Ex Parte Wylie

Board of Patent Appeals and Interferences

Jul 19, 2010

09971908 (B.P.A.I. Jul. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/971,908 10/05/2001 Glen K. Wylie FIS920010230US1/I20-0011 4025
7590 07/19/2010
Philmore H. Colburn II
Cantor Colburn LLP
55 Griffin Road South
Bloomfield, CT 06002
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
07/19/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GLEN K. WYLIE
____________

Appeal 2009-006560
Application 09/971,908
Technology Center 3600
____________

Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL1

1 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.

Appeal 2009-006560
Application 09/971,908

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1 and 3-9. We
have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002).
The claimed invention is directed to a leased parts inventory method
in a manufacturing environment (Spec. 1:3-5). Claim 1, reproduced below,
is further illustrative of the claimed subject matter.
1. A method for allocating inventory
among a plurality of physical locations including a
supplier location, a manufacturing location, and a
customer location during a product life cycle, the
method comprising:
(a) relocating a raw material from the
supplier location to the manufacturing location in
accordance with a first lease agreement between a
supplier of the raw material and a manufacturer
associated with the manufacturing location, the
relocated raw material comprising a first asset
pool;
(b) periodically pulling the raw material
from the first asset pool;
(c) replacing the raw material pulled from
the first asset pool with a raw material of at least
equal quality such that the first asset pool remains
substantially intact as a first set of leased assets;
(d) relocating a finished product from the
manufacturing location to the customer location in
accordance with a second lease agreement between
the manufacturer and a customer of the
manufacturer associated with the customer
location, the relocated finished product comprising
a second asset pool;
(e) periodically pulling finished product
from the second asset pool;
(f) replacing the finished product pulled
from the second asset pool with a finished product
Appeal 2009-006560
Application 09/971,908

3
of at least equal quality such that the second asset
pool remains intact as a second set of leased assets;
and
repeating (a)-(f) during each of a plurality of
time periods in the product life cycle, the product
life cycle comprising a first time period wherein
the finished product is introduced into a market, a
second time period wherein the finished product is
placed into mass production, a third time period
wherein the market is saturated with the finished
product, and a fourth time period wherein the
finished product has reached an end of life stage.
The references of record relied upon by the Examiner as evidence of
obviousness are:
AAR and GE Form Rotables Leasing Joint Venture, PR Newswire, 1-
3 (Sep. 9, 1998) (hereinafter AAR/GE).

U.S. Statement on Lend-Lease Agreement with France,
http://www.jewishvirtuallibrary.org/jsource/ww2/francelend.html (last
visited Mar. 7, 2007) (hereinafter Lend/Lease Agreement).

Claims 1 and 3-9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lend/Lease Agreement in view of AAR/GE.

ISSUE
Did the Examiner err in asserting that a combination of the
Lend/Lease Agreement and the AAR/GE article renders obvious
repeating (a)-(f) during each of a plurality of
time periods in the product life cycle, the product
life cycle comprising a first time period wherein
the finished product is introduced into a market, a
second time period wherein the finished product is
Appeal 2009-006560
Application 09/971,908

4
placed into mass production, a third time period
wherein the market is saturated with the finished
product[,]
as recited in independent claim 1?

ANALYSIS
The Examiner asserts that a combination of the Lend/Lease
Agreement and the AAR/GE article renders obvious “repeating [steps] (a)-
(f) during each of a plurality of time periods in the product life cycle” under
two rationales (Exam’r’s Ans. 9-10, 16-18). Both rationales presume that
the cited references disclose repeating steps (a)-(f).
The first rationale is that the “product life cycle” is non-functional
descriptive (Exam’r’s Ans. 9-10, 16-17). However, independent claim 1
asserts that the method steps must occur during a specific time period where
other explicitly recited conditions are present. See Texas Instruments Inc. v.
United States Int'l Trade Comm'n, 988 F.2d 1165, 1171 (Fed. Cir. 1993)
(claim language cannot be mere surplusage; an express limitation cannot be
read out of the claim). In other words, the steps are constrained by timing,
which is functional. Accordingly, we do not agree that the product life cycle
is non-functional descriptive.
The second rationale is that all products necessarily and inherently go
through the recited time periods of the product life cycle (Exam’r’s Ans. 10,
17-18). However, some products may not reach mass production or market
saturation, for example, due to shortages in capital or because they are
poorly marketed. Accordingly, we do not agree that it is necessarily true
that a product will reach all the time periods recited in independent claim 1.
Appeal 2009-006560
Application 09/971,908

5
In view of the foregoing, we will not sustain the Examiner’s rejection.

REVERSED

hh

Philmore H. Colburn II
Cantor Colburn LLP
55 Griffin Road South
Bloomfield, CT 06002