ecoATM, LLC

Patent Trials and Appeals Board

Jun 4, 2021

2021000864 (P.T.A.B. Jun. 4, 2021)

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.
14/967,183 12/11/2015 John Beane 111220-8048.US00 5387
25096 7590 06/04/2021
PERKINS COIE LLP - SEA General
PATENT-SEA
P.O. BOX 1247
SEATTLE, WA 98111-1247
EXAMINER
MINCARELLI, JAN P
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
06/04/2021 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 JOHN BEANE and BABAK FORUTANPOUR
__________________

Appeal 2021-000864
Application 14/967,183
Technology Center 3600
____________________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 3–9 and 21–24, which are all of the pending
claims.2 See Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies ecoATM, LLC as the real party in interest. Appeal Br. 2.
2 Claims 1, 2, 10–18, and 20 are cancelled. Appeal Br. 2. The application as
originally filed did not include claim 19. Application, filed Dec. 11, 2015.
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CLAIMED SUBJECT MATTER
Claims 3, 7, and 22 are independent. Representative claim 3 recites:
3. A system for recycling electronic devices, the
system comprising:
a handheld evaluator input device comprising:
a user interface configured to receive input associated
with an electronic device;
a first processor operably coupled to the user interface;
and
a camera operably coupled to the first processor;
an evaluator hub device in communication with the evaluator
input device, the evaluator hub device comprising:
a wired electrical connector and/or a wireless transceiver
configured to connect to the electronic device; and
a second processor operably coupled to the wired
electrical connector and/or the wireless transceiver,
the second processor configured to:
receive instructions from the evaluator input
device to inspect the electronic device; and
in response to the instructions, inspect the
electronic device when connected to the
electronic device via the wired electrical
connector and/or the wireless transceiver;
and
a remote evaluation server in communication with the evaluator
hub device, wherein the first processor is configured to
receive images and/or video of the electronic device
captured via the camera and transmit the images and/or
video to the remote evaluation server, and wherein the
remote evaluation server comprises a third processor
configured to:
receive inspection data for the electronic device from the
evaluator hub device;
cause the images and/or video of the electronic device
captured via the camera to be displayed to a
remote evaluator;
receive a grade from the remote evaluator based on the
images and/or video of the electronic device; and
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determine the compensation value for the electronic
device based at least in part on the inspection data
and the grade of the electronic device.
Appeal Br. 17–18 (Claims App.).
REJECTIONS
Claims 3–9 and 22–24 are rejected under 35 U.S.C. § 103 as
unpatentable over Graffia3 and Edmondson.4
Claim 21 is rejected under 35 U.S.C. § 103 as unpatentable over
Graffia, Edmondson, and Bowles.5
ANALYSIS
Claims 3–9 and 22–24
Rejected over Graffia and Edmondson
Regarding claim 3, the Examiner finds that Graffia teaches a system,
substantially as claimed, comprising a handheld evaluator (e.g., a tablet) that
includes a camera to image a recycled electronic device and a processor to
communicate with an evaluator hub device (base unit 240), which, in turn,
communicates with a remote evaluation server. Non-Final Act. 4–5. The
Examiner finds that Graffia does not teach the processor of the handheld
evaluator receiving and transmitting images and/or video of the recycled
electronic device to the remote evaluation server for display to a remote
evaluator for determining a compensation value. Id. at 5–6. The Examiner
finds that Edmondson teaches a system that allows a store clerk to upload
photographs of a returned device for a remote operator to assess the physical
condition of the device and its compensation value. Id. at 6.

3 US 2015/0356637 A1, published December 10, 2015 (“Graffia”).
4 US 2015/0206200 A1, published July 23, 2015 (“Edmondson”).
5 US 2010/0169231 A1, published July 1, 2010 (“Bowles”).
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The Examiner determines that it would have been obvious to apply
this known technique of imaging a mobile device and uploading the images
for evaluation by remote evaluator to the system of Graffia because a remote
evaluator could assess or verify the physical condition of the mobile device
such as the condition of the screen by the camera imaging. Id. at 6–7. The
Examiner finds that all of the claimed elements are known in the prior art
such that the rejection combines the elements by known methods with no
change to their respective functions to yield predictable results. Id. at 7.
Appellant argues that it would not have been obvious to combine the
teachings of Graffia and Edmondson. Appeal Br. 9–12. Appellant argues
that modifying Graffia as the Examiner proposes changes the principle of
operation of Graffia in which a clerk checks information about an electronic
device using categories and images of example conditions sent to the clerk
by a server. Id. at 10–11. Appellant asserts that Graffia does not capture
images and/or video of an electronic device by using a camera of a clerk’s
handheld evaluator input device to send to a remote evaluation server for
display to a remote evaluator as claimed. Id. at 11. Appellant argues that
having the clerk capture and send images of the electronic device to a remote
evaluator would be a costly redundancy with no benefit whatsoever because
the clerk in Graffia already is viewing and evaluating the electronic device
live and in person. Id. at 11–12.
The Examiner responds that Graffia and Edmondson use a clerk to
interact with a remote server to provide evaluations of an electronic device,
and Edmondson, similar to Graffia, allows the clerk to upload subjective or
objective indicia of value with photographs so a remote operator can assess
and verify the physical condition of the returned device. Ans. 4.
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Appellant counters that the Examiner fails to support the assertion that
the remove evaluator has more expertise than a store clerk in evaluating the
condition of the mobile device or that the retail station clerk is not proficient
in evaluating the condition of the mobile device to appraise its value. Reply
Br. 3. Appellant again argues that the system of Graffia sends images to the
clerk from the remote server to aid in visually assessing the condition of the
electronic device so modifying Graffia to require the clerk to capture images
of the device and send those images back to the remote evaluator would be
entirely redundant and provide no benefit as the clerk would perform a first
evaluation and the remote evaluator would perform a second evaluation of
the device adding unnecessary cost and complication. Id. at 3 –4.
As an initial matter, we are not persuaded that the Examiner proposes
to change the principle of operation of Graffia as Appellant alleges. To the
contrary, the Examiner proposes to enhance the ability of Graffia’s system to
value an electronic device presented to a clerk at a retail store. The proposed
modification does not change the ability of Graffia’s system to communicate
with a local clerk to provide information to guide the clerk in evaluating the
condition of an electronic device, or receive information from the clerk. See
Non-Final Act. 4–7. Graffia’s remote server provides clerks with categories
of information to value electronic device such as descriptions of conditions,
images of example conditions, links to example conditions, and pricing for
various conditions. Graffia ¶ 53 (cited in Non-Final Act. 5). Graffia teaches
that clerks require technical assistance and guidance to help them evaluate
the condition and value of electronic devices. Guidance software generates
information to aid the clerk in processing a device, and a station can provide
technical information for a particular device. See id. ¶¶ 12, 44; Ans. 4.
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In line with these teachings of Graffia, the Examiner proposes to add
the remote evaluation capability of Edmondson as a known technique used
in a similar electronic device valuation system to enhance the operation of
Graffia’s system for similar predictable benefits/results. Non-Final Act. 6–
7. Edmondson allows a store clerk to upload subjective or objective indicia
and relative value weightings of the residual value of a mobile device to a
store server 144 for a remote evaluator to assess and verify. See Edmondson
¶ 37. This uploaded information can include a photograph of the electronic
device so the remote operator can assess and verify the physical condition of
a mobile device in addition to the store clerk’s indicia and weightings. Id.
In Edmondson, a remote operator can provide technical expertise and
assessments beyond what the store clerk can provide. The remote operator’s
role is not redundant with the role of the clerk. The remote operator assesses
and verifies the physical condition of the mobile device providing a form of
quality control to the subjective or objective indicia and weightings provided
by the store clerk. Id. Like Graffia, Edmondson thus teaches that a remote
evaluator (like the remote server in Graffia) provides technical expertise and
valuation skills that supplement and enhance the evaluation provided by a
local store clerk. The remote operator assesses and verifies the store clerk’s
evaluation and the information that the store clerk provides. Id.; see Ans. 5.
The Examiner reasonably determines that a skilled artisan would have
been motivated by Edmondson’s teachings of a remote evaluator who works
with a store clerk to assess and verify the condition of electronic devices as
input by the store clerk to provide this capability to Graffia. Thus, Graffia’s
modified system similarly would allow a store clerk to upload an image of a
device to a remote operator for assessment and verification. Ans. 4–5.
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The Examiner’s reason for modifying Graffia’s system based on the
teachings of Edmondson is supported by rational underpinnings based on the
express teachings of both references that local store clerks should receive
technical assistance and guidance in evaluating the condition and value of an
electronic device. A skilled artisan would understand that a remote operator
evaluation enhances the valuation system of Graffia similarly. Appellant’s
attorney argument that the remote operator of Edmondson would be a costly
redundancy with no benefit in the system of Graffia is not supported by the
record evidence and is contrary to the teachings of Graffia and Edmondson.
Both Graffia and Edmondson provide technical guidance and assistance to a
clerk. Graffia ¶¶ 12, 42, 44, 53; Edmondson ¶ 37. The Examiner proposes
to improve Graffia’s system by providing a remote operator to assess and
verify the clerk’s evaluation. Thus, the clerk and remote operator perform
distinct, complementary roles in valuing an electronic device.
Because the Examiner’s reason for combining Edmondson’s teachings
with those of Graffia is supported by the express teachings of the references,
rather than Appellant’s Specification, the Examiner’s reasoning is supported
by a rational underpinning rather than impermissible hindsight. In re Cree,
Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (holding that the appellant’s
hindsight argument was addressed by showing that a proper motivation to
combine the references in fact existed); see also In re Berg, 320 F.3d 1310,
1315 (Fed. Cir. 2003) (as persons of scientific competence in their fields,
examiners can make findings as to the meaning of prior art references to
skilled artisans and the motivation provided by such references to skilled
artisans to support a prima facie determination of obviousness).
Accordingly, we sustain the rejection of claim 3.
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Independent Claims 7 and 22
The Examiner makes similar findings and determinations that it would
have been obvious to combine the teachings of Graffia and Edmondson to
render obvious the similar limitations of independent claims 7 and 22. Non-
Final Act. 9–12, 13–16. Appellant argues against the combination for the
same reasons presented for claim 3, namely, that the modification would be
redundant and without any benefit. Appeal Br. 13–14. These arguments are
not persuasive for the same reasons that were discussed above for claim 3.
Accordingly, we sustain the rejection of independent claims 7 and 22.
Dependent claims 4–6, 8, 9, 23, and 24
Appellant argues the patentability of claims 4–6, 8, 9, and 24 because
they depend from one of independent claims 3, 7, and 22. Appeal Br. 14–
15. Because we sustain the rejection of claims 3, 7, and 22, these arguments
are not persuasive. With respect to claim 4, which inspects the images and
video of the electronic device for defects with machine vision, Graffia and
Edmondson use machine or electronic imaging to inspect the condition of
electronic devices. Non-Final Act. 8; Graffia ¶¶ 42, 44; Edmondson ¶ 63.
We agree that it would have been obvious to inspect electronic device
images at the remote evaluator’s location with machine vision to improve
the assessment and verification of the condition and value of the device. See
Non-Final Act. 8. Appellant’s argument that it would not have been obvious
to inspect images of electronic devices remotely with machine vision when a
clerk performs an in-person, visual inspection is not persuasive for similar
reasons as for claim 3. Using machine vision improves the assessment and
verification of the condition of the device and assists the remote operator.
Accordingly, we sustain the rejection of claims 4–6, 8, 9, and 24.
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Claim 21
Rejected over Graffia, Edmondson, and Bowles
Appellant argues the patentability of claim 21 because it depends from
claim 22 and recites additional features. Appeal Br. 15. Because we sustain
the rejection of claim 22, this argument is not persuasive. See also 37 C.F.R.
§ 41.37(c)(1)(iv) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board
reasonably interpreted 37 C.F.R. § 41.37(c)(1)(vii) (the predecessor to
§ 41.37(c)(1)(iv)) to require “more substantive arguments in an appeal brief
than a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.”).
Accordingly, we sustain the rejection of claim 21.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§  
Reference(s)/
Basis
Affirmed Reversed
3–9, 22–24 103 Graffia, Edmondson 3–9, 22–24
21 103 Graffia, Edmondson,
Bowles
21
Overall
Outcome
3–9, 21–24
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED