10353657 - (D) (P.T.A.B. Jun. 27, 2013)

Ex Parte Chen et al

Patent Trials and Appeals BoardJun 27, 2013

10353657 - (D) (P.T.A.B. Jun. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KAY-YUT CHEN, BERNARDO A. HUBERMAN, and RAJAN M. LUKOSE ____________ Appeal 2010-008643 Application 10/353,657 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and JOSEPH A. FISCHETTI, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Kay-Yut Chen, et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1, 3-9, 11-13, 19, 21-24, 26, and 29-32. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Appeal 2010-008643 Application 10/353,657 2 SUMMARY OF DECISION We AFFIRM.1 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method of forecasting a goal in a principal-agent environment, comprising: providing an agent with a menu of incentive contracts each having a respective parameter values comprising parameter values specifying a fixed compensation portion of the respective incentive contract that is earned regardless of the agent meeting the goal and an at-risk compensation portion of the respective incentive contract that is earned on condition that the agent meets the goal; receiving from the agent a selection of one of the incentive contracts; and forecasting a likelihood of the goal occurring from one or more of the respective parameter values of the incentive contract selected by the agent; wherein the providing, the receiving, and the forecasting are performed by a computing apparatus. 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Feb. 7, 2010) and Reply Brief (“Reply Br.,” filed May 24, 2010), and the Examiner’s Answer (“Ans.,” mailed Apr. 13, 2010). Appeal 2010-008643 Application 10/353,657 3 THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Merrill US 5,954,510 Sep. 21, 1999 Fudenberg et al., “Short-Term Contracts and Long-Term Agency Relationships,” Journal of Economic Theory, Vol. 51, No. 1, June 1990. (“Fudenberg”)] Sönke Albers, “Optimization models for salesforce Compensation,” European Journal of Operational Research, 89 (1996), pp. 1-17. (“Albers”) Official Notice is taken that “ it is old and well known to pay a contracted amount upon the occurrence of the considered goal.” Ans. 9. [Official Notice] The following rejections are before us for review: 1. Claims 1, 3, 5-7, 9, 11-13, 19, 21, 22, 24, 26, and 29-32 are rejected under 35 U.S.C. §103(a) as being unpatentable over Albers, Merrill, and Fudenberg. 2. Claims 4, 8, and 23 are rejected under 35 U.S.C. §103(a) as being unpatentable over Albers, Merrill, Fudenberg, and Official Notice. ISSUES Did the Examiner err in finding that the claimed subject matter would have been obvious to one of ordinary skill in the art over the cited prior art combination at the time of the invention? Appeal 2010-008643 Application 10/353,657 4 FINDINGS OF FACT We rely on the Examiner’s factual findings stated in the Answer. Additional findings of fact may appear in the Analysis below. ANALYSIS The rejection of claims 1, 3, 5-7, 9, 11-13, 19, 21, 22, 24, 26, and 29-32 under 35 U.S.C. §103(a) as being unpatentable over Albers, Merrill, and Fudenberg. Claim 1 The Appellants argue that “Albers in view of Merrill and Fudenberg does [sic, do] not disclose or suggest the "forecasting” element of claim 1 (i.e., "forecasting a likelihood of the goal occurring from one or more of the respective parameter values of the incentive contract selected by the agent).” App. Br. 6. In that regard, the Examiner relied on Merrill; to wit, “Merrill at col. 5, lines 30-40, noting that the salesperson is asked about their sales goals. At col. 6, lines 48-50, the likelihood of achieving this goal is estimated [forecast]).” Ans. 5. The Appellants counter by arguing that Contrary to the Examiner's position, however, Merrill does not disclose or suggest “forecasting a likelihood of the goal occurring from one or more of the respective parameter values of the incentive contract selected by the agent,” as recited m claim 1. Instead, in accordance with Merrill's express teachings, "Likelihood calculations made in process step 106 are performed by analyzing the user's past performance and goal achievement records" (col. 6, lines 52-54; also se [sic, see] Fig.1B, block 106). The “user's past performance and goal achievement records" do not constitute "one or more of the respective parameter values of the incentive contract selected by the agent." Appeal 2010-008643 Application 10/353,657 5 App. Br. 7. The Appellants repeat this argument on pages 8, and 9 of the appeal Brief. After careful review of the record, we find the Appellants’ argument unpersuasive as to error in the rejection. Although the Appellants argue that a “user's past performance and goal achievement records" (as Merrill discloses) do not constitute "one or more of the respective parameter values of the incentive contract selected by the agent" (claim 1), Appellants do not explain why they do not. In our view one of ordinary skill in the art, given a “user's past performance and goal achievement records," would have have been led to employ these indicators of past performance as parameter values of an incentive contract selected by an agent in “forecasting a likelihood of [a] goal occurring” (claim 1). In fact, as the Examiner found (Ans. 11), the Specification defines the claim term “parameter” as covering “behavioral risk parameter for the individual” (see [0024]). One of ordinary skill in the art would understand a “user's past performance and goal achievement records" (as Merrill discloses) amounts to a “behavioral risk parameter for the individual” (Specification [0024]). Accordingly, one of ordinary skill in the art at the time of the invention, would have have been led to employ a “user's past performance and goal achievement records" (Merrill) as a parameter value of an incentive contract selected by an agent in “forecasting a likelihood of [a] goal occurring” (claim 1). The rejection is sustained. Appeal 2010-008643 Application 10/353,657 6 Claims 3, 5-7, 9, 11-13, 30, 31 The Appellants rely on the argument challenging the rejection of claim 1 in challenging the rejection of these claims. App. Br. 9-10. We find the argument equally unpersuasive as to the rejection of these claims. Claim 29 The Examiner relied on the passages at col. 16, l. 62; col. 13, l. 60 – col. 14, l. 6; and col. 9, ll. 13-17 of Merrill as evidence that that the subject matter of claim 29 was disclosed in the prior art at the time of the invention. Ans. 8 and 12-13. Col. 16, l. 62 reads: [The account report includes the following information : ... ] 9. The user's estimate of the likelihood of a sale with this Account. Col. 13, l. 60 – col. 14, l. 6 reads: If the account number entered by the user in step 572 is 60 not on the user's list of active accounts, then the account number is for a new account and the system proceeds to request additional information on the new account. The input server 402 plays a prerecorded message asking the user to say the name of the account at step 586 and records 65 the user's speech. The recording is converted to a data file and is saved with the new account number. The input server 402 then plays another prerecorded message asking the user to enter the dollar goal for this account, followed by the "#" symbol at step 588. The user enters this amount and the input server 402 saves this information along with the new account number and the user's voice recording associated with the account number. Appeal 2010-008643 Application 10/353,657 7 Col. 9, 11. 13-17 reads: Suitable input devices appear in FIG. 3A and suitable output devices appear in FIG. 3B. The computer system 202 in the center of FIGS. 3A and 3B accepts and processes all of the inputs supplied by the input devices 200, performs all computations and generates all of the outputs to be conveyed by the output devices 204. The Appellants argue that “The generation of the account report [i.e., Merrill, col. 16, l. 62] however, does not involve any information from an incentive contract, much less does it involve any information from a second incentive contract having a respective set of terms specifying the fixed compensation and at-risk compensation portions that are different from the terms in a previously selected incentive contract. Nor does this generation process involve deriving a second likelihood of the goal occurring from the terms specifying the fixed compensation and the at-risk compensation portions of the second incentive contract selected by the agent. Indeed, the user’s estimate of the likelihood of a sale with a particular account does not constitute "terms specifying the fixed compensation and the at-risk compensation portions of the second incentive contract selected by the agent." App. Br. 10. After careful review of the record, we find the Appellants’ argument unpersuasive as to error in the rejection. The argument that Merrill does not “involve any information from an incentive contract, much less does it involve any information from a second incentive contract” is an argument over the difference in the content of the information the claimed process used and that of Merrill. Content difference, Appeal 2010-008643 Application 10/353,657 8 without more, is a matter of nonfunctional descriptive material which is not patentable consequential. The argument that “the user’s estimate of the likelihood of a sale with a particular account [i.e., Merrill, col. 16, l. 62] does not constitute "terms specifying the fixed compensation and the at-risk compensation portions of the second incentive contract selected by the agent”” is not persuasive as to error in the rejection because it focuses on the passages at col. 16, l. 62 in isolation, failing to also consider the disclosure at col. 13, l. 60 – col. 14, l. 6 of Merrill. As the Examiner explained (Ans. 13), the disclosure of “[an] account number [ ] for a new account and ... request[ing] additional information on the new account” would suggest, to one of ordinary skill in the art “second accounts and goals for those respective accounts” (Ans. 13). The rejection of claim 29 is sustained. Claim 31 Similar to the argument made challenging the rejection of claim 1 (see supra), the Appellants challenge the rejection of claim 31 on the ground that Merrill’s disclosure at col 5, ll. 30-40, of “goals relat[ing] to sales,” which the Examiner relied upon (Ans. 8) as disclosing “the forecasting ... from one or more of the parameter values” (claim 31), “do not specify any part of an incentive contract much less do they specify at least one of the fixed compensation portion of the selected incentive contract and the at-risk compensation portion of the selected incentive contract” App. Br. 12. The argument is unpersuasive as to error in the rejection because not only have the Appellants not fully addressed the Examiner’s reasoning which does not rely solely on Merrill (see Ans. 8) but the distinction being argued over – the Appeal 2010-008643 Application 10/353,657 9 information in the contract - appears to be one of nonfunctional descriptive material. The rejection is sustained. Claim 19 Claims 21, 22, 24, and 32 Claim 26 The challenge to the rejection of these claims rely on the argument challenging the rejection of claim 1. App. Br. 12-13. We find the argument equally unpersuasive as to the rejection of these claims for the reasons already given. The rejection of claims 4, 8, and 23 under 35 U.S.C. §103(a) as being unpatentable over Albers, Merrill, Fudenberg, and Official Notice. The challenge to the rejection of these claims rely on the argument challenging the rejection of claim 1. App. Br. 13. We find the argument equally unpersuasive as to the rejection of these claims for the reasons already given. CONCLUSIONS The rejections of claims 1, 3, 5-7, 9, 11-13, 19, 21, 22, 24, 26, and 29- 32 under 35 U.S.C. §103(a) as being unpatentable over Albers, Merrill, and Fudenberg and of claims 4, 8, and 23 under 35 U.S.C. §103(a) as being unpatentable over Albers, Merrill, Fudenberg, and Official Notice, are affirmed. Appeal 2010-008643 Application 10/353,657 10 DECISION The decision of the Examiner to reject claims 1, 3-9, 11-13, 19, 21-24, 26, and 29-32 is affirmed. AFFIRMED Klh