Ex Parte Thier

Board of Patent Appeals and Interferences

Mar 27, 2009

11373888 (B.P.A.I. Mar. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ADAM THIER
____________

Appeal 2009-1604
Application 11/373,888
Technology Center 3600
____________

Decided:1March 30, 2009
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-1604
Application 11/373,888

STATEMENT OF THE CASE
Adam Thier (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1-8. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
This appeal is related Appeal No. 2006-0072 of Application No.
09/575,599.

SUMMARY OF DECISION
We REVERSE. 2

THE INVENTION
The invention is a method for statistically quantifying and
mathematically modeling sales opportunities in order to forecast revenue and
generate sales plans. (Specification [0005].) First, a model engineer
develops a mathematical model and a condition set, which are objects
related to sales activities. (Specification [0036].) Next, the sales force
provides input data indicating the status of one or more conditions for each
business opportunity. (Specification [0037].) A statistical engine analyzes
the condition set and generates a probability set indicating the probability of
successfully achieving each business opportunity. (Specification [0039].)

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Oct. 15, 2007) and Reply Brief (“Reply Br.,” filed Mar. 11,
2008), and the Examiner’s Answer (“Answer,” mailed Jan. 11, 2008).
2
Appeal 2009-1604
Application 11/373,888

Based on the probability set, a sales plan is generated. (Specification
[0040].)
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
Claim 1: A method for statistically quantifying
sales opportunities to forecast revenue and
generate sales plans, the method comprising:
storing a mathematical model in a database,
wherein the model includes a plurality of objects
representing business opportunities and associated
conditions for a sales organization to achieve the
business opportunities;
storing a first set of probabilities received
from a user representing initial estimated
probabilities for achieving the opportunities prior
to receiving any input data from the sales
organization related to a status for each of the
business opportunities;
receiving input data from the sales
organization, indicating the status of at least one
condition associated with one of the business
opportunities;
calculating, with a statistical engine, a
second set of probabilities as a function of the
input data from the sales organization, the
mathematical model, and the first set of initial
estimated probabilities that arc unrelated to the
status of the business opportunities, wherein the
second set of probabilities indicates the probability
of successfully achieving the business
opportunities;
outputting a sales plan as a function of the
second set of probabilities, wherein the sales plan
provides a summary of the input data provided by
the sales organization, an analysis section that
provides statistical output based on analysis of the
3
Appeal 2009-1604
Application 11/373,888

condition set and the input data, and a
recommendation section that provides a set of
actions to increase the likelihood of achieving the
business objectives; and
outputting a revenue report as a function of
the second set of probabilities, wherein the revenue
report list the business opportunities, a potential
revenue for each of the business opportunities and
the calculated second set of probabilities that
indicates the probability of achieving each
opportunities.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Johnson et al. US 6,067,525 May 23, 2000
Lazarus et al. US 6,430,539 B1 Aug. 6, 2002

The following rejection is before us for review:
1. Claims 1-8 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Johnson in view of Lazarus.

ISSUE
The issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 1-8 under 35 U.S.C. § 103(a) as
unpatentable over Johnson in view of Lazarus. The issue turns on whether
one of ordinary skill in the art would have been led Johnson and Lazarus to
the claimed method including the step of storing a first set of probabilities
received from a user representing initial estimated probabilities prior to
4
Appeal 2009-1604
Application 11/373,888

receiving any input data from the sales organization related to a status for
each of the business opportunities.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Claim construction
1. Claim1 recites “storing a first set of probabilities received from a
user representing initial estimated probabilities for achieving the
opportunities prior to receiving any input data from the sales
organization related to a status for each of the business
opportunities.”
2. Claim 1 recites “calculating, with a statistical engine, a second set
of probabilities as a function of the input data from the sales
organization, the mathematical model, and the first set of initial
estimated probabilities that are unrelated to the status of the
business opportunities, wherein the second set of probabilities
indicate the probability of successfully achieving the business
opportunities.”
The scope and content of the prior art
Johnson
3. Johnson describes a fully integrated sales automation system
including a salesperson support system 100, made up of a number
of different components. (Col. 3, ll. 60-64.)
5
Appeal 2009-1604
Application 11/373,888

4. Johnson describes a self management component 110 having an
objective management module 714 and a forecasting module 710.
(Col. 19, ll. 48-59.)
5. “The system may automatically calculate the probability of
closing the sale with the date and value of each opportunity and
process and consider both the sales status and the customer’s
buying status.” (Col. 21, ll. 20-23.)
6. In Column 21, lines 40-48, Johnson states:
The forecasting module 710 also provides the
salesperson with automatic reporting capabilities
including win-loss ratios, actual versus goals,
commissions, and period-to-date status.
Opportunity status may be presented on a system
calculated or a user estimated basis. The module
utilizes data for closed sales, data for opportunities
with a stated prediction of close, or data for a
combination of both as received from other
components of the system to generate forecast
reports.

7. The system includes a data tools subsystem 205 of the back office
system 200.
8. The data and formula matrix used to calculate probability of
closing a sales opportunity is provided within the sales processes
tool 1210, which is part of the data tools subsystem. (Col. 26, ll.
15-18.)
9. “Upon occurrence of a particular event or set of events, the system
can dynamically update the probability of sale.” (Col. 35, ll. 19-
24.)
6
Appeal 2009-1604
Application 11/373,888

10. The system includes a customer retention component 108
including a customer satisfaction module 602.
11. The customer satisfaction module 602 assists the salesperson in
identifying key steps, deliverables, schedules, purchase goals, and
key events for the customer. (Col. 19, ll. 9-14.)
12. The customer satisfaction module is connected to the event
manager 201A for integration with the self management
component 110. (Col. 19, ll. 15-17.)

Lazarus
13. Lazarus describes:
a method of analyzing and predicting consumer
financial behavior that uses historical, and time-
sensitive, spending patterns of individual
consumers to create both meaningful groupings
(segments) of merchants which accurately reflect
underlying consumer interests, and a predictive
model of consumer spending patterns for each of
the merchant segment. Current spending data of an
individual consumer or groups of consumers can
then be applied to the predictive models to predict
future spending of the consumers in each of the
merchant clusters.
(Col. 3, ll. 1-10.)
14. Column 23, lines 18-26 states:
Also, given the joint probability estimate Pij and
the number of independent co-occurrence events
T, the estimated probability distribution function
for the number of times that merchanti, and
merchantj co-occur can be determined. It is well
known, from probability theory, that an experiment
having T independent trials (here transactions) and
7
Appeal 2009-1604
Application 11/373,888

a probability of success Pij for each trial (success
here being co-occurrence of merchanti and
merchantj) can be modeled using the binomial
distribution.

Any differences between the claimed subject matter and the prior art
15. Johnson does not describe storing a first set of probabilities
received from a user representing initial estimated probabilities for
achieving the opportunities prior to receiving any input data from
the sales organization related to a status for each of the business
opportunities.
The level of skill in the art
16. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent art of forecasting revenue and
managing sales organizations. We will therefore consider the cited
prior art as representative of the level of ordinary skill in the art.
See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
(“[T]he absence of specific findings on the level of skill in the art
does not give rise to reversible error ‘where the prior art itself
reflects an appropriate level and a need for testimony is not
shown’”) (“[T]he absence of specific findings on the level of skill
in the art does not give rise to reversible error ‘where the prior art
itself reflects an appropriate level and a need for testimony is not
shown’”) (Quoting Litton Indus. Prods., Inc. v. Solid State Sys.
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).

8
Appeal 2009-1604
Application 11/373,888

Secondary considerations
17. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004). “[W]e look to the specification to see if it provides a
definition for claim terms, but otherwise apply a broad interpretation. As
this court has discussed, this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).
Further, as applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee. Am. Acad., 367 F.3d at 1364.” In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Limitations appearing in the
specification but not recited in the claim are not read into the claim. E-Pass
Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
9
Appeal 2009-1604
Application 11/373,888

1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence
of these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”) The Court in Graham
further noted that evidence of secondary considerations “might be utilized to
give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” 383 U.S. at 17-18.

ANALYSIS
The Appellant argues that the Examiner erred in rejecting claim 1
since Johnson in view of Lazarus does not teach the claimed step of storing a
first set of probabilities received from a user prior to receiving any input
data from the sales organization related to a status for each of the business
opportunities. (See App. Br. 9-11 and Reply Br. 5-6.)
The Examiner contends that Johnson discloses storing a first set of
probabilities prior to receiving any input data from the sales organization
related to a status for each of the business opportunities since Johnson
discloses that the opportunity status may be present on a user estimated
basis. (Answer 8-9.) The Examiner asserts that because Johnson calculates
the probability of closing a sale and states that the opportunity status may be
presented on a user estimated basis, that Johnson calculates the probability
of closing a sale based on the user estimate. Id.
10
Appeal 2009-1604
Application 11/373,888

Claim 1 recites the step of “storing a first set of probabilities received
from a user representing initial estimated probabilities for achieving the
opportunities prior to receiving any input data from the sales organization
related to a status for each of the business opportunities.” (FF 1.)
We find that Johnson describes calculating the probability of closing a
sale (FF 5 and 8) and that Johnson describes that the opportunity status may
be presented on a system calculated or a user estimated basis (FF 6).
Further, we find that Johnson describes a salesperson inputting data related
to a status of the sale (FF 11). However, even if Johnson teaches the step of
storing a first set of probabilities received from a user representing initial
estimated probabilities, Johnson is silent as to whether the storing of the first
set of probabilities occurs before or after the inputting of the data. (FF 15.)
Further, Lazarus does not teach the claimed step of storing a first set
of probabilities. Also, the Examiner did not provide any reasoning as to why
one of ordinary skill in the art would be led to the claimed step of storing a
first set of probabilities prior to receiving any input data from the sales
organization related to a status for each of the business opportunities, other
than, stating that Johnson described this limitation.
Therefore, we hold that the Appellant has shown that the Examiner
erred for failing to make a prima facie showing of obviousness in rejecting
claims 1-8 under 35 U.S.C. § 103(a) as being unpatentable over Johnson in
view of Lazarus. Accordingly, the rejection of claims 1-8 is reversed.

11
Appeal 2009-1604
Application 11/373,888

CONCLUSIONS OF LAW
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 1-8 under 35 U.S.C. § 103(a) as unpatentable over Johnson
in view of Lazarus.

DECISION
The decision of the Examiner to reject claims 1-8 is reversed.

REVERSED

12
Appeal 2009-1604
Application 11/373,888

LV:

SHUMAKER & SIEFFERT, P. A.
1625 RADIO DRIVE
SUITE 300
WOODBURY, MN 55125
13