Appeal No. 2005-1936
Application No. 09/864,198
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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