Ex Parte Chalimadugu et al

Patent Trial and Appeal Board

Nov 28, 2012

11491714 (P.T.A.B. Nov. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SUDHAKAR CHALIMADUGU, DAVID F. CHEUNG, RUBY
KENNEDY, YUCHUN LEE, and PATRICK MARTIN
___________

Appeal 2011-012718
Application 11/491,714
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012718
Application 11/491,714

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STATEMENT OF THE CASE
Sudhakar Chalimadugu et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-54. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE. 1

THE INVENTION
Claim 25, reproduced below with added bracketed lettering, is
illustrative of the subject matter on appeal.
25. A computer program product stored on a non-
transitory computer readable medium for
response tracking, comprises instructions for
causing a computer to:
[A] generate a plurality of promotions for a
marketing campaign by executing marketing
campaign software that assigns the plurality of
promotions to one or more contact entities;
[B] receive a plurality of responses from the
one or more contact entities to the plurality of
promotions; and
[C] generate an attribution credit for a
particular promotion at least partly based on a
number of responses that is attributable to the
particular promotion.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 12, 2011) and Reply Brief (“Reply Br.,” filed Aug. 9, 2011),
and the Examiner’s Answer (“Ans.,” mailed Aug. 4, 2011).

Appeal 2011-012718
Application 11/491,714

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Williams
Bibelnieks
US 2002/0147639 A1
US 2003/0208402 A1
Oct. 10, 2002
Nov. 6, 2003

The following rejections are before us for review:
1. Claims 1, 25, and 49 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Bibelnieks.
2. Claims 2-13, 15, 17-24, 26-39, and 41-54 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Bibelnieks.
3. Claims 14, 16, 38, and 40 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bibelnieks and Williams.

ISSUE
The issue is whether the Examiner has established the Bibelnieks
expressly or inherently describes the receiving limitation marked B above
and generating limitation marked C above.

FINDINGS OF FACT
We find that the findings of fact, which appear in the Analysis below,
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).

Appeal 2011-012718
Application 11/491,714

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ANALYSIS
The rejection of claims 1, 25, and 49 under 35 U.S.C. § 102(b) as being
anticipated by Bibelnieks
We are persuaded by the Appellants’ argument that the Examiner has
not established a prima facie showing that Bibelnieks anticipates claim 25.
See Reply Br. 1-5. See also App. Br. 12-22. We agree with the Appellants
that Bibelnieks’ paragraph [0016], cited by the Examiner (Ans. 13-14), fails
to describe claim 25’s limitation marked B and C above. See Reply Br. 1-5.
We fail to see how paragraph [0016]’s description of analyzing customers
based upon historical criteria and analyzing a promotion event’s effect on
other promotion events either inherently or expressly anticipates claim 25’s
limitations B and C. Further, we fail to see how paragraph [0016] describes
“track[ing] historical revenue per customer per promotion,” as the Examiner
asserts (Ans. 13). We note that the Examiner has provided no explanation as
to the inherency of the feature and that the basis of the rejection is
anticipation and not obviousness.
When relying upon the theory of inherency, the examiner must
provide a basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art. See Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990). “If it is necessary to reach beyond the boundaries
of a single reference to provide missing disclosure of the claimed invention,
the proper ground is not § 102 anticipation, but § 103 obviousness.” Scripps
Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1577 (Fed.
Cir. 1991).
Appeal 2011-012718
Application 11/491,714

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Claims 1 and 49 recite similar limitations and were likewise rejected.
See Ans. 3-4. Accordingly, the rejection of claims 1, 25, and 49 under 35
U.S.C. § 102(b) as being anticipated by Bibelnieks is reversed.

The rejection of claims 2-13, 15, 17-24, 26-39, and 41-54 under 35 U.S.C. §
103(a) as being unpatentable over Bibelnieks and the rejection of claims 14,
16, 38, and 40 under 35 U.S.C. § 103(a) as being unpatentable over
Bibelnieks and Williams
These rejections are directed to claims dependent on claims 1, 25, and
49, whose rejection we have reversed above. For the same reasons, we will
not sustain the rejections of claims 2-24, 26-48, and 50-54 over the cited
prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
("[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious.").

DECISION
The decision of the Examiner to reject claims 1-54 is reversed.

REVERSED

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