Ex Parte Wendelberger

Patent Trial and Appeal Board

May 23, 2016

12027582 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/027,582 02/07/2008 James G. Wendelberger
21269 7590 05/23/2016
PEPPER HAMIL TON LLP
500 GRANT STREET
SUITE 5000
PITTSBURGH, PA 15219-2507
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.
51060.00201 5129
EXAMINER
DELI CH, STEPHANIE ZAGARELLA
ART UNIT PAPER NUMBER
3623
MAILDATE DELIVERY MODE
05/23/2016 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 JAMES G. WENDELBERGER
Appeal2014-001923 1
Application 12/027,582
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the final rejection of claims 2-16 and 21-25.
We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to determining a grouping of segments
within a market. Spec. para. 1.
1 The Appellant identifies Urban Science Application, Inc. as the real party
in interest. Appeal Br. 2.
Appeal2014-001923
Application 12/027,582
Claim 21 is illustrative:
21. A system for determining a grouping of segments within
a market, the system comprising:
a computing device; and
a computer-readable storage medium in communication
with the computing device, wherein the computer-readable
storage medium comprises one or more programming
instructions for performing the following:
identifying a plurality of market segments,
securing second choice data comprising an indication
of how many purchasers of a product in a first one of the market
segments indicated that a product in a second one of the market
segments was the purchaser's second choice, wherein the product
in the second one of the market segments was not
purchased by the corresponding purchaser,
forming a bias mitigated square matrix from a square
matrix, wherein the square matrix is populated with the second
choice data, wherein the square matrix comprises rows and
columns associated with the plurality of market segments,
forming a first compressed matrix from the bias
mitigated square matrix,
determining a matrix consistency score for the first
compressed matrix,
forming at least one additional compressed matrix
from the bias mitigated square matrix,
determining a matrix consistency score for each
additional compressed matrix,
determining which of the determined matrix
consistency scores is best; and
providing a grouping of market segments, the
grouping corresponding to the compressed matrix having the
best matrix consistency score.
Claims 2---6, 14--16, and 21-25 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Kumar (US 7,672,865 B2, iss. Mar. 2, 2010), Keil (US
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Appeal2014-001923
Application 12/027,582
2008/0033787 Al, pub. Feb. 7, 2008), Gunyaso (US 2003/0014227 Al, pub.
Jan. 16, 2003), and Hawkinson (US 2007/0100550 Al, pub. May 3, 2007).
Claims 7 and 10-13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kumar, Keil, Gunyaso, Hawkinson, and Pathria (US
2008/0249820 Al, pub. Oct. 9, 2008).
Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kumar, Keil, Gunyaso, Hawkinson, Pathria, and Porikli (US
2007/0133878 Al, pub. June 14, 2007).
We REVERSE.
ANALYSIS
Claims 2-6, 14-16, and 21-25
We are persuaded by Appellant's argument that Hawkinson is not
from the same field of endeavor as the claimed invention, nor pertinent to
the problem of the claimed invention, and as a result the ordinary artisan
would not be motivated to consult Hawkinson, directed to mitigating bias
caused by mechanical vibration, to address issues relating to determining
bias due to a person's choices in making a purchase, as claimed. Appeal Br.
21-24, Reply Br. 19-20.
In order to be considered analogous art, a prior art reference must
either [ 1] be in the field of applicant's endeavor or, if not, then [2] be
reasonably pertinent to the particular problem with which the applicant was
concerned, in order to be relied upon as a basis for rejection of the claimed
invention. See In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). The
Examiner reasons that Hawkinson "is concerned with reducing bias error
which, while being demonstrated in a different field, is still clearly described
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Appeal2014-001923
Application 12/027,582
in Hawkinson and thus is reasonably pertinent to the particular problem
being described in the claimed invention." Answer 45--46.
The Examiner's reasoning is flawed, though, because the claimed
invention is directed to determining a grouping of segments within a market.
Spec. para. 1. The Examiner finds none of Kumar, Keil, or Gunyaso
discloses bias mitigation, and is, thus, relying on Hawkinson for introducing
the initial idea of mitigating bias. Final Act. 15.
Hawkinson is directed to "systems and methods for reducing
vibration-induced bias errors in inertial sensors." Hawkinson, para. 2. As
an initial matter, we note that the claimed invention and Hawkinson appear
to be discussing different types of bias. Specifically, the claimed invention
is directed to "bias" as a subjective choice (Spec. i-f 3), while Hawkinson is
directed to "bias" in the context of "vibration-induced bias shifts"
(Hawkinson, Abstract, para. 16). While we acknowledge that in a
mathematical sense, both types of "bias" may be reduced to a number,
nevertheless, we determine that it is relevant, in an analogous arts analysis,
that the two types of "bias" are dissimilar.
Moreover, different types of "bias" aside, to follow the Examiner's
reasoning to the proffered conclusion, when considering the idea of
mitigating bias when grouping market segments, the ordinary artisan would
have turned to the inertial sensor arts, where Hawkinson is found, because
Hawkinson nevertheless discloses the idea of mitigating bias. We are
unpersuaded the Examiner has set forth adequately the connection between
the two fields of market segment grouping and inertial sensors to arrive at
such a conclusion, and such a connection is not readily apparent from the
disclosures themselves.
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Application 12/027,582
Furthermore, the Examiner has not set forth an analysis sufficient to
show that the claimed invention and Hawkinson are directed to the same
problem. On this record, the Examiner appears to cast too wide a net in
asserting that Hawkinson is analogous art to the claimed invention based
solely on their common disclosure of mitigation bias, because Appellant's
claimed invention and Hawkinson are not in the same field of endeavor, for
the reasons set forth above, and the Examiner has not shown adequately that
Hawkinson is reasonably pertinent to a problem with which Appellant is
concerned. This is especially true given that even if they both speak of
"mitigating bias," the Examiner has not explained adequately how to
account for the different types of "bias" that are mitigated.
Because we are unpersuaded that the ordinary artisan would have
been led to discover and combine Hawkinson with the combination of cited
references, we do not sustain the rejection of claim 21. We also do not
sustain the rejection of independent claims 23 and 25, which include
substantially identical language about bias mitigation, and which were
rejected using the same reasoning. See Final Act. 34--35. We also do not
sustain the rejection of dependent claims 2-6, 14--16, 22, and 24, which
depend from claims 21 and 23, and were rejected under the same rationale.
Claims 7 and 10--13
The Examiner has not established on the record that Pathria
overcomes the shortcomings of Hawkinson set forth above. See Final Act.
35--45. For this reason, we do not sustain the rejection of claims 7 and
10-13 under 35 U.S.C. § 103(a).
5
Appeal2014-001923
Application 12/027,582
Claims 8 and 9
The Examiner has not established on the record that Porikli
overcomes the shortcomings of Hawkinson set forth above. See Final Act.
45-50. For this reason, we do not sustain the rejection of claims 8 and 9
under 35 U.S.C. § 103(a).
DECISION
We REVERSE the rejections of claims 2-16 and 21-25 under
35 U.S.C. § 103(a).
REVERSED
6