wholesale purchasing data to determine
a product specific store size for a first
plurality of retail outlets and defining
a second product specific universe using
sampled retail sales data to determine a
product specific store size for a second
plurality of retail outlets. Geo-spatial
projection is then applied to the first and
second product specific universes to
determine product specific projection factors
for retail outlets in the first and second
universe. The product specific projection
factors are then applied to sampled retail
sales data for the product to estimate the
sales of the specialty product in unsampled
retail outlets.

Claim 1 is representative of the invention, and is

reproduced as follows:

1. A computer readable medium for estimating the sales of
specialty products, the computer readable medium comprising
instructions operable to perform the steps of:

defining a first product specific universe using wholesale
purchasing data to determine a product specific store size for a
first plurality of retail outlets;

defining a second product specific universe using sampled
retail sales data to determine a product specific store size for
a second plurality of retail outlets;

applying geo-spatial projection to the first product
specific universe and the second product specific universe to
Appeal No. 2006-1571
Application No. 09/730,266

Παγε 3

determine product specific projection factors for retail outlets
in the first and second universe; and

applying said product specific projection factors to sampled
retail sales data for the product to estimate the sales of said
specialty product in unsampled outlets.

The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Felthauser et al. (Felthauser) 5,420,786 May 30, 1995
Berne, Supply Chain Savvy, Food Engineering, 1 August 1999

Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Felthauser1 in view of Berne.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer (mailed December 21,
2005) for the examiner's complete reasoning in support of the
rejection, and to the brief (filed December 14, 2005) and reply
brief (filed February 23, 2006) for the appellant's arguments
thereagainst.

1 Assigned to appellant.
Appeal No. 2006-1571
Application No. 09/730,266

Παγε 4
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered. See 37 CFR § 41.37(c)(1)(vii)(eff. Sept. 13, 2004).

OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejection advanced
by the examiner, and the evidence of obviousness relied upon by
the examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellant's arguments set forth in the briefs along with the
examiner's rationale in support of the rejection and arguments in
rebuttal set forth in the examiner's answer.
Upon consideration of the record before us, we make the
determinations which follow. We note at the outset that the
claims have been argued as a group. Accordingly, we select
claim 1 as representative of the group.
In rejecting claims under 35 U.S.C. § 103, it is incumbent
upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
Appeal No. 2006-1571
Application No. 09/730,266

Παγε 5
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set forth
in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966). The examiner must articulate reasons for the examiner's
decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430, 1434
(Fed. Cir. 2002). In particular, the examiner must show that
there is a teaching, motivation, or suggestion of a motivation to
combine references relied on as evidence of obviousness. Id. at
1343. The examiner cannot simply reach conclusions based on the
examiner's own understanding or experience - or on his or her
assessment of what would be basic knowledge or common sense.
Rather, the examiner must point to some concrete evidence in the
record in support of these findings. In re Zurko, 258 F.3d 1379,
1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). Thus the examiner
must not only assure that the requisite findings are made, based
on evidence of record, but must also explain the reasoning by
which the findings are deemed to support the examiner's
conclusion. However, a suggestion, teaching, or motivation to
combine the relevant prior art teachings does not have to be
found explicitly in the prior art, as the teaching, motivation,
or suggestion may be implicit from the prior art as a whole,
rather than expressly stated in the references. The test for an
Appeal No. 2006-1571
Application No. 09/730,266

Παγε 6
implicit showing is what the combined teachings, knowledge of one
of ordinary skill in the art, and the nature of the problem to be
solved as a whole would have suggested to those of ordinary skill
in the art. In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336
(Fed. Cir. 2006) citing In re Kotzab, 217 F.3d 1365, 1370, 55
USPQ2d 1313 (Fed. Cir. 2000). See also In re Thrift, 298 F. 3d
1357, 1363, 63 USPQ2d 2002, 2008 (Fed. Cir. 2002). These
showings by the examiner are an essential part of complying with
the burden of presenting a prima facie case of obviousness. Note
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the
arguments. See id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
The examiner's position (answer, page 3) that “sales data
regardless of source is still sales data.” The examiner asserts
(answer, page 6) that Felthauser fails to teach using wholesale
purchasing data. To overcome this deficiency of Felthauser,
Appeal No. 2006-1571
Application No. 09/730,266

Παγε 7
the examiner turns to Berne for a teaching of supply chain
solutions from manufacturer to customer that includes
wholesale distribution. The examiner adds that sales forecasts
and customer requirements “strongly suggest purchasing data of
wholesalers since wholesalers will purchase products from the
manufacturer or supplier” (answer, page 7). The examiner asserts
(id.) that it would have been obvious to an artisan to include
the wholesale purchasing data with the teachings of Felthauser
since Felthauser teaches estimating sales activity of a product,
and (id.) “Berne teaches that in order to achieve the level of
agility and responsiveness we aspire to, it is essential that
we have access to accurate, real-time information and greater
visibility into the entire supply chain."
Appellant's position (brief, page 9) is that Felthauser’s
method is insufficient for estimating sales of a specialty
product which has a non-uniform or inhomogeneous retail
distribution pattern. It is argued (id.) that Felthauser does
not disclose supplementing data from the “retail” universe
outlets with data from a “wholesale” universe of outlets to
obtain a more complete or valid description of the market. In
particular, it is asserted (brief, page 10) that Felthauser does
not show, teach or suggest “defining a first product specific
Appeal No. 2006-1571
Application No. 09/730,266

Παγε 8
universe using wholesale purchasing data to determine a product
specific store size for a first plurality of retail outlets;
defining a second product specific universe using sampled retail
sales data to determine a product specific store size for a
second plurality of retail outlets." It is argued that
Felthauser does not show, teach or suggest combining wholesale
and retail store sizings for geo-spatial projection onto
unsampled outlets. It is additionally argued (id.) that the
examiner’s statement “sales data regardless of source is still
sales data” disregards the two distinct store sizings and
subsequent combination of two geo-spatial projections that are
required by appellant's claims.
Turning to Berne, appellant asserts that Berne relates to
processes upstream of product manufacturing as opposed to
appellant's invention which relates to downstream processes. It
is asserted (brief, page 11) that the examiner mistakenly reads
Berne as being related to estimating sales of specialty products
in an inhomogenous or non-uniform marketplace. Appellant notes
(id.) that Berne does not show any store sizing based on either
wholesale or retail sales data and also does not show any geo-
spatial projection to estimate sales of any product.
Appeal No. 2006-1571
Application No. 09/730,266

Παγε 9
The examiner responds (answer, page 10) that “the 'sales
forecast' and customer requirements strongly suggest purchasing
data of wholesalers since wholesalers will purchase product
from the manufacturer or supplier (i.e., Kraft, Russell Stover
Candies, Liberty Richter) based on their demand within the supply
chain."
From our review of the record, we agree with appellant, for
the reasons as generally set forth in the briefs, that the
combined teachings of Felthauser and Byrne would not have
suggested all of the limitations of appellant's claims. As
acknowledged by both the examiner (answer, page 6) and by
appellant (brief, pages 9 and 10), Felthauser does not disclose
supplementing retail data with wholesale data and combining the
two distinct (wholesale and retail) sets of data and applying
geo-spatial projection to estimate sales of specialty products in
unsampled outlets.
Turning to Berne, as noted by the examiner, Berne is
directed to supply chain solutions which streamline operations
(page 1). Berne discloses that accurate forecasting on their
part is a critical element and that sophisticated modeling tools
provide optimal flexibility in planning for the future (page 4).
Appeal No. 2006-1571
Application No. 09/730,266

Παγε 10
Berne additionally discloses (page 5) that historical data can
no longer be relied upon for forecasting. Thus, we find that
Berne, in discussing supply chain solutions, discloses the use of
sophisticated modeling and analysis tools. However, we do not
know what specific data is used in the system modeling for making
the supply chain more efficient. The fact that Berne uses
sophisticated modeling tools is not a recognition of combining
retail and wholesale sales data for estimating sales of specialty
products which are not accurately estimated using retail data.
We decline to speculate as to the specific data used by Berne’s
system modeling, particularly because Berne is directed to supply
chain efficiencies and not to estimating the sales of specialty
products. The examiner may not resort to speculation or
unfounded assumptions to supply deficiencies in establishing a
factual basis. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967). Accordingly, we find no teaching or
suggestion in Berne of combining wholesale purchasing data with
retail purchasing data and applying geo-spatial projection to
estimate sales of specialty products, other than from appellant's
disclosure. “Obviousness may not be established using hindsight
or in view of the teachings or suggestions of the inventor.”
Para- Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1085, 1087,
Appeal No. 2006-1571
Application No. 09/730,266

Παγε 11
37 USPQ2d 1237, 1239 (Fed. Cir. 1995)(citing W.L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303,
311, 312-13 (Fed. Cir. 1983)). “It is impermissible to use the
claimed invention as an instruction manual or ‘template’ to piece
together the teachings of the prior art so that the claimed
invention is rendered obvious.” In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992)(citing In re Gorman,
933 F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991)).
We do agree with the examiner (answer, page 3) that “sales
data regardless of source is still sales data.” However, even
though sales data can include both retail and wholesale sales
data, the limitation of the claim regarding defining a first
product specific universe using wholesale purchasing data cannot
be ignored. Nor can this limitation, along with the other
limitations regarding applying geo-spatial projections to the
wholesale data to estimate sales of a specialty product in
unsampled outlets be ignored.
From all of the above, we are not convinced that the Berne
article cures the deficiencies of Felthauser, and agree with
appellant (reply brief, page 2) that “the mere availability of
wholesale purchasing data, does not suggest the combination of
Felthauser and Berne for estimating retail product sales."
Appeal No. 2006-1571
Application No. 09/730,266

Παγε 12
Moreover, from our finding, supra, we find that even if we
combined the teachings of Felthauser and Berns, that resultant
structure would not result in the invention as claimed. The
rejection of claim 1, and claims 2-6 which depend therefrom,
under 35 U.S.C. § 103(a) is not sustained.
As independent claims 7 and 12 contain similar language, the
rejection of claims 7-18 under 35 U.S.C. § 103(a) is not
sustained.
Appeal No. 2006-1571
Application No. 09/730,266

Παγε 13
CONCLUSION
To summarize, the decision of the examiner to reject claims
1-18 under 35 U.S.C. § 103 is reversed.

REVERSED

MURRIEL E. CRAWFORD )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )
Appeal No. 2006-1571
Application No. 09/730,266

Παγε 14
BAKER & BOTTS30 ROCKEFELLER PLAZA44TH FLOORNEW YORK, NY 10112

SL/jrg
Comment [jvn1]: Type address