Appeal 2006-3387
Application 09/385,489
consideration is “long-felt but unsolved need,” not long-felt need in isolation. See
Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). Any long-
felt need to independently audit trade promotions was satisfied by the prior art.
Thus, the secondary considerations present in the instant case are not sufficient to
overcome the strong case for obviousness based on the prior art.
The Windish Declaration also asserts a long-felt need for an independent
third party to verify the agreed-upon contract terms of the trade promotion and to
settle the account between the manufacturer and the retailer. (Windish Decl. ¶ 29,
36). Although Jones does not calculate the total amount owed based on the deal
terms, it is our understanding that the payment owed under the claimed invention is
based on the benchmark of the total promoted products purchased during the trade
promotion. As such, if the third party audit system in Jones provides the
manufacturer with an independent number of promoted products sold, any alleged
long-felt need for settlement of the account between the manufacturer and retailer
has been substantially met as long as the manufacturer and the retailer are using the
same deal sheet to calculate the total amount owed. The Windish Declaration
states that prior to the present invention there was no unified or integrated
communication or verification of the agreed upon contract terms of the trade
promotion between the manufacturer and the retailer (Windish Decl. ¶ 29). We
find this difficult to believe with the sophistication of telecommunications devices
that were at the disposal of the parties at the time of the invention. All that would
be required is for the manufacturer to fax the final deal sheet to the retailer listing
the agreed-upon terms of the trade promotion contract. See Windish Decl. ¶ 27
24
Page: Previous 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 Next
Last modified: September 9, 2013