Ex Parte Odom

Board of Patent Appeals and Interferences

Aug 24, 2010

11616258 (B.P.A.I. Aug. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P 0 Box 1450
Alexandria, Virginia 22313- 1450
www uspto go"
40600 7590 08/26/20 10
GARY ODOM
123NW 12THAVE.,#1545
PORTLAND, OR 97209
APPLICATION NO.
I EXAMINER I
PATS, JUSTIN
111616,258 12/26/2006 Gary Odom 2282
FILING DATE
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
ATTORNEY DOCKET NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
GARY @PATENTHAWK.COM
CONFIRMATION NO.
08/26/2010 ELECTRONIC
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte GARY ODOM
Appeal 2009-005890
Application 1 116 16,258
Technology Center 3600
Before HUBERT C. LORIN, TONI R. SCHEINER, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL'
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005890
Application 1 116 16,258
STATEMENT OF THE CASE
Gary Odom (Appellant) seeks our review under 35 U.S.C. 5 134
(2002) of the final rejection of claims 4, 6-8, and 23. We have jurisdiction
under 35 U.S.C. 5 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.
THE INVENTION
This invention is a method for "identifying rivals, where rivals are the
direct competition to a vendor, other sellers with similar reputation and
market positioning to a vendor." Specification [0018].
Claim 8, reproduced below, is illustrative of the subject matter on
appeal.
8. A computer-implemented method for
categorizing a seller relative to a vendor
comprising :
storing an overall pricing model for a
vendor,
wherein an overall pricing model comprises
a position within a ordinal range of pricing levels,
and
wherein said overall pricing model relates to
a composite representation of item pricing models
for a set of on-sale items;
2 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed Apr. 28, 2008) and Reply Brief ("Reply Br.," filed Aug. 9, 2008),
and the Examiner's Answer ("Answer," mailed Jun. 11, 2008).
Appeal 2009-005890
Application 1 116 16,258
storing product-specific data for a first set of
items,
wherein said first set comprises a plurality
of items;
determining a product mix comprising a
plurality of items from said first set;
storing said product mix;
reading said product mix data as a basis for
search;
whereby finding, via network connection,
for a first set of sellers, current prices for a result
set of items,
wherein said first set of sellers comprises at
least a first seller,
wherein said first set of sellers does not
include said vendor,
as current prices for a plurality of on-sale
items in said product mix by said vendor are
available from a database without network search,
and
wherein said result set comprises a plurality
of items in said product mix;
storing said result set item prices;
statistically characterizing respective item
price data by determining data representative of an
item price curve for respective items in said result
set;
storing said item price curve data;
deriving respective seller item pricing
models for a plurality of items in said result set,
wherein a said item pricing model comprises
a position within a relative range of pricing levels
for a said item based upon said item price curve
data;
determining an overall pricing model for
said first seller using a plurality of said first seller
item pricing models;
Appeal 2009-005890
Application 1 116 16,258
categorizing said first seller by at least in
part comparing said first seller's overall pricing
model to at least one threshold of similarity to said
vendor's overall pricing model; and
storing said first seller categorization.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability :
RivalWatch .corn- Corporate Profile,
http://web.archive.org/web/200 10 12403 1/rivalwatch.corn/about/index.html
RivalWatch.com [Hereinafter, RivalWatch.com.]
Atul Sheel, Monte Carlo Simulations and Scenario Analysis, 36
Cornell Hotel and Restaurant Administration Quarterly 18 (Oct. 1995).
[Hereinafter, Sheel.]
Ed Timmerman, An Approach to Vendor Pe@rmance Evaluation,
National Association of Purchasing Management, 1987, pg. 14-20, reprinted
from Journal of Purchasing and Materials Management, Winter 1986.
[Hereinafter, Timmerman.]
RivalWatch Screenshots, 2000-2001, pg. 1-82. [Hereinafter,
RivalWatch Screenshots.]
The Examiner took official notice that "it is old and well known to
make available from a database current prices for a vendor without network
search." Answer 5 [Hereinafter, Official Notice I.]
The Examiner took official notice that "determining a vendor's rivals,
who are highly similar to the vendor, as compared to other sellers who are
Appeal 2009-005890
Application 1 116 16,258
less similar to the vendor, using factors calculated by computer, was old and
well known at the time of the invention." [Hereinafter, Official Notice 11.1
The following rejection is before us for review:
1. Claims 4, 6-8, and 23 are rejected under 35 U.S.C. 5 103(a) as
being unpatentable over RivalWatch.com, RivalWatch
Screenshots, Sheel, Timmerman, Official Notice I, and Official
Notice 11.
ISSUE
The issue is whether claim 8 is unpatentable over RivalWatch.com,
RivalWatch Screenshots, Sheel, Timmerman, Official Notice I, and Official
Notice 11. Specifically, the issue is whether the Examiner applied hindsight
in finding that one of ordinary skill in the art would have been led to
combine RivalWatch.com, RivalWatch Screenshots, Sheel, and Timmerman
as proposed by the Examiner. The rejection of claims 4, 6,7, and 23 also
turn on this issue.
FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Znc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
RivalWatch.com
1. RivalWatch.com describes a system for evaluating online
competition which includes analyzing competitive price, product,
and promotion information. RivalWatch.com pg. 1.
Appeal 2009-005890
Application 1 116 16,258
S heel
2. Sheel describes a Monte Carlo simulation that is used by hotel
managers to determine an optimal mix of room types and rates for
a hotel. Pg. 18-19.
Timmerman
3. Timmerman describes a method of evaluating manufacturer
supplier performance, which includes a linear averaging or
weighted-point method. See pgs. 14 and 16.
4. Timmerman's linear averaging method includes calculating a
composite performance index by combining a number of
evaluation factors, such as product, cost, and quality, and their
relative importance expressed as numerical weights. Pg. 16 and
Table V.
5. Timmerman's Table V is an example of the result of the linear
averaging method for medium-sized electric motor manufacturing
firms. Pg. 19-20.
ANALYSIS
The Appellant argues that the Examiner has applied hindsight in
rejecting claim 8 based on a combination of RivalWatch.com, Rivalwatch
Screenshots, Sheel, Timmerman, Official Notice I, and Official Notice 11.
See App. Br. 6-14 and Reply Br. 13-18. The Examiner disagrees. Answer
7-8.
Rejections based on 5 103 must rest on a factual basis with these facts
being interpreted without hindsight reconstruction of the invention from the
prior art. The examiner may not, because of doubt that the invention is
Appeal 2009-005890
Application 1 116 16,258
patentable, resort to speculation, unfounded assumption or hindsight
reconstruction to supply deficiencies in the factual basis for the rejection.
See In re Warner, 379 F.2d 101 1, 1017 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968). Our reviewing court has repeatedly cautioned against
employing hindsight by using the appellant's disclosure as a blueprint to
reconstruct the claimed invention from the isolated teachings of the prior art.
See, e.g., Grain Processing Corp. v. American Maize-Products Co., 840
F.2d 902, 907 (Fed. Cir. 1988). See also In re Rouffet, 149 F.3d 1350
(Fed.Cir.1998).
We agree with the Appellant that the Examiner has engaged in
impermissible hindsight reconstruction of the claimed invention using the
Appellant's invention as a blueprint. For example, the Examiner supplied
Timmerman to teach the step of "categorizing said first seller by at least in
part comparing said first seller's overall pricing model to at least one
threshold of similarity to said vendor's overall pricing model." Answer 6.
However, Timmerman describes a method of evaluating a manufacturer
based on categories, such as product, cost, and quality, as well as calculating
a weighted index. FF 3-5. The index is then used to determine which
manufacturer to use as a supplier. FF 4. We find that given this teaching
one of ordinary skill in the art would not have been led to modify
RivalWatch.com or RivalWatch Screenshots, which describe a web price
comparison system (FF I), or Sheel, which describes a Monte Carlo
simulation for determining a room-rate mix for a single hotel (FF 2).
Neither RivalWatch nor Sheel is concerned with a buyer evaluating and
comparing manufacturing suppliers. The Examiner's proposed combination
of RivalWatch, Sheel, and Timmerman seems to be more than the
Appeal 2009-005890
Application 1 116 16,258
predictable use of a prior art element according to its established function,
since in the Examiner's combination, the evaluation and comparison method
of Timmerman would have to be used to compare price models of sellers in
order to categorize the seller. The Examiner seems to be employing
impermissible hindsight to teach the claimed invention.
"Obviousness can not be established by hindsight combination to
produce the claimed invention," In re Dance, 160 F.3d 1339, 1343 (Fed. Cir.
1998). Accordingly, we find that the Appellant has shown that the Examiner
erred in rejecting claim 8, and claims 4, 6,7, and 23 dependent thereon,
under 35 U.S.C. 5 103(a) as being unpatentable over RivalWatch.com,
Rivalwatch Screenshots, Sheel, Timmerman, Official Notice I, and Official
Notice 11.
DECISION
The decision of the Examiner to reject claims 4, 6-8, and 23 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2007).
REVERSED
mev
Appeal 2009-005890
Application 1 1/6 16,258
GARY ODOM
123 NW 12TH AVE., #I545
PORTLAND OR 97209