ecoATM, LLC

Patent Trials and Appeals Board

Apr 15, 2020

15630460 - (D) (P.T.A.B. Apr. 15, 2020)

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.
15/630,460 06/22/2017 Michael Librizzi 111220-8004.US02 9101
25096 7590 04/15/2020
PERKINS COIE LLP - SEA General
PATENT-SEA
P.O. BOX 1247
SEATTLE, WA 98111-1247
EXAMINER
MINCARELLI, JAN P
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
04/15/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL LIBRIZZI, MARK VINCENT BOWLES, and
AHRON DUBEN DUHBEN
Appeal 2019-001352
Application 15/630,460
Technology Center 3600
Before LINZY T. McCARTNEY, ADAM J. PYONIN, and
JASON M. REPKO, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 An oral hearing was held on March 19, 2020.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as ecoATM,
LLC. Appeal Br. 2.
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Application 15/630,460

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STATEMENT OF THE CASE
Introduction
The Application is directed to “a kiosk for visually analyzing mobile
phones and providing remuneration to an owner for recycling of the mobile
phone.” Spec. ¶ 38. Claims 1–26 are pending; claims 1 and 14 are
independent. Appeal Br. 14–18. Claim 1 is reproduced below for reference
(emphasis added):
1. A method of operating a kiosk for evaluating and
purchasing a used electronic device, the method comprising:
receiving the electronic device at the kiosk, wherein the
kiosk includes an internal inspection area and an inspection
camera operably associated with the inspection area;
wirelessly causing a screen of the electronic device to
display a known image;
capturing, via the inspection camera, an image of the
screen while the screen displays the known image;
determining whether the electronic device is damaged
based at least partially on the captured image of the screen; and
providing, via the kiosk, compensation m exchange for the
electronic device after determining whether the electronic device
is damaged.
References and Rejections
Claims 1–26 stand rejected under 35 U.S.C. § 112(a) (or pre-AIA 35
U.S.C. § 112, first paragraph3) as failing to reply with the written description
requirement. Final Act. 4.

3 The patentability provisions of the American Inventors Act (“AIA”) took
effect on March 16, 2013. See MPEP § 2159. The present application was
filed afterwards, on June 22, 2017; however, the present application claims
priority to various applications filed prior to the AIA effective date. See Bib
Data Sheet; see also pages 2–4 of Oral Hearing Transcript mailed April 6,
2020. The AIA status of the present application is not raised by Appellant
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Claims 1–26 stand rejected under 35 U.S.C. § 112(b) (or pre-AIA 35
U.S.C. § 112 pre-AIA, second paragraph) as indefinite. Final Act. 8.
Claims 1–10 and 14–23 stand rejected under 35 U.S.C. § 103 (or pre-
AIA 35 U.S.C. §103(a)) as obvious in view of Librizzi (US 2010/0228676
A1; Sept. 9, 2010) and Ino (US 2014/0080550 A1; Mar. 20, 2014). Final
Act. 9.
Claims 11–13 and 24–26 stand rejected under 35 U.S.C. § 103 (or
pre-AIA 35 U.S.C. §103(a)) as obvious in view of Librizzi, Ino, and Cox
(US 2002/0157033 A1; Oct. 24, 2002). Final Act. 9.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We discuss each
of the statutory rejections, in turn.

Written Description
Independent claim 1 recites a method of operating a kiosk interacting
with an electronic device, including “wirelessly causing a screen of the
electronic device to display a known image.” Appeal Br. 14. The Examiner
finds this limitation fails to comply with the written description requirement:
Given that the concept of wirelessly causing a screen of the
electronic device to display a known image is at the core of the

and is acknowledged by the Examiner to not be relevant to the issues on
appeal. See Reply Br. 1–4; Ans. 4 (“the §§ 112(a) and (b) rejections would
stay the same and the prior art relied upon would be the same in the § 103
rejection”). Thus, we do not reach the issue of whether the present
application is governed by AIA or pre-AIA statutes.
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invention, the fact that little in the way of specifics about how
the electronic device is caused to display the known image (e.g.,
the formula or algorithm that calculates the score or
quantification) demonstrates that the Applicants have failed to
reasonably convey possession at the time of the invention.
Applicant’s specification does not demonstrate a generic
invention that achieves the claimed result because there is
inadequate disclosure of species (e.g., different examples that
explain how a device is caused to display a device wirelessly).
Final Act. 6.
Appellant argues “the ‘wirelessly causing’ feature alleged to be
inadequately described in the specification involves routine technology that
was well understood by one of ordinary skill in the art as of the priority date
of the application,” therefore “the requisite level of disclosure needed for
this feature to inform a skilled artisan that the inventors possessed this
feature as part of the claimed invention is low.” Appeal Br. 7. Appellant
contends a “person skilled in the art would also understand based on the
specification and common knowledge that, upon receiving a call, a mobile
phone displays a known image of some type, such as a startup logo of a
carrier.” Id. at 9 (citing Spec. ¶ 86). According to Appellant, “a person
skilled in the art would readily understand that, in one embodiment, the
‘wirelessly causing’ feature of claim[] 1 . . . simply involves calling a
previously determined telephone number of an electronic device under
evaluation such that the electronic device automatically displays a known
image.” Appeal Br. 9.
We are persuaded by Appellant’s arguments. The USPTO has
published guidelines for written description compliance:
[T]he specification must provide a sufficient description of an
invention, not an indication of a result that one might achieve.
The level of detail required to satisfy the written description
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requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant
technology. Information that is well known in the art need not be
described in detail in the specification.
“Examining Computer-Implemented Functional Claim Limitations for
Compliance With 35 U.S.C. 112,” 84 Fed. Reg. 57, 61 (2019). Here, the
relevant technology field of the disputed limitation relates to operating
electronic devices such as wireless phones, and we agree with Appellant that
this field is predictable and well understood by those of skill in the art. See
Appeal Br. 9.
Based on the record before us, we find reasonable Appellant’s
contention that the example provided in the Specification—sending a carrier
startup logo4 to a wireless phone through a wireless telephone call—is
sufficient to show “‘possession by the inventor of how [the claimed
function] is achieved.’” 84 Fed. Reg. at 61 (quoting Vasudevan Software,
Inc. v. MicroStrategy, Inc., 782 F.3d 671, 683 (Fed. Cir. 2015)); see Appeal
Br. 8; Spec ¶ 84 (“[A] start up logo of a carrier . . . . may be sent to the
mobile phone by the kiosk 100 either directly through electrical connection
or wirelessly by telephoning the mobile phone.”). Receiving a phone call
with a wireless phone would be well known to the ordinary artisan, such that
further explanation is not necessary to demonstrate the Appellant had
possession of the claimed wirelessly causing a screen to “display a known
image.” See Appeal Br. 7–9. Accordingly, we disagree with the Examiner

4 We note the Specification differentiates a known image (e.g. the carrier
startup logo) from other displayed imagery including a phone number or a
white screen. See Spec. ¶¶ 84–86.
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that the Specification does not recite a sufficient algorithm or species with
respect to the disputed limitation.
For this reason, we do not sustain the rejection of claim 1 as failing to
comply with the written description requirement.

Indefiniteness
The Examiner finds claim 1’s wireless causing limitation is indefinite:
the entire limitation as one unitary phrase, where the causing of
the device to display the known image is done wirelessly, is what
is not particularly pointed out because the metes and bounds of
what actions this would or could entail is not readily apparent to
one of ordinary skill in the art.
Ans. 13. Particularly, the Examiner finds “the specification fails to disclose
what acts would cause [the claim limitation] to happen” (id.), and “[b]ecause
it is not disclosed how this step occurs (as further explained in the § 112 first
paragraph rejection above), it is also unknown what acts are required or
encompassed in this step.” (Final Act. 8).
Appellant argues the Examiner’s rejection is in error:
the specification does include clear disclosure corresponding to
the ‘wirelessly causing’ feature of claim[] 1 . . . . As discussed
above in the context of the Section 112(a) rejection, the
specification discloses telephoning a mobile phone to cause the
mobile phone to display a startup logo of a carrier for the mobile
phone. This is a clear example of the claimed feature. The fact
that the claimed feature is broader than this example does not
cause any ambiguity. It is axiomatic that claim breadth should
not be confused with indefiniteness.
Appeal Br. 11.
We are persuaded by Appellant’s argument. The Examiner has not
identified “words or phrases whose meaning is unclear.” Ex parte
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McAward, Appeal No. 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug.
25, 2017) (precedential). Instead, the Examiner’s indefiniteness rejection
relies on the same reasoning as applied to the written description rejection.
See, e.g., Ans. 15 (“wondering what acts are comprised in the step.”). As
discussed above, we determine the Specification provides sufficient support
for the disputed limitation. Thus, the Examiner’s findings relate to the
breadth of the claim rather than clarity; however, “a genus claim that covers
multiple species is broad, but is not indefinite because of its breadth, which
is otherwise clear.” Appeal Br. 11 (quoting MPEP § 2173.04). We agree
with Appellant that the Examiner has not shown the disputed limitation is
unclear.
Accordingly, we do not sustain the indefinites rejection of
independent claim 1.

Obviousness
Appellant argues the Examiner’s obviousness rejection of claim 1 is in
error because the Examiner relies on Librizzi, but “Librizzi is not available
as prior art.” Appeal Br. 13. Appellant asserts “the claims at issue are
entitled to the benefit of the priority claim to the application corresponding
to Librizzi,” and “the specification and drawings of the present application
match the specification and drawings of Librizzi.” Id.
The Examiner responds that, “[b]ecause all of the applications to
which the instant application claims priority lack § 112(a) support for that
limitation, the instant application is not entitled to priority back to those
references for Claims 1.” Ans. 15. Specifically with regard to the
obviousness rejection, the Examiner finds “independent [c]laim[] 1 . . .
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recited a limitation of wirelessly causing a screen of the electronic device to
display a known image,” which is “not supported by the specification of
earlier cases such as [Librizzi] (see the § 112(a) rejection and discussion
above).” Id. The Examiner finds, therefore, “the priority date of the instant
application is the filing date of this instant application” and “Librizzi does
qualify as prior art.” Id. at 16.
We are persuaded the Examiner’s obviousness rejection is in error.
“[A] patent application is entitled to the benefit of the filing date of an
earlier filed application only if the disclosure of the earlier application
provides support for the claims of the later application, as required by 35
U.S.C. § 112.” In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). As discussed
above, we agree with Appellant that the Specification provides written
description support for the recited wirelessly causing a screen of the
electronic device to display a known image. See Reply Br. 4; Spec. ¶ 86.
Librizzi provides the same description of the wirelessly causing step.
Compare Librizzi ¶ 53, with Spec. ¶ 86; see also Appeal Br. 13; pages 2, 3
of Oral Hearing Transcript mailed April 6, 2020 (“[W]ith regard to the
particular Librizzi reference . . . this application claims direct priority to it
and has the same specification and figures.”). Thus, we find claim 1 of the
present Application is entitled to the benefit of the filing date of Librizzi,
such that Librizzi does not properly constitute prior art. For this reason, we
do not sustain the Examiner’s obviousness rejection in view of Librizzi.
CONCLUSION
We are persuaded the Examiner errs in rejecting independent claim 1.
Independent claim 14 recites similar limitations. Accordingly, we do not
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sustain the Examiner’s anticipation, written description, or obviousness
rejections of independent claims 1 and 14, or the claims dependent thereon.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–26 112 Written Description 1–26
1–26 112 Indefiniteness 1–26
1–10, 14–23 103 Librizzi, Ino 1–10, 14–23
11–13, 24–
26
103 Librizzi, Ino, Cox 11–13, 24–
26
Overall
Outcome
1–26
REVERSED