Ex Parte Alexin et al

Patent Trial and Appeal Board

Sep 27, 2013

11689058 (P.T.A.B. Sep. 27, 2013)

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.
11/689,058 03/21/2007 Barry J. Alexin 90040-109617 1204
44200 7590 09/27/2013
HONIGMAN MILLER SCHWARTZ & COHN LLP
350 East Michigan Avenue
Suite 300
Kalamazoo, MI 49007-3800
EXAMINER
TIGHE, BRENDAN P
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
09/27/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BARRY J. ALEXIN, THOMAS A. SMITH, SCOT A. BOWMAN,
CHARLES J. KNOTT and THOMAS G. WEBB
____________

Appeal 2011-011233
Application 11/689,058
Technology Center 3600
____________

Before ANNETTE R. REIMERS, RICHARD E. RICE and
CARL M. DeFRANCO, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/689,058

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STATEMENT OF THE CASE
Barry J. Alexin et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims
1, 2 and 4 as unpatentable over Burnett (US 6,092,973; iss. Jul. 25, 2000)
and Boiven (US 5,421,689; iss. Jun. 6, 1995); (2) claims 3, 6 and 7 as
unpatentable over Burnett, Boiven and Takeda1 (JP 11-010117 A2;
pub. Jan. 19, 1999); and (3) claim 8 as unpatentable over Burnett, Boiven,
Takeda and Stercho (US 6,801,563 B2; iss. Oct. 5, 2004). Claims 9-15 have
been withdrawn. Claim 5 has been canceled. We have jurisdiction under 35
U.S.C. § 6(b). We REVERSE.

THE INVENTION
Appellants’ invention “relates in general to a method and system for
preparing a recyclable material, and, in particular, to a method and system
for preparing a recyclable material including metal.” Spec. 1, para. [0001];
figs. 1A-1C.
Claims 1 and 6, the independent claims, are illustrative of the claimed
invention and are reproduced below:
1. A method for preparing material, comprising the
steps of:
providing a transport vehicle including
a horizontal ejector and
a basin that at least partially defines a basin
opening, wherein the horizontal ejector engages at least
one of a first material and a second material disposed in
the basin;

1 We derive our understanding of this reference from the translation
provided by Appellants, filed November 19, 2010. All references to the text
of this document are to portions of the translation.
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loading the first material into the basin proximate
the horizontal ejector;
loading the second material into the basin
proximate the basin opening; and
without changing a vertical orientation of the
basin, evacuating both of the first material and the second
material from the basin by
actuating the horizontal ejector for causing
horizontal stroke movement of the horizontal ejector
from a retracted position toward a deployed position for
horizontally ejecting at least a portion the second
material through the basin opening before any of the first
material is ejected in response to the horizontal stroke
movement of the horizontal ejector and then
subsequently
horizontally ejecting the first material through the
basin opening in response to the horizontal stroke
movement of the horizontal ejector.

6. A method for transferring recyclable material,
comprising the steps of:
providing a cavity for receiving material, wherein
the cavity is defined by a bed of a rear-eject, horizontal
discharge vehicle including a ram disposed in the cavity,
wherein the cavity includes an opening for ejecting said
material;
providing the material into said cavity, wherein the
material includes
metal shred that is provided proximate said
opening, and
metal scrap provided proximate said metal shred
and away from said opening;
horizontally and rearwardly ejecting said material
into a receiving basin without changing a vertical
position of said cavity; and
providing a cushioning-effect for said metal scrap
proximate a bottom surface of said receiving basin,
wherein said cushioning-effect is provided by said metal
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shred that is first ejected through said opening by said
ram prior to the ejection of said metal scrap by said ram.

ANALYSIS
Obviousness over Burnett and Boiven - Claims 1, 2 and 4
Independent claim 1 recites a method for preparing material, including
the steps of “loading [a] first material into the basin proximate the horizontal
ejector” and “loading [a] second material into the basin proximate the basin
opening.” Br., Clms. App’x. The Examiner finds that Burnett discloses the
method of claim 1 except for the steps of “loading a second material into the
basin proximate the opening and evacuating both the first and second
material from the basin; horizontally ejecting at least a portion of the second
material through the basin opening before any of the first material is
ejected.” Ans. 4. The Examiner further finds that Boiven discloses “loading
a first material (Fig. 6c, Material in section 92) proximate the ejector and a
second material (Fig. 6c, Material in section 90) into the basin proximate the
opening and evacuating both the first (Fig. 6c, Material in section 92) and
second material from the basin.” Id. The Examiner concludes that it would
have been obvious “to load a first material proximate the ejector and a
second material proximate the proximate the [sic] opening in the apparatus
of Burnett as taught by Boiven in order to eject different materials.” Id.
Appellants contend that Boiven fails to “disclose[] horizontally
ejecting two materials that were earlier loaded in a pre-defined orientation
within the basin.” Br. 14. Appellants further contend that “when looking to
Boiven’s disclosure . . . Boiven makes no teaching or suggestion of loading
two materials in an [sic] pre-defined fashion.” Id. at 15. We agree.
Boiven discloses “a roof provided with a longitudinal opening at
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sidewalk side, the opening extending generally from fore end to aft end, the
roof opening adapted for loading of the container.” Boiven, col. 2, ll. 15-18.
Boiven further discloses
[t]he lateral charging bucket 24 includes a
manually placed partition 26 which limits the
spread of two classes of refuse, i.e. one class of
generally combustible and paper base materials
towards the back 34 and another class of plastic,
metal and glass towards the front 36. The container
is charged from the top 41 on the side 40 . . . FIG.
2. The container is provided with a fore end 46 and
aft end 44, a right side 40, a left side 42 and a floor
43.
FIGS. 2a-2b illustrate views from the back
of the container and illustrate the principle of
charging refuse into the interior of the container.
Refuse are loaded into the lateral bucket 24 which
is found on the right side of the vehicle. When the
bucket is full, the operator commands the
extension of the hydraulic cylinder which pivots
the roof cover 54 towards the left side 42. The
roof cover, by means of a lever 56 fixed at its
inferior end drives upwardly a guide 58 which is
fixed on the lateral bucket 24 by means of a pivot.
The movement of the guide is channeled by rail
60. When the guide reaches the end of the course,
the lateral bucket 24 finds itself in a position and at
an angle such that the refuse are dumped
longitudinally in the middle of the container 22 . . .
Fig. 1. . . causing thus a better distribution
lengthwise in the interior of the container.
Boiven, col. 3, ll. 21-45; figs. 1, 2A, 2B. Based on Boiven’s disclosure, the
materials of compartments 90, 92 are loaded into the container 22 on the
right side 40 at the top 41 through the opening in the roof cover 54 that
extends from fore end 46 to aft end 44. Boiven fails to disclose that a first
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material in compartment 92 is loaded into the basin proximate an ejector and
that a second material in compartment 90 is loaded into the basin proximate
the opening, as suggested by the Examiner. See Ans. 4. In addition, the
Examiner does not articulate sufficient technical reasoning to establish a
reasonable basis for belief that a first material in compartment 92 of Boiven
is necessarily loaded into the basin proximate an ejector and that a second
material in compartment 90 of Boiven is necessarily loaded into the basin
proximate the opening. See Ans. 9. Hence, the Examiner has failed to
establish by a preponderance of the evidence that Boiven discloses the
method steps of “loading [a] first material into the basin proximate the
horizontal ejector” and “loading [a] second material into the basin proximate
the basin opening.” Accordingly, the Examiner’s rejection of independent
claim 1 and its respective dependent claims 2 and 4 as unpatentable over
Burnett and Boiven cannot be sustained.
Obviousness over Burnett, Boiven and Takeda - Claims 6 and 7
Independent claim 6 recites a method for transferring recyclable
material, including the step of “providing a cushioning-effect for said metal
scrap proximate a bottom surface of said receiving basin, wherein said
cushioning-effect is provided by said metal shred that is first ejected
through said opening by said ram prior to the ejection of said metal scrap by
said ram.” Br., Clms. App’x. The Examiner finds that the combined
teachings of Burnett and Takeda disclose the method of claim 6 except for
“metal shred ejected through the opening by the ram prior to the ejection of
the metal scrap by the ram.” Ans. 7. The Examiner further finds that
Boiven discloses “a first material proximate the opening and a different
material provided proximate the first material and away from the opening.”
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Id. The Examiner concludes that it would have been obvious “to separate
the material of Burnett/Takeda so that metal shred is ejected prior to metal
scrap as taught by Boiven in order to eject different materials.” Ans. 7. In
addition, the Examiner finds that the combination of Burnett, Takeda and
Boiven discloses “the cushioning effect because the lighter metal shred
would be discharged prior to the heavier metal scrap.” Id. at 11.
Appellants argue that “claim 6 is directed to a pre-defined loading
and subsequent ejecting of material in order to permit a second material
to cushion a first material when both materials are ejected.” Br. 19.
Appellants further argue that “none of Burnett, Takedo [sic] and Boiven
teach, suggest or disclose the claimed ‘providing a cushioning-effect,’”
as required by the claims. Id.
We acknowledge that Boiven discloses a first lighter material in
compartment 90 proximate the opening provided at exit door 30 and a
second heavier material in compartment 92 provided proximate the first
lighter material in compartment 90 and away from the opening provided at
exit door 30, as suggested by the Examiner. See Ans. 7, 11-12; Boiven, col.
3, ll. 21-26; figs. 1, 7A, 7B, 8. However, as pointed out by Appellants, “[a]
first class of garbage (i.e., paper) in the rear compaction compartment (90)
[of Boiven] is emptied at a first unloading site” and then “the vehicle is
moved to a second unloading site where [a] second class of material garbage
(i.e., plastic, metal and glass) in the forward compaction compartment (92) is
unloaded.” Br. 9-10; see also id. at 19; Boiven, col. 3, ll. 21-26, col. 4,
ll. 62-64. In other words, based on Boiven’s disclosure, although the lighter
material would be discharged prior to the heavier material, as suggested by
the Examiner, because the lighter material is unloaded at one site and the
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heavier material is unloaded at a different site, as pointed out by Appellants,
the lighter material could not provide a cushioning-effect for the heavier
material. As such, Boiven combined with Burnett and Takeda fails to
disclose the limitation of “providing a cushioning-effect for said metal scrap
proximate a bottom surface of said receiving basin, wherein said cushioning-
effect is provided by said metal shred that is first ejected through said
opening by said ram prior to the ejection of said metal scrap by said ram,” as
required by claim 6. Accordingly, the Examiner’s rejection of independent
claim 6 and its respective dependent claim 7 as unpatentable over Burnett,
Boiven and Takeda cannot be sustained.
Claim 3
The Examiner’s rejection of dependent claim 3 over Burnett, Boiven
and Takeda (see Ans. 5-6) is based on the same unsupported findings
discussed supra with respect to independent claim 1. For the same reasons,
we do not sustain the Examiner’s rejection of dependent claim 3 as
unpatentable over Burnett, Boiven and Takeda.
Obviousness over Burnett, Boiven, Takeda and Stercho - Claim 8
The Examiner’s rejection of dependent claim 8 over Burnett, Boiven,
Takeda and Stercho (see Ans. 7-8) is based on the same unsupported
findings discussed supra with respect to independent claim 6. For the same
reasons, we do not sustain the Examiner’s rejection of dependent claim 8 as
unpatentable over Burnett, Boiven, Takeda and Stercho.

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DECISION
We REVERSE the decision of the Examiner to reject claims 1-4 and
6-8.

REVERSED

mls