Ex Parte Abels et al

Board of Patent Appeals and Interferences

Nov 22, 2010

11103192 (B.P.A.I. Nov. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO.
I EXAMINER I
EPSTEIN, BRIAN M
111103,192 0411 11200.5 Timothy Abels DC-08064 6499
FILING DATE
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
ATTORNEY DOCKET NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
CONFIRMATION NO.
11/24/2010 ELECTRONIC
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte TIMOTHY ABELS and
PEYMAN NAJAFIRAD
Appeal 2010-000854
Application 1 111 03,192
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 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 2010-000854
Application 1 111 03,192
STATEMENT OF THE CASE
Timothy Abels et al. (Appellants) seek our review under 35 U.S.C.
5 134 (2002) of the final rejection of claims 1-20. We have jurisdiction
under 35 U.S.C. 5 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
This invention is "a system and method for information handling
system build-to-order packaging." Specification 1 : 8- 10.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system for packaging a product, the product
having plural components, the components
selected by a user, the system comprising:
an order site having a configuration engine
operable to create a manifest for the product,
the manifest defining one or more
components according to user selections,
and component configuration rules, the
order site further having a packaging engine
operable to define one or more user selected
packaging materials on the manifest;
packaging rules interfaced with the
packaging engine, the packaging rules
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed May 28, 2009) and Reply Brief ("Reply Br.," filed Sep. 30, 2009),
and the Examiner's Answer ("Answer," mailed Aug. 24, 2009).
Appeal 2010-000854
Application 1 111 03,192
defining optional and required packaging
materials ;
a manufacture site having components, the
manufacture site operable to assemble the
components of the manifest into the product;
and
a packaging site having packaging materials,
the packaging site operable to package the
assembled product according to the
packaging materials of the manifest.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability :
Gupta US 5,825,651 Oct. 20, 1998
Bueche US 6,834,269 B1 Dec. 21,2004
Kroening US 6,922,831 B1 Jul. 26, 2005
Christensen US 200210154114 A1 Oct. 24, 2002
Zarovinsky US 200510055283 A1 Mar. 10, 2005
The following rejections are before us for review:
1. Claim 9 is rejected under 35 U.S.C. 5 102(b) as being
anticipated by Christensen.
2. Claims 1-5, 8, 10-15, and 17 are rejected under 35 U.S.C.
5 103(a) as being unpatentable over Christensen and Gupta.
3. Claims 6,7, and 16 are rejected under 35 U.S.C. 5 103(a) as
being unpatentable over Christensen, Gupta, and Zarovinsky.
4. Claim 18 is rejected under 35 U.S.C. 5 103(a) as being
unpatentable over Christensen, Gupta, and Bueche.
Appeal 2010-000854
Application 1 111 03,192
5. Claims 19 and 20 are rejected under 35 U.S.C. $ 103(a) as
being unpatentable over Christensen, Gupta, and Kroening.
6. Claims 9-20 are rejected under 35 U.S.C. $ 101 as being
directed to non-statutory subject matter.
DISPOSITION OF THE APPEAL
The Examiner entered a new ground of rejection in the Examiner's
Answer against claims 9-20 under 35 U.S.C. $ 101 as being directed to
nonstatutory subject matter. Answer 2-4. The Examiner properly gave
notice of the new ground of rejection (Answer 2-4) and the Technology
Center Director approved it. Answer 14. As the Answer indicated (Answer
12-13), the Appellants were required to respond to the new ground of
rejection within two months in either of two ways: 1) reopen prosecution
(see 37 CFR 41.39(a)(2)(b)(l)); or 2) maintain the appeal by filing a reply
brief as set forth in 37 CFR 41.41 (see 37 CFR 41.39(a)(2)(b)(2) ) and
address the rejection, "to avoid sua sponte dismissal of the appeal as to the
claims subject to the new ground of rejection." Answer 12-13. According
to the record before us, neither option appears to have been exercised.
Accordingly, the appeal as to claims 9-20, subject to the new ground
of rejection under 35 U.S.C. $ 101 as being directed to nonstatutory subject
matter stands dismissed.
Upon return of the application to the Examiner, the Examiner should
(1) cancel claims 9-20 subject to the new ground of rejection and (2) notify
the Appellants that the appeal as to claims 9-20, subject to the new ground of
rejection under 35 U.S.C. $101, as being directed to nonstatutory subject
Appeal 2010-000854
Application 1 111 03,192
matter, is dismissed and that claims 9-20 are cancelled. See Manual of
Patent Examining Procedure (MPEP) 5 1207.03, 8th ed., Rev. 7, Jul. 2008.
Given that the appeal as to claims 9-20 stands dismissed, the
rejections before us for review are reduced to as follows:
1. Claims 1-5 and 8 are rejected under 35 U.S.C. 5 103(a) as being
unpatentable over Christensen and Gupta.
2. Claims 6 and 7 are rejected under 35 U.S.C. 5 103(a) as being
unpatentable over Christensen, Gupta, and Zarovinsky.
ISSUE
The issue is whether the Appellants have overcome the rejection of
claim 1 under 35 U.S.C. 5 103(a) as being unpatentable over Christensen
and Gupta.
ANALYSIS
The rejection of claims 1-5 and 8 under 35 U.S. C. § 103(a) as being
unpatentable over Christensen and Gupta.
Claim 1
The Appellants argue:
In addition to the reasons set forth with respect to
Claim 9, Claim 1 is allowable because neither
Christensen nor Gupta discloses "packaging
material" as recited by Claim 1. The Examiner
argues with respect to Claim 9 that address
information and shipping to an address anticipates
"packaging preferences;" however, shipping
address information is not a "packaging material"
as recited in Claim 1.
App. Br. 4.
Appeal 2010-000854
Application 1 111 03,192
With respect to claim 9, the Appellants argue that the Examiner has
unreasonably broadly construed "packaging preferences" to include
receiving shipping address and information as described in Christensen.
App. Br. 3 and Reply Br. 1-2. The Appellants state: "The Examiner's
interpretation that shipping information is a packaging preference would
mean that Applicants wrote Claim 9 to include acknowledged prior art."
App. Br. 3. However, claim 1 does not recite "packaging preferences."
Further, claim 1 recites an apparatus and not a method as claim 9
does. "[Alpparatus claims cover what a device is, not what a device does."
Hewlett-Packard Co. v. Bausch & Lornb Znc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). Claim 1 recites "the order site further having a packaging engine
operable to define one or more user selected packaging materials on the
manifest" and "the packaging site operable to package the assembled
product according to the packaging materials of the manifest." Claim 1
requires a packaging engine that has a structure that is capable of being
operated to define one or more user selected packing materials on the
manifest and a packing site that is capable of being operated to package the
assembled product according the packaging materials of the manifest. See
In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (functional
language does not confer patentability if prior art structure has capability of
functioning in the same manner). Therefore, the issue is whether
Christensen or Gupta teaches a system that has structures that are capable of
being operated to perform these functions
The Appellants do not argue whether or not the systems of
Christensen or Gupta have structures that are capable of performing recited
functions. See App. Br. 3 and Reply Br. 1-2. The Appellants' argument
Appeal 2010-000854
Application 1 111 03,192
with respect to claim 9 is directed to whether Christensen describes a
method step and not to whether Christensen describes the structure required
by claim 1. Id.
Filing a Board appeal does not, unto itself, entitle
an appellant to de novo review of all aspects of a
rejection. If an appellant fails to present
arguments on a particular issue - or, more broadly,
on a particular rejection - the Board will not, as a
general matter, unilaterally review those
uncontested aspects of the rejection. . . Thus, the
Board will generally not reach the merits of any
issues not contested by an appellant.
In re Frye, 94 USPQ2d 1072, 1075 2009-006013 (BPAI
Since the Appellants do not contest whether the systems of
Christensen or Gupta have a structure that is capable of being operated to
perform the recite functions, we shall not reach the merits of this issue.
Accordingly, we find that the Appellants have not overcome the rejection of
claim 1 under 35 U.S.C. 5 103(a) as being unpatentable over Christensen
and Gupta.
Claims 2-5 and 8
The Appellants make no arguments traversing the rejection of claims
2-5 and 8 under 35 U.S.C. 5 103(a) as being unpatentable over Christensen
and Gupta (see App. Br. 3-4 and Reply Br. 1-2) and do not list claims 2-5
and 8 as being appealed in the Status of the Claims section of the Appeal
Brief (App. Br. 2). Since the Appellants do not contest this rejection, we
summarily sustain the rejection of claims 2-5 and 8 under 35 U.S.C. 5 103(a)
as being unpatentable over Christensen and Gupta.
Appeal 2010-000854
Application 1 111 03,192
The rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as being
unpatentable over Christensen, Gupta, and Zarovinsky.
The Appellants make no arguments traversing the rejection of claims
6 and 7 under 35 U.S.C. 5 103(a) as being unpatentable over Christensen,
Gupta, and Zarovinsky (see App. Br. 3-4 and Reply Br. 1-2) and do not list
claims 6 and 7 as being appealed in the Status of Claims section of the
Appeal Brief (App. Br. 2). Since the Appellants do not contest this
rejection, we summarily sustain the rejection of claims 6 and 7 under 35
U.S.C. 5 103(a) as being unpatentable over Christensen, Gupta, and
Zarovinsky .
DECISION
The decision of the Examiner to reject claims 1-8 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2010).
AFFIRMED
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