Appeal No. 2006-1817 Page 5
Application No. 09/851,514
Third, the appellants contend that the examiner has failed to establish a
prima facie case of obviousness, because new elements and significant
substitutions would have to be made to Gerace and/or Harhen to arrive at the
claimed recitations, and “this combination would not yield a reasonable
expectation of success for automatically detecting contradictions of management
information, automatically identifying resolutions to the contradictions, and
implementing the resolutions in the campaign plan.” (Appellants’ Brief, p. 14.)1
II. Graham Factors
To determine whether a prima facie case of obviousness has been
established, we are guided by the factors set forth in Graham v. John Deere Co.,
383 U.S. 1, 17 (1966), viz., (1) the scope and content of the prior art; (2) the
differences between the prior art and the claims at issue; and (3) the level of
ordinary skill in the art.2
A. Scope and content of the prior art
Gerace relates generally to a computer-implemented method and system that
determines allocation of promotions among prospective customers and then
displays targeted advertising and promotions3 to the customer based on the
1 Appellants provide no evidence in support of their contention of a lack of reasonable
expectation of success. We find that the marketing campaign planning computer implementation
field is a predictable art, and we see no basis for lacking a reasonable expectation of success
absent some evidentiary showing by the appellants.
2 Although Graham also suggests analysis of secondary considerations such as commercial
success, long felt but unsolved needs, failure of others, etc., the appellants presented no such
evidence of secondary considerations for the Board’s consideration.
3 Although our discussion of Gerace focuses mainly on advertising, which is a form of
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