Ex Parte Irwin

Patent Trial and Appeal Board

Aug 17, 2015

10775680 (P.T.A.B. Aug. 17, 2015)

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.
10/775,680 02/11/2004 Charles F. Irwin 103-2 1131
7590 08/17/2015
DILWORTH IP, LLC
2 CORPORATE DRIVE SUITE 206
TRUMBULL, CT 06611
EXAMINER
HENRY, RODNEY M
ART UNIT PAPER NUMBER
3681
MAIL DATE DELIVERY MODE
08/17/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHARLES F. IRWIN
____________________

Appeal 2013-008489
Application 10/775,680
Technology Center 3600
____________________

Before LYNNE H. BROWNE, JILL D. HILL, and
LISA M. GUIJT, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Charles F. Irwin (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 2, 4–8, 12, 16, 18, 20–22, 24–28, 32,
36, 37, 40–43, 45–58, and 60–75.1.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

1 Claims 3, 9–11, 13–15, 17, 19, 23, 29–31, 33–35, 38–39, 44, and 59 are
cancelled.
2 The pages of the Appeal Brief are not numbered. In order to cite the
Appeal Brief, we number them 1–52.
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CLAIMED SUBJECT MATTER
The claims are directed to a method carried out via the internet for
effectuating one or more incentive programs and a system for effectuating
collaboration between members of a supply community by operating an
incentive program. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method carried out via an internet website for effectuating
one or more incentive programs between two or more partners
in a supply community which enables a first partner (also
known as an "establishing partner") to establish financial
consequences that motivate one or more other partners in each
incentive program (referred to herein as one or more
"participating partners") to achieve or exceed a minimum
required level of performance on at least one performance
indicator that measures aggregate performance for a set of
events defined by a time or event count period wherein the one
or more participating partners, the performance indicators, the
minimum level of performance required for each performance
indicator, and the financial consequence for each performance
indicator are selected and specified by the establishing partner,
the method including the steps of:
sending invitations from a plurality of establishing
partners via an internet website hosted on a server to one or
more members of a supply community to become one or more
participating partners in incentive programs;
for each incentive program, receiving via the internet
website a selection of at least one performance indicator that
measures aggregate performance for a set of events defined by a
time or event count period for each participating partner;
receiving via the internet website a minimum level of
performance for each of the at least one performance indicators
in each incentive program;
receiving via the internet website a financial consequence
to motivate the at least one participating partner to achieve the
minimum required level of performance in each incentive
program;
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receiving via the internet website acceptances of
participation in a plurality of contemporaneous incentive
programs from at least one member who thereby becomes a
participating partner; and
outputting from the internet website a financial credit or
financial debit due to the each participating partner in each
incentive program;
wherein at least one participating partner, or the
establishing partner, or both, is a shipper, consignee or carrier
in a transportation marketplace.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Eicher
Burk
US 2002/0099598 A1
US 2003/0074250 A1
July 25, 2002
Apr. 17, 2003
Vemula US 2004/0172321 A1 Sept. 2, 2004
Davidson US 2005/0108043 A1 May 19, 2005

REJECTIONS3,4
I. Claims 1, 2, 4–6, 8, 12, 16, 20–22, 24–26, 28, 32, 36, 48, 50, 53–58,
61–64, 66, 67, 695, 70, 71, and 73 stand rejected under 35
U.S.C. § 102(e)6 as being anticipated by Burk.

3 The Examiner does not include independent claims 43 and 45 in any of the
rejections. Given that these claims are not rejected, they are not before us on
appeal. See 37 C.F.R. § 41.31(c).
4 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review the claims for
compliance under 35 U.S.C. § 101 in light of the Director's examination
guidance on patent eligible subject matter. See 2014 Interim Guidance on
Patent Subject Matter Eligibility, 79 Fed. Reg. 74619 (Dec. 16, 2014)(and
any updates thereof), which supplements the “Preliminary Examination
Instructions in view of the Supreme Court Decision in Alice Corporation
Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to the Examining
Corps, June 25, 2014.
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II. Claims 7, 27, 52, 65, 68, 72, and 75 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Burk and Eicher.7
III. Claims 18, 37, 47, 60, and 74 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Burk and Vemula.
IV. Claims 40–42, 46, 49, and 51 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Burk, Eicher, and Davidson.

OPINION
Rejection I
Claims 1, 2, 4–6, 8, 12, 16, 20–22, 24–26, 28, 32, 36, 48, 50, and 69–71:
Appellant argues claims 1, 2, 4–6, 8, 12, 16, 20, 48, 50, and 69
together. See Br. 18–21. Further, Appellant does not present separate
arguments for claims 21–22, 24–26, 28, 32, 36, and 48. See Br. 21. We
select independent claim 1 as the representative claim, and claims 2, 4–6, 8,

5 The Examiner’s statement of the claims rejected under 35 U.S.C. § 102(b)
refers to claim 68, but the explanation of the rejection refers to the subject
matter of claim 69. Final Act. 2, 14–15; Ans. 3, 15–16. Accordingly, the
statement of the rejection contains a typographical error and should refer to
claim 69.
6 The Examiner’s statement of the rejection indicates that the rejection is
made under 35 U.S.C. § 102(b), but Burk was not published more than one
year prior to the filing date of the present application, and therefore does not
qualify as prior art under 35 U.S.C. § 102(b). However, Burk qualifies as
prior art under 35 U.S.C. § 102(e). Accordingly, we treat the reference to
§ 102(b), as opposed to § 102(e), as a typographical error.
7 In the statement of the rejection, the Examiner states that claims 53–58,
61–64, 66, and 67 were rejected under 35 U.S.C. § 102 as anticipated by
Burk. However, these claims depend from claim 52, which was rejected
under 35 U.S.C. § 103 as unpatentable over Burk and Eicher. Accordingly,
as noted by the Examiner, we understand claims 53–58, 61–64, 66, and 67 to
be rejected under Burk and Eicher. Ans. 39. Claims 53–58, 61–64, 66, and
67 are not separately argued and have been grouped with claim 52.
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12, 20–22, 24–26, 28, 32, 36, 48, and 69 stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(iv) (2015).
The Examiner finds that Burk discloses each and every limitation of
independent claim 1. Final Act. 2–5. In particular, the Examiner finds that
Burk discloses “sending invitations from a plurality of establishing partners
via an internet website hosted on a server to one or more members of a
supply community to become one or more participating partners in incentive
programs.” Final Act. 3 (citing Burk ¶¶ 2218 and 2627).
Appellant argues that Burk fails to disclose “elective participation in
an incentive program in response to an invitation thereto as provided in
claim 1 . . . [or] an enabling disclosure of an incentive program or of sending
invitations to participate in an incentive program.” Br. 18. Burk describes
inviting distributors to participate in developing a new business relationship
that focuses on opportunities in supply chain and distribution management,
which includes tracking benchmark performance utilizing supply chain data
and paying rebates. Burk ¶¶ 2218 and 2627. One skilled in the art reading
this description would understand that when the invitation is accepted, the
distributor has elected to participate in the incentive program. Thus, the
Examiner correctly finds that Burk discloses sending invitations to
participate in an incentive program. Final Act. 3. Furthermore, Appellant’s
contention that Burk lacks an enabling disclosure is not well taken because
Appellant does not explain why undue experimentation would be required in
order for one skilled in the art to practice Burk’s method. Thus, Appellant
does not apprise us of error.
Appellant also argues that Burk fails to disclose the claimed steps of
receiving a selection of at least one performance indicator and receiving a
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minimum level of performance because in paragraph 1772 and Fig. 116
Burk “merely disclose the tracking and reporting of performance metrics in a
matrix; there is no connection of the performance metrics to an incentive
program; none of the cited passages disclose receiving a minimum level of
performance for a performance indicator in connection with an incentive
program.” Br. 19. With regard to the remaining steps of claim 1, Appellant
similarly argues that there is no connection of the tracking of data in Burk to
an incentive program. Br. 19. Appellant’s arguments are not persuasive,
because Burk teaches that the tracking and reporting of performance metrics
and the paying of rebates are all part of the supply chain management
framework. Specifically, the Examiner cites to paragraph 2627, which
discloses that the management of the supply chain includes tracking
benchmark performance using the supply chain data and paying rebates.
Ans. 37. Those skilled in the art would understand that benchmarks are
standards by which participants in the supply chain may be measured or
judged.8 One skilled in the art would further understand that rebates may be
used to incentivize a party to meet performance goals for indicators such as
volume or growth of sales or volume over a time period. Therefore, Burk
discloses measuring performance of participants in a supply chain relative to
a standard and paying suppliers or distributors that meet performance
standards. Thus, Appellant does not apprise us of error.

8 An ordinary and customary meaning of the term “benchmark” is “(a): a
point of reference from which measurements may be made; (b) something
that serves as a standard by which others may be measured or judged.”
Merriam-Webster.com, © 2015, accessed at http://www.merriam-
webster.com/dictionary/benchmark (last visited August 3, 2015).
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For these reasons, we sustain the Examiner’s decision rejecting claims
1, 2, 4–6, 8, 12, 20–22, 24–26, 28, 32, 36, 48, and 69–71 as anticipated by
Burk.
Claim 16:
The Examiner finds that Burk teaches “increasing any favorable
reward or reducing the minimum required level of performance for a
selected performance indicator any time during the time or event count
period for that incentive program.” Final Act. 7 (citing Burk ¶ 1710).
Appellant argues that claim 16 refers to a change in the establishing
party’s obligations in an incentive program made while the incentive
program is in progress, whereas the “adjustment described in Burk is not
made pursuant to a change in the delivery contract after the contract is
accepted.” Br. 20–21. Burk teaches adjusting the invoices based on non-
conformance with the contract. Burk ¶ 1710. The adjustment in Burk,
namely, adjusting an invoice to account for damaged/non-conforming goods,
is not a change to the terms of the contract made during the time or event
count period for that contract. Thus, the Examiner’s finding is in error.
For this reason, we do not sustain the Examiner’s decision rejecting
claim 16.
Claims 50 and 73:
Claims 50 and 73 recites that the performance indicator measures
performance of the participating partner in relation to third parties. Br. 43,
46, 51. The Examiner finds that in Burk the “‘Coordinator shall have the
sole and absolute right to designate methods, third party contractors and
interpretation of performance audits.’” Final Act. 11, 13 (citing Burk
¶ 2346). Appellant argues that the Examiner errs because “Burk 2346 is
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merely a passage in a proposed agreement…that gives a ‘Coordinator’ audit
rights from a ‘Distributor’ that permits audits by third parties.” Br. 22. In
paragraph 2346, Burk states “Distributor shall provide Coordinator with
periodic audits of the data being used by Distributor to report its
performance against the Performance Standards. Coordinator shall have the
sole and absolute right to designate methods, third party contractors and
interpretation of performance audits.” Burk ¶ 2346. Thus, Appellant’s
argument is persuasive. We do not sustain the Examiner’s decision rejecting
claims 50 and 73.
Rejection II
Claims 7 and 27:
The Examiner finds that Eicher teaches “the financial consequence
includes a financial consequence unfavorable to the at least one participating
partner when the minimum level of performance is not achieved.” Final
Act. 17, 18 (citing Eicher ¶ 75). Appellant notes that Eicher teaches that
“KPIs are recorded and used for the purposes of identifying issues in a
relationship and helping to determine appropriate resolutions, or in helping
to match contracting parties by making available past performance in
relation to contracts like those being considered by the parties.” Br. 23.
Based on this teaching, Appellant argues that the per-day penalty in Eicher
serves a different purpose than the unfavorable financial consequence in the
claimed invention. Id. We are unaware of any requirement that a reference,
which is relied upon to reject claims under 35 U.S.C. § 103(a), must have
the same objectives as the claimed invention. Rather, it is not necessary for
the prior art to serve the same purpose as that disclosed in Appellant’s
Specification in order to support the conclusion that the claimed subject
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matter would have been obvious. See In re Linter, 458 F.2d 1013, 1016
(CCPA 1972); see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 at 419
(“[N]either the particular motivation nor the avowed purpose of the
[Appellant] controls” in an obviousness analysis.).
Moreover, Appellant’s argument does not consider what the combined
teachings of Burk and Eicher would have suggested to one of ordinary skill
in the art. One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Thus,
Appellant’s argument is not persuasive. For these reasons, we sustain the
Examiner’s decision rejecting claims 7 and 27.
Claims 52–58, 61–64, 66, and 67:
Appellant argues that Eicher does not teach or suggest the use of KPIs
for the purpose of an incentive program, which by itself can yield financial
rewards or penalties to an invited partner. See Br. 26–27. Appellant’s
argument is not persuasive because, as discussed supra, it is not necessary
for the prior art to serve the same purpose as that disclosed in Appellant’s
Specification in order to support the conclusion that the claimed subject
matter would have been obvious. For this reason, we sustain the Examiner’s
decision rejecting claims 52–58, 61–64, 66, and 67.
Claims 65, 68, and 75:
Appellant notes that claims 65, 68, and 75 share several substantive
features in common with claim 1. Br. 23, 27. Appellant asserts that “Burk
fails to disclose many of these features” and contends that claims 65, 68, and
75 are allowable for this reason. Id. at 25, 27. As discussed supra, we find
no substantive features missing from Burk. Therefore, Appellant’s argument
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is not persuasive. We sustain the Examiner’s decision rejecting of claims
65, 68, and 75.
Claim 72:
Appellant argues claim 72 is patentable over the combination of Burk
and Eicher for the reasons discussed with respect to claims 50, 63, and 73.
Br. 27–28. Appellant’s argument is persuasive because Eicher does not cure
the deficiency in Burk discussed supra in regard to clams 50, 63, and 73.
For this reason, we do not sustain the Examiner’s decision rejecting claim
72.
Rejection III
Claims 18, 60, and 74:
The Examiner finds that Vemula discloses “one or more incentive
programs each ha[ving] a duration and wherein the establishing partner
changes the time or event count period for a selected performance indicator
during the incentive program.” Final Act. 26–27, 30 (citing Vemula ¶ 35).
Appellant argues that the portion of Vemula relied upon by the Examiner
refers to header level data representing obligations and rebates to be imposed
in specific time periods in a contract and Vemula does not suggest changing
the terms of any contract while the parties are carrying out the contract. Br.
29. In response to Appellant’s argument, the Examiner finds that Vemula
teaches contracts and optimal planning, which “the Examiner interprets to be
‘fluid’ changes to contracts.” Ans. 48 (citing Vemula ¶ 20). Vemula states
in relevant part:
System events are predefined events of a purchase order
transaction, where each event is distinctly identifiable by a
change in the status of the order; and an associated transaction
that is triggered by such a status change; the examples of such
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an event being “receipt of material” for an order, where this
event may change the status from “ordered” to “received” and
also triggers the generation of a material receipt note
transaction. Such events through out the life cycle of the
purchases have been pre-defined in the system. The users may
further define custom events by selecting a pre-defined system
event and providing a time direction and time duration from the
selected event.
Vemula ¶ 35.
The Examiner does not identify nor do we discern where Vemula
describes an establishing partner changing the time or event count period for
a selected performance indicator during the inventive program, as required
by claims 18 and 60. Similarly, the Examiner does not identify nor do we
discern where Vemula describes an establishing partner lowering the time or
event count period at any time during the incentive program. Thus,
Appellant’s argument is persuasive.
For these reasons, we do not sustain the rejection of claims 18, 60, and
74.
Claims 37 and 47
Appellant argues that claims 37 and 47 are allowable based on their
dependency from claims 1 and 21. See Br. 28. We sustain the rejection of
claims 37 and 47 for the same reasons discussed supra regarding claims 1
and 21.
Rejection IV
Claims 40–42, 46, and 49
Appellant argues that claims 40–42, 46, and 49 are allowable based on
their dependency from claim 21. Br. 30. We sustain the rejection of claims
40–42, 46, and 49 for the same reasons we sustain the rejection of claim 21.
Claim 51
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Claim 51 depends from claim 21. Neither Eicher nor Davidson cure
the deficiency in Burk discussed supra in regard to claim 21. Accordingly,
we do not sustain the rejection of claim 51.

DECISION
The Examiner’s rejection of claims 1, 2, 4–8, 12, 20–22, 24–28, 32,
36, 37, 40–42, 46–49, 52–58, 61–71, and 75 is AFFIRMED. The
Examiner’s rejection of claims 16, 18, 50, 51, 60, and 72–74 is REVERSED.
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).

AFFIRMED-IN-PART

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