Ex Parte Des Champs

Board of Patent Appeals and Interferences

Oct 18, 2005

09864198 (B.P.A.I. Oct. 18, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte NICHOLAS H. DES CHAMPS
____________
Appeal No. 2005-1936
Application No. 09/864,198
____________
ON BRIEF
____________
Before FRANKFORT, McQUADE and NASE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Nicholas H. Des Champs appeals from the final rejection
(mailed December 23, 2004) of claims 1 through 17, all of the
claims pending in the application.
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THE INVENTION
The invention relates to a scrap reduction procedure.
Representative claim 1 reads as follows:
1. A scrap reduction procedure comprising:
providing a repository for collecting information on
materials, sizes and thicknesses available by first fabrication
parties;
providing a repository for collecting information on
materials, sizes and thickness needs of second user parties;
providing a means for communicating said materials, sizes,
and thicknesses available to said second user parties and said
materials, sizes, and thicknesses needed to said first
fabrication parties to each other;
providing a means for receiving responses to said materials,
sizes, thicknesses available from said first fabrication parties
and said materials, sizes, thicknesses needed by said second user
parties;
communicating said responses to an appropriate said first
party or said second party.
THE REJECTION
Claims 1 through 17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over U.S. Patent Application Publication
2001/0049634 to Stewart in view of Official Notice by the
examiner that it was old and well known in the art at the time of
the invention that selling products that are available and
saleable is a prudent method of reducing scrap.
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Attention is directed to the main and reply briefs (filed
January 24, 2005 and May 9, 2005) and answer (mailed April 18,
2005) for the respective positions of the appellant and examiner
regarding the merits of this rejection.
DISCUSSION
I. The examiner’s rejection
The record in the instant application shows that:
a) the examiner entered the rejection at bar for the first
time in the final rejection;
b) the examiner subsequently conceded that the finality of
this rejection was premature and the result of inadvertent error
(see the advisory action mailed May 24, 2005);
c) the appellant seasonably challenged the Official Notice
by the examiner in the main brief, and then again in the reply
brief; and
d) the examiner did not advance evidentiary support for the
Official Notice in response to the appellant’s challenge as
required by MPEP § 2144.03.
In light of the foregoing, we shall not sustain the standing
35 U.S.C. § 103(a) rejection of claims 1 through 17. In short,
the factual basis proffered to support the rejection is fatally
Appeal No. 2005-1936
Application No. 09/864,198
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flawed due to the examiner’s failure to substantiate the Official
Notice disputed by the appellant.
II. Remand to the examiner
On return of the application to the technology center, the
examiner should reconsider the patentability of the subject
matter recited in claims 1 through 17 in view of Stewart,
considered alone or in conjunction with any other properly
documented prior art, and enter appropriate rejections if such
are warranted. By way of example, and notwithstanding the
appellant’s bald assertions to the contrary, the examiner’s
determination that Stewart teaches, or would have suggested, the
five process steps set forth in independent claim 1 is reasonable
on its face. Moreover, the recitation in the preamble of claim 1
that the claimed process is a “scrap reduction procedure” is
quite broad and arguably finds response in Stewart’s teaching
that the interactive buying and selling method disclosed therein
can be used to dispose of excess inventory (see paragraph 0083)
and scrap products (see paragraph 0093). The appellant’s
position that the preamble requires more appears to rest on an
improper attempt to read limitations from the specification into
the claim.
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SUMMARY
The decision of the examiner to reject claims 1 through 17
is reversed, and the application is remanded to the examiner for
further consideration.
REVERSED AND REMANDED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/ki
Appeal No. 2005-1936
Application No. 09/864,198
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