Ex Parte Guthridge

Patent Trial and Appeal Board

Oct 14, 2016

13267620 (P.T.A.B. Oct. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/267,620 10/06/2011 Gregory Sean Guthridge
79340 7590 10/18/2016
MANNA VA & KANG, P,C
3201 Jermantown Road
SUITE 525
FAIRFAX, VA 22030
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
D 11-010-02394-00-US 1016
EXAMINER
PRASAD, NANCY N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
10/18/2016 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):
ASHOKM@MANNA V AKANG.COM
docketing@mannavakang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY SEAN GUTHRIDGE
Appeal2014-005517
Application 13/267 ,620 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 According to the Appellant, the real party in interest is Accenture Global
Services Limited. Appeal Br. 3.
Appeal2014-005517
Application 13/267,620
ILLUSTRATIVE CLAIM
1. A system configured to perform eco score analytics
for an energy program associated with a plurality of potential
targets, the system comprising:
a data storage to store a data structure including a
plurality of parameters and information associating the
parameters with attributes of the energy program;
a factor profile initiator to determine parameters to be
included in a model for the energy program based on the
information in the data structure and the attributes of the energy
program, and to build a model for the energy program from the
determined parameters;
a scoring module executed by a processor to determine
values for the parameters in the model and to determine a score
for each of the potential targets based on the model and the
values for the parameters in the model, wherein each score
represents a measure of an estimate of a propensity of the
potential target to participate in the energy program;
a campaign engine to determine a ranking of the scores
for the plurality of potential targets, wherein at least a subset of
the potential targets is selected as targets for the energy
program based on the rankings.
REJECTION
Claims 1-20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Johnson (US 6,169,979 Bl, iss. Jan. 2, 2001) and Jones, III et al. (US
6,925,441 B 1, iss. Aug. 2, 2005) ("Jones").
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the Analysis below.
2
Appeal2014-005517
Application 13/267,620
ANALYSIS
Independent Claims 1, 10, and 19
and Dependent Claims 4-9 and 13-18
The Appellant contends (Appeal Br. 8-12) that the Examiner erred in
rejecting independent claim 1, because the cited prior art references fail to
teach or suggest the claimed "scoring module" having the following recited
features (emphasis added):
a scoring module executed by a processor to determine
values for the parameters in the model and to determine a score
for each of the potential targets based on the model and the
values for the parameters in the model, wherein each score
represents a measure of an estimate of a propensity of the
potential target to participate in the energy program.
Addressing the Appellant's argument involves the construction of the
claim language: "an estimate of a propensity of the potential target to
participate."
The Examiner - relying, in part, upon a general dictionary definition
of the word "propensity" (Answer 10)- construes the identified phrase in
claim 1 to mean "an assessment of the natural tendency or disposition of
someone who participates" (id. at 11 ). Based upon this construction, the
Examiner finds that both Johnson and Jones teach the identified feature. Id.
at 11-17.
The Appellant contends that the Examiner's construction is mistaken,
proposing instead to construe the identified phrase of claim 1 to mean "a
likelihood that a potential target will participate in an energy program."
Reply Br. 7.
As the language of claim 1 itself, the Examiner's construction does
not capture the referent of the word "propensity" in claim 1. Although the
3
Appeal2014-005517
Application 13/267,620
Examiner relies upon an appropriate dictionary definition of the word
"propensity" as a "natural inclination or tendency" (Answer 10), the
Examiner's construction misinterprets the phrase following the word
"propensity": "of the potential target to participate in the energy program."
Thus, contrary to the Examiner's construction, claim 1 does not concern a
general "propensity" (or inclination/tendency) of a current participant, but
is specifically directed to the "propensity" of a particular entity ("the
potential target") to do a particular future activity ("participate in an energy
program"). The Specification reinforces this notion, by explaining that the
disclosed ESA ("eco score analytics" (see Spec. i-f 6)) system may be used
"to identify targets for the energy program that would likely have the
greatest interest in the program" (Spec. i-f 18 (emphasis added)) and the
promotional resources "are more efficiently utilized by targeting the entities
most likely to participate in the program" (Spec. i-f 47 (emphasis added)).
Accordingly, the Appellant has proposed a proper construction of the
disputed claim language, proposing that the phrase "a propensity of the
potential target to participate in the energy program" means "a likelihood
that a potential target will participate in an energy program." See Reply
Br. 7.
In view of this construction of the disputed language, we find Johnson
fails to meet the identified limitation of claim 1. As the Appellant shows,
Johnson calculates estimated reductions in utility consumption and
associated cost savings of an energy program, but does not determine a score
that estimates a potential customer's likelihood or propensity to participate
in the program. See Appeal Br. 9-10; Reply Br. 7-8.
4
Appeal2014-005517
Application 13/267,620
However, the Examiner finds that Jones also discloses claim 1 's
"estimat[ing] [the] propensity of the potential target to participate." See
Answer 12-14. The Examiner (id. at 14) points out portions of Jones that
correspond to the properly construed claim language at issue, stating, for
example:
Once offers, or series of offers are in the inventory of the
present invention, the system will provide notices of the buying
opportunities only to the appropriate consumers. In short,
there will be no bulk mailing of offers to consumers. Mailing
will be presented to the consumers who have the highest
probability of actually wanting the goods and services in
question.
Jones, col. 7, 11. 12-18 (emphasis added).
In discussing Jones, the Examiner refers to the proper meaning of the
contested claim language - notwithstanding its difference from the
Examiner's own professed construction- stating: "Here, Jones not only
shows the ability to rank customers but also to present offers to customers
with the highest probability of actually wanting the goods and services."
Answer 14 (emphasis added).
The Appellant contends that Jones discusses making offers to
customers based upon their likelihood of accepting the offer, but does not
teach determining a "score" for such a quality. Reply Br. 9. To the
contrary, Jones explicitly refers to a "score" that reflects the likelihood of a
customer responding to a particular offer, including in portions of Jones
specifically identified by the Examiner. See Answer 16 (citing Jones, col. 9,
1. 34---col. 10, 1. 19) (referring to consumer "scores"). Indeed, Jones states
the objective of "establish[ing] a consumer rating which amounts to a
probability number that will indicate how likely it is that a consumer will
5
Appeal2014-005517
Application 13/267,620
respond to a particular offer presented to the consumer by a particular
channel of commerce." Jones, col. 9, 11. 37--41; see also id. at col. 3, 11. 50-
55 ("It is a further object of the present invention to create a system for
assessing 'scores' attributable to [a] particular consumer that rates the
likelihood of that particular consumer responding to an off er of goods and
services from merchants.")
The Appellant also contends that the Examiner's Answer changed the
thrust of the rejection of independent claim 1, depriving the Appellant of a
fair opportunity to respond thereto, and should have followed the procedure
for designating portions of the Answer as new grounds of rejection. Reply
Br. 8-9 (citing MPEP § 1207.03). Specifically, the Appellant says that the
Examiner's Answer contained the new findings that (1) the features of claim
1 are "old and well known" and (2) Jones discloses the claimed
determination of a score that represents an estimate of the propensity that the
consumer will buy the product or participate in an energy program. Id.
The alleged failure to designate new grounds of rejection is not an
appealable matter. "Any request to seek review of the primary examiner's
failure to designate a rejection as a new ground of rejection in an examiner's
answer must be by way of a petition to the Director" and the "[ f]ailure of
appellant to timely file such a petition will constitute a waiver of any
arguments that a rejection must be designated as a new ground of rejection."
37 C.F.R. § 41.40(a).
Notwithstanding, we fail to see the merits of Appellant's argument
because, as to the first alleged new finding, the Appellant mischaracterizes
the Examiner's Answer, which did not state that the disputed features of
claim 1 are "old and well known," but merely said that "[i]t should be noted
6
Appeal2014-005517
Application 13/267,620
that it is old and well known to a reasonable person of ordinary skill in the
art that the goal of any sales system is to increase sales." Answer 12. The
second alleged new finding is actually present in the Final Office Action,
which explains that "Jones shows 'ranking' (at least in col. 7, lines 1-32:
where not only are the customers ranked, but those consumers who have the
highest probability of actually wanting the goods and services in question,
will be presented with the offers)." Final Action 5.
Accordingly, the Appellant's arguments for error in the rejection of
claim 1 are unpersuasive.
The Appellant relies upon the same arguments alone, in regard to
independent claims 10 and 19, as well as dependent claims 4--9 and 13-18.
Appeal Br. 13. Thus, the rejection of claims 1, 4--10, and 13-19 under 3 5
U.S.C. § 103(a) is sustained.
Dependent Claims 2, 3, 11, 12, and 20
Claim 2 recites (emphasis added):
The system of claim 1, wherein the scoring module is to
determine an efficiency score for each potential target that
represents an estimate of an impact the potential target is
operable to have on load management of power demand.
The Appellant (Appeal Br. 13-14) contends that the Examiner
erroneously rejected claim 2 because Johnson does not teach or suggest the
recited "determin[ing] an efficiency score for each potential target."
According to the Appellant, the portions of Johnson cited by the Examiner
do not include scores of any kind, let alone the recited "efficiency score."
Id. at 14.
We find that the cited portion of Johnson (see Final Action 5 (citing
Johnson, col. 8, 1. 48 - col. 9, 1. 56)) discloses a filtering dialog box that
7
Appeal2014-005517
Application 13/267,620
selects categories presented to a salesperson, and also discloses items that a
salesperson could include in a customer presentation, but does not teach or
suggest the features of the recited "determin[ing] an efficiency score for
each potential target." Accordingly, the Appellant persuasively argues that
the Examiner erred in rejecting claim 2.
Claims 11 and 20 contain limitations similar to those at issue in claim
2. See Appeal Br. 15, 17, 20, 22; Final Action 5. Claim 3 depends from
claim 2 and claim 12 depends from claim 11. Consequently, the rejection of
claims 2, 3, 11, 12, and 20 under 35 U.S.C. § 103(a) is not sustained.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1, 4--10, and
13-19 under 35 U.S.C. § 103(a).
We REVERSE the Examiner's decision rejecting claims 2, 3, 11, 12,
and 20 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).
AFFIRMED-IN-PART
8