Ex Parte Santos et al - Page 19



                Appeal No. 2006-1817                                                                 Page 19                          
                Application No. 09/851,514                                                                                               

                        The appellants argue that Harhen is not directed to marketing promotion                                          
                campaigns to customers and thus there is no motivation or suggestion to combine                                          
                Harhen with Gerace.  (Appellants’ Reply Brief, p. 5.)  The appellants further argue                                      
                that Harhen does not teach or suggest engines that determine trade-offs or balance                                       
                factors in a contradiction of management information.  (Appellants’ Reply Brief, p.                                      
                5.)                                                                                                                      
                        We sustain the examiner’s rejection.  We find that Harhen discloses an                                           
                efficiency frontier engine that recognizes inconsistencies in business objectives and                                    
                determines a trade-off based on a hierarchy.  As found by the examiner on pages                                          
                29-30 of the Answer, Harhen teaches that a user can create a model of an enterprise                                      
                by declaring and instantiating objects and assigning attributes and values to those                                      
                objects. The method of Harhen provides for a categorization hierarchy of objects.                                        
                (Harhen, col. 4, line 50 – col. 5, line 5.)  This hierarchy allows Harhen to determine                                   
                trade-offs between the objects when using the business enterprise model to                                               
                determine its final hypothesis and projection values for strategic decision making.                                      
                (Harhen, col. 6, lines 44-56.)                                                                                           
                        As such, we hold that a person of ordinary skill in the art at the time of the                                   
                invention, possessed with the understandings and knowledge reflected in the prior                                        
                art, and motivated by the general problem facing the inventor, would have been led                                       
                to apply the teachings of Harhen to the system and method Gerace in view of                                              
                Deaton to make the combination recited in claim 16.                                                                      









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