Ex Parte Chik

Patent Trial and Appeal Board

Feb 22, 2017

10229570 (P.T.A.B. Feb. 22, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/229,570 08/28/2002 Paul Chun Kit Chik CN920010003US1 2222
30449 7590 02/24/2017
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
MANSFIELD, THOMAS L
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
02/24/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
30449@IPLAWUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL CHUN KIT CHIK
Appeal 2014-008006
Application 10/229,570
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Paul Chun Kit Chik (Appellant) seeks review under 35 U.S.C. § 134 of a
final rejection of claims 7 and 13—29, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed January 27, 2014) and Reply Brief (“Reply Br.,” filed July 2,
2014), and the Examiner’s Answer (“Ans.,” mailed May 2, 2014), and Final
Action (“Final Act.,” mailed September 25, 2013).
Appeal 2014-008006
Application 10/229,570
The Appellant invented a way of assessing and improving individual
customer profitability for a profit-making organization. Specification 1:7—9.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is partially reproduced below (bracketed matter
and some paragraphing added).
1. A method for assessing and improving profitability for a
profit-making organization, said method comprising:
[1] collecting internal data from an internal source within the
organization,
wherein the internal data consists of individual customer
data that includes geographic data of the individual
customers, demographic data of the individual customers,
and transaction data of the individual customers
regarding products and financial information relating to
transactional activities of the individual customers,
[2] receiving external data from third parties outside the
organization,
[3] a processor of a computer system inputting the internal data
and the external data into a central database of the computer
system;
[4] segmenting the customers through use of the qualitative data
to form distinct groups of customers who share similar
characteristics within the distinct groups, but have
different characteristics between the distinct groups;
[5] processing the quantitative data to identify and separate
input and output factors,
[6] building a mathematical model based on the input factors,
the output factors, and the groups formed from said segmenting,
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Appeal 2014-008006
Application 10/229,570
wherein the mathematical model is a linear programming
model;
[7] said processor calculating a numeric ranking score for each
customer of the organization,
[8] identifying best costumers of the organization consisting of
all customers of the organization whose calculated ranking
score is equal to the highest possible rank score;
and
[9] finding and maintaining a set of optimal marketing
strategies for the organization with respect to sub-optimal
customers of the organization,
The Examiner relies upon the following prior art:
Claims 7 and 13—29 stand rejected under 35U.S.C. § 112, first
paragraph, as lacking a supporting written description within the original
disclosure.
Claims 7 and 13—29 stand rejected under 35U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention.
Claims 7 and 13—29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Eder and Strutt.
Eder US 5,615,109
Strutt US 2002/0133368 A1
Mar. 25, 1997
Sept. 19, 2002
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Appeal 2014-008006
Application 10/229,570
ISSUES
The issues of written description support and indefiniteness turn
primarily on whether the disclosure supports the use of a processor and
whether the scope of various terms would be understood by one of ordinary
skill in the art. The issues of obviousness turn primarily on whether Eder
describes using customer segments as an input to a linear programming
model.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Eder
01. Eder is directed to enhanced inventory management, and more
particularly, to creating detailed forecasts of sales before
generating profit maximizing sets of requisitions and/or
manufacturing work-orders that maintain finished goods inventory
at the levels required to maintain user-specified service standards,
while satisfying the financial constraints forecast by the system
and user specified constraints, during the next 1 to 78 time
periods. Eder 1:8—15.
Strutt
02. Strutt is directed to a business model of an integrated data
warehouse system. Strutt para. 1.
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Appeal 2014-008006
Application 10/229,570
ANALYSIS
Claims 7 and 13—29 rejected under 35 U.S.C. § 112, first paragraph, as
lacking a supporting written description within the original disclosure
We are persuaded by Appellant’s argument that the recited processor is
supported by the original filed disclosure. Reply Br. 3—6.
Claims 7 and 13—29 rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the invention
We are persuaded by Appellant’s argument that one of ordinary skill
would understand the metes and bounds of the recited limitations indicated
by the Examiner at Final Action 7—8. Reply Br. 7—8.
Claims 7 and 13—29 rejected under 35 U.S.C. § 103(a) as unpatentable over
Eder and Strutt
We are not persuaded by Appellant’s argument that the applied art does
not restrict its individual customer data input to only those data items in the
set consisting of geographic data of the individual customers, demographic
data of the individual customers, and transaction data of the individual
customers regarding products and financial information relating to
transactional activities of the individual customers. Reply Br. 9—10. The
independent claims recite comparable use of the word “consists” with regard
to input factors and output factors. The claims use the transition word
“comprising.” The use of the word “consists” following that transition
limits only the term it applies to. It does not preclude similar items in
addition to that term.
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Appeal 2014-008006
Application 10/229,570
Crish’s principal argument here that the claims also contain the
closed-ended transition term “consists,” and that that term
narrows the entire claim, is unpersuasive. The reasonable
interpretation of the claims containing both of the terms
“comprising” and “consists” is that the term “consists” limits
the “said portion” language to the subsequently recited
numbered nucleotides, but the earlier term “comprising” means
that the claim can include that portion plus other nucleotides.
Read in context, the claims thus do not preclude a DNA
sequence having additional nucleotides.
In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004) (footnote omitted).
That said, we are persuaded by Appellant’s argument that
Appellant cannot find in Eder a disclosure of the claimed
limitations that the algorithms listed in Eder, Table 12 in
cols. 22-23 are built from: (i) the input factors consisting of
“resources of organizations that are available for spending on
customers to obtain a profitable return from said spending”, (ii)
the output factors consisting of “product utilization,
productivity, or revenue generated by customers”, and (iii) the
groups formed from said segmenting the customers, and the
Examiner’s Answer has not explained how Eder allegedly
discloses the preceding claimed limitations even though the
Appeal Brief specifically called the Examiner’s attention to the
preceding claimed limitations.
Reply Br. 16. All of the references to linear programming in Eder rely on
product variables and do not use customer segment groupings. The
algorithms the Examiner cites in Eder’s Table 12 are statistical averaging
and smoothing algorithms used for financial projections rather than linear
programming (optimization) algorithms. Strutt does not mention linear
programming.
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Appeal 2014-008006
Application 10/229,570
CONCLUSIONS OF LAW
The rejection of claims 7 and 13—29 under 35U.S.C. § 112, first
paragraph, as lacking a supporting written description within the original
disclosure is improper.
The rejection of claims 7 and 13—29 under 35U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention is improper.
The rejection of claims 7 and 13—29 under 35 U.S.C. § 103(a) as
unpatentable over Eder and Strutt is improper.
DECISION
The rejections of claims 7 and 13—29 are reversed.
REVERSED
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