Ex Parte Mujtaba et al

Board of Patent Appeals and Interferences

Nov 22, 2010

10023960 (B.P.A.I. Nov. 22, 2010)

The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHAHID MUJTABA, CIPRIANO A. SANTOS,
DIRK M. BEYER, and ALEX XIN ZANG
____________

Appeal 2009-009723
Application 10/023,960
Technology Center 3600
____________

Before, ANTON W. FETTING, JOSEPH A. FISCHETTI and
BIBHU R. MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-009723
Application 10/023,960

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-2, 5-17, 20-26 and 29-35. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants claim a system and method for an optimal integrated
action plan for procurement, manufacturing, and marketing.
(Specification 1: 7-9).
Claim 25, reproduced below, is representative of the subject matter on
appeal.
25. A computer-usable medium having computer-
readable program code embodied therein for
causing a computer system to perform a method
for defining an optimal end of product life
integrated action plan for procurement,
manufacturing, and marketing comprising:
a) accessing end of product life materials planning
parameters;
b) accessing end of product life pricing
parameters; and
c) evaluating said end of product life materials
planning parameters and said end of product life
pricing parameters in conjunction to define said
integrated action plan, wherein said integrated
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Application 10/023,960

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action plan is an end of product life integrated
action plan.

DISPOSITION OF THE APPEAL
The Examiner entered a new ground of rejection in the Examiner’s
Answer against claims 1-2, 5-11 under 35 U.S.C. § 101 as being directed to
nonstatutory subject matter. (Ans. 3-4). The Examiner properly gave notice
of the new ground of rejection (Ans. 3) and the Technology Center Director
approved it (Ans. 14). As the Answer indicated, the Appellants were
required to respond to the new ground within two months in either of two
ways: 1) reopen prosecution (see 37 C.F.R. § 41.39(a)(2)(b)(1)); or 2)
maintain the appeal by filing a reply brief as set forth in 37 C.F.R. § 41.41
(see 37 CFR 41.39(a)(2)(b)(2) ), “to avoid sua sponte dismissal of the appeal
as to the claims subject to the new ground of rejection.” (Ans. 13-14).
According to the record before us, neither option appears to have been
exercised.
Accordingly, the appeal as to claims 1-2, 5-11 subject to the new
ground of rejection under § 101 as being directed to nonstatutory subject
matter stands dismissed.
Upon return of the application to the Examiner, the Examiner should:
(1) cancel claims 1-2, 5-11 subject to the new ground of
rejection and;
(2) notify the Appellants that the appeal as to claims 1-2, 5-11,
subject to the new ground of rejection under §101, as being directed to
nonstatutory subject matter, is dismissed and claims 1-2, 5-11 are
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Application 10/023,960

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cancelled. See Manual of Patent Examining Procedure (MPEP)
§ 1207.03, 8th ed., Rev. 7, Jul. 2008.
Given that the appeal as to claims 1-2, 5-11 stands dismissed, the
rejection before us for review is reduced to as follows:

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Huang US 6, 151, 582 Nov. 21, 2000

Zussman, Eyal, “Planning of Disassembly Systems”, Assemble
Automation, 1995
The following rejection is before us for review.
The Examiner rejected claims 12-17, 20-26 and 29-35 under 35 USC
103(a) as being unpatentable over Huang in view of Zussman.
ISSUE
Did the Examiner err in rejecting claims 12-17, 20-26 and 29-35 on
appeal as being unpatentable under 35 U.S.C. § 103(a) over Huang in view
of Zussman on the grounds that a person with ordinary skill in the art would
understand that Zussman in addressing levels of planning in a recycling
network covering manufacturers and consumers and causing relationships to
be established therebetween, discloses an end of product life integrated
action plan?

Appeal 2009-009723
Application 10/023,960

5
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. We adopt the Examiner findings as set forth in the Answer on
pages 4-9.
2. Zussman addresses two levels of planning: one of which levels is a
recycling network which includes manufacturers and consumers. (Page 20).
3. Zussman discloses that “[m]anufacturers must establish co-
operative relationships with the suppliers, the consumers as well as the
recyclers in order to manage the materials' flow in an environmentally sound
way.” (Page 20).
ANALYSIS
We affirm the rejection of claims 12-17, 20-26 and 29-35.
Initially, we note that the Appellants argue independent claims 12 and
25 together as a group. (Appeal Br. 8). Correspondingly, we select
representative claim 25 to decide the appeal of these claims, remaining claim
12 falling with claim 25.
Appellants argue that “the end of product life integrated action plan is
clearly recited in the Claim preamble and throughout the specification as "an
end of product life integrated action plan for procurement, manufacturing,
and marketing" (emphasis added). (Appeal Br. 9).
We hold differently. The preamble phrase, an optimal end of product
life integrated action plan for procurement, manufacturing, and marketing,
is not sufficiently incorporated into the body of the claims to constitute a
positive limitation for procurement, manufacturing, and marketing.
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Although the preamble recitation for “product life integrated action plan” is
found in the body of the claim, the term “for procurement, manufacturing,
and marketing” is not. We thus read the phrase “for procurement,
manufacturing, and marketing” as an intended use limitation, and not as a
positive limitation.
Appellants next assert that Zusssman “…would not be a proper basis
for the suggested combination since there is no teaching toward end of
product life integrated action plan for procurement, manufacturing, and
marketing. (Appeal Br. 9).
We disagree with Appellants. First, for the reasons discussed supra,
we will not consider the phrase for procurement, manufacturing, and
marketing, a positive limitation of claim 25. Thus, Appellants’ argument to
the deficiency of Zussman as to these features is not persuasive on its face.
However, even if such elements were positively recited, the words
procurement, manufacturing, and marketing are so broadly worded within
the context of the independent claims as to be met by Zussman. That is,
Zussman addresses two levels of planning, one of which is the recycling
network comprising the manufacturers and consumers (FF 2). Additionally,
Zussman discloses marketing via establishing co-operative relationships
with the suppliers, the consumers as well as the recyclers in order to manage
the materials' flow in an environmentally sound way. (FF 3). Thus, we find
that Zussman even within the confines of a disassembly system, discloses: i)
procurement, i.e., the environmentally sound flow of material from suppliers
and consumers, ii) manufacturing incorporated with planning (FF 2), and iii)
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marketing by relationship building between suppliers, the consumers and
recyclers.
Appellants also argue that the combination of Haung and Zussman is
improper because the references teach away from each other in that “the two
concepts, e.g., manufacturing and disassembling, could not be more
contradictory or conflicting.” (Appeal Br. 11). We disagree with Appellants
because an aspect of manufacturing is the proper disposal of by-products left
by the manufacturing process. Such by-products could be disposed of in the
manner proposed by Zussman, and thus Zussman does not actually teach
away from every aspect of all manufacturing facets. See In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994).
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 12-17, 20-
26 and 29-35 under 35 U.S.C. 103(a) as being unpatentable over Huang in
view of Zussman.

DECISION
1. The decision of the Examiner to reject claims 12-17, 20-26 and 29-
35 is AFFIRMED.
2. Upon return of the application to the Examiner, the Examiner
should:
(1) cancel claims 1, 2 and 5-11 subject to the new ground of
rejection and;
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(2) notify the Appellant that the appeal as to claims 1,2 and 5-
11, subject to the new ground of rejection under § 101, as being
directed to nonstatutory subject matter, is dismissed and claims 1,2
and 5-11 are cancelled. See Manual of Patent Examining Procedure
(MPEP) § 1207.03, 8th ed., Rev. 7, Jul. 2008.

AFFIRMED

MP

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