Ex Parte WylieDownload PDFBoard of Patent Appeals and InterferencesJul 19, 201009971908 (B.P.A.I. Jul. 19, 2010) Copy Citation 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 Copy with citationCopy as parenthetical citation