Ex Parte Forget Shield

Patent Trial and Appeal Board

Sep 29, 2014

10799826 (P.T.A.B. Sep. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIELLE RENEE FORGET SHIELD
____________

Appeal 2010-002774
Application 10/799,826
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Danielle Renee Forget Shield (Appellant) seeks our review under
35 U.S.C. § 134 (2002) of the final rejection of claims 1–23. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
Our prior decision mailed Apr. 30, 2013 (“First PTAB Decision”) has
been vacated by Order of the Federal Circuit (2013-1562; Apr. 16, 2014)
(“Order”). We hereby issue a new decision.
The new decision we are here issuing repeats the sections “THE
INVENTION,” “THE REJECTIONS,” “ISSUES,” “FINDINGS OF FACT,”
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and “ANALYSIS” as originally presented in the now-vacated First Board
Decision and adds a new “SUPPLEMENTAL ANALYSIS” section to
reassesses the obviousness analysis set forth in the “ANALYSIS” section in
light of (a) In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014) with regard to
construing “adapted to” claim limitations and (b) the ORDER with regard to
the Board’s treatment of the “portable unit” as claimed. The repeated
sections remain pertinent and the “SUPPLEMENTAL ANALYSIS”
buttresses the original obviousness analysis, albeit to an extent that departs
significantly from the reasoning the Examiner used to reject the claims.
Accordingly, we AFFIRM but denominate the affirmance as a NEW
GROUND OF REJECTION.1

THE INVENTION
The invention relates to “collection and disposal of waste.”
Specification 1:3.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A waste management system, comprising:
a. a waste management electronic base system having a
memory, processor, an input element, and an output element, the base
system adapted to process waste management data for tracking a
waste storage unit at a variety of locations, billing a customer
associated with a waste removal, and paying personnel for services
associated with the waste removal; and

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed May 7, 2009) and the Examiner’s Answer (“Answer,” mailed Aug. 19,
2009).
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b. an electronic portable unit having a memory, processor, an
input element, and an output element, the portable unit adapted to
allow an operator during the waste removal to use the portable unit
and to allow onsite input at a customer facility from preprogrammed
queries regarding the waste removal and further being adapted to
generate an output of the data to the base system for processing.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hassett
Hershey
Kasik

US 5,347,274
US 6,108,524
US 6,448,898 B1

Sept. 13, 1994
Aug. 22, 2000
Sept. 10, 2002

The following rejections are before us for review:
1. Claims 1, 3–15, and 17–23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kasik and Hershey.
2. Claims 2 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kasik, Hershey, and Hassett.

ISSUES
Did the Examiner err in rejecting the claims under § 103(a) over the
cited prior art? Specifically, does the cited prior art lead one of ordinary
skill in the art to a waste management system, comprising an electronic base
system having a memory, processor, an input element, and an output
element, “adapted to process waste management data for tracking a waste
storage unit at a variety of locations, billing a customer associated with a
waste removal, and paying personnel for services associated with the waste
removal?”
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FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 1, 3–15, and 17–23 under 35 U.S.C. § 103(a) as
being unpatentable over Kasik and Hershey.
We begin by construing claim 1, which is representative of the
independent claims 1 and 12, which the Appellant argued as a group.
37 C.F.R. § 41.37(c)(1)(vii) .
Claim 1 is drawn to an apparatus comprising: (a) an “electronic base
system” and (b) an “electronic portable unit.”
(a) The “electronic base system,” according to the claim, “[has at a
minimum] a memory, processor, an input element, and an output element.”
The Examiner found that Hershey discloses such a minimum 4-element
system. Ans. 5. However, Kasik necessarily also discloses such a system
because it refers to a “central processing unit” for receiving “every data
transfer” from a service vehicle, which one of ordinary skill in the art at the
time of the invention would understand to include a memory, processor, an
input element, and an output element. We do not see that the Appellant has
disputed that the cited prior art shows, at a minimum, a base system with a
memory, processor, an input element, and an output element. Accordingly,
we take as accepted an “electronic base system having a memory, processor,
an input element, and an output element,” per se, is disclosed in the prior art.
(b) The “electronic portable unit,” according to the claim, also “[has at
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a minimum] a memory, processor, an input element, and an output element.”
The Examiner found that Kasik discloses such a minimum 4-element
portable unit. Ans. 4–5. Perusing Figures 7 and 9 makes this plainly
evident. We do not see that the Appellant has disputed that the cited prior
art shows, at a minimum, a portable unit with a memory, processor, an input
element, and an output element. Accordingly, we take as accepted an
“electronic portable unit having a memory, processor, an input element, and
an output element,” per se, is disclosed in the prior art.
Claim 1 further describes the base system and portable unit as being
“adapted” to perform certain functions. We observe that claim 1 does not
specify how the base system and portable units are adapted, structurally, to
perform the certain functions set forth in the claim. Accordingly, claim 1 is
reasonably broadly construed to cover any structural modification to the
memory, processor, input element, and/or output element so as to render the
base system and portable unit capable of performing the corresponding
function.
The portable unit’s function as claimed is:
to allow an operator during the waste removal to use the
portable unit and to allow onsite input at a customer facility
from preprogrammed queries regarding the waste removal and
further being adapted to generate an output of the data to the
base system for processing.
We do not see that the Appellant has disputed that the cited prior art
shows, at a minimum, a portable unit with a memory, processor, an input
element, and an output element adapted to perform this function.
Accordingly, we take as accepted that
an electronic portable unit having a memory, processor, an
input element, and an output element, the portable unit adapted
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to allow an operator during the waste removal to use the
portable unit and to allow onsite input at a customer facility
from preprogrammed queries regarding the waste removal and
further being adapted to generate an output of the data to the
base system for processing
is disclosed in the prior art. We now turn to the base system—which is at
the center of the dispute. The base system’s function, as claimed, is “to
process waste management data for tracking a waste storage unit at a variety
of locations, billing a customer associated with a waste removal, and paying
personnel for services associated with the waste removal.”
According to the Examiner, such a base system is disclosed in
Hershey. The Examiner points to, for example, column 5, lines 10–61,
whereat “a mobile tracking unit” is disclosed. Ans. 5. The Appellant does
not disagree with this, to wit:
Hershey discloses various aspects of tracking a container or an
asset by using asymmetrical transmission system, (Col. 3, l. 59
- Col. 4, l. 32; Col. 5, l. 62 - Col. 6 l. 45), which tests
frequencies before transmitting data on the location of an asset,
(Col. 7, ll. 4-51), i.e., a rail car or container on a train. (Col. 4,
ll. 59-65). Hershey further discloses multiple receivers in
communication with each other to minimize power
consumption and to identify the unit with the most power to
transmit the data on the various containers or assets in
communication with each other in a specific area, namely on a
moving train, to receivers spaced across some geographic area,
such as the continental United States. (Col. 5, l. 43 - Col. 6, l.
2).
See Br. 17.
What the Appellant does not agree with is that one of ordinary skill in
the art, having Kasik in hand, would have been led to Hershey in reaching a
system comprising a base system “to process waste management data for
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tracking a waste storage unit at a variety of locations ... .” (claim 1).
According to the Appellant,
[a]s described in general from col. 1, l. 58 through col. 2, l. 49,
Kasik stands for a collection service that takes the steps to
empty [a] container at [a] known location. ... Indeed, if the
container is moved to another location, then apparently the
waste at the new location would be incorrectly billed to the
wrong customer.
Br. 14–15.
The discussion at column 1, line 58 through column 2, line 4 of Kasik
is directed to improving the efficiency of a refuse collection process via the
use of a signaling assembly whereby a flag is raised upon accessing a refuse
container and remained raised unless lowered by the subscriber. See also
col. 4, ll. 51–67. A refuse collection will be called for only when the flag is
in the raised position. The various subscribers are identified by providing
suitable markings “on each of the containers to be accessed” (col. 7, ll. 5–7).
This can be accomplished by a bar coded label. Col. 7, l. 11. A suitable
receptor (e.g., a CCD camera 46) is positioned on the service vehicle to
inspect the containers. Col. 7, ll. 35–39. The information is then routed to a
central processing system. Col. 9, l. 63–col. 10, l. 2.
Because the central processing system identifies the various
subscribers via suitable markings “on each of the containers to be accessed,”
Kasik discloses a base system that processes waste management data for
tracking various waste storage units at a variety of locations. The question is
whether it would have been obvious to one of ordinary skill in the art over
Kasik, in view of Hershey, to provide for a base system that processes waste
management data for tracking “a” waste storage unit at a variety of
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locations. In our view it would have been.
Claim 1 calls for a base system “to process waste management data
for tracking a waste storage unit at a variety of locations, billing a customer
associated with a waste removal, and paying personnel for services
associated with the waste removal” (claim 1). The claimed subject matter is
not limited so that the waste storage unit is associated with a single
subscriber. The claim reasonably broadly covers a waste storage unit that is
associated with a number of different subscribers depending on its location.
Accordingly, the claim does not exclude the possibility, as the Appellant has
argued, that “if the container is moved to another location, then [ ] the waste
at the new location would be incorrectly billed to the wrong customer.” Br.
15.
Also, the claimed subject matter is not limited so that a waste storage
unit that is associated with a single subscriber cannot be located at a variety
of locations. Kasik discloses a base system that processes waste
management data for tracking various waste storage units at a variety of
locations. Each waste storage unit is associated with a subscriber via a bar
coded label. If the unit moves, so does the label. Accordingly, any
information routed to Kasik’s base system will “process waste management
data for tracking a waste storage unit at a variety of locations, billing a
customer associated with a waste removal, and paying personnel for services
associated with the waste removal” (claim 1), notwithstanding that the unit
has moved.
Notwithstanding that there is insufficient evidence of a structural
difference between the instant base system and that of Kasik (“apparatus
claims cover what a device is, not what a device does.” Hewlett-Packard
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Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)), a
structural modification to the memory, processor, input element, and/or
output element of the Kasik base system to render it capable of “process[ing]
waste management data for tracking a waste storage unit at a variety of
locations, billing a customer associated with a waste removal, and paying
personnel for services associated with the waste removal” (claim 1), as
reasonably broadly claimed, is unnecessary. Claim 1 covers a base system
capable of processing waste management data for tracking a waste storage
unit that is associated with a number of different subscribers depending on
its location, as well as a base system capable of processing waste
management data for tracking a waste storage unit that is associated with a
single subscriber located at a variety of locations, which reads on Kasik’s
system. In effect, the Appellant’s arguments—which are premised on the
view that Kasik cannot process waste management data for tracking a waste
storage unit at a variety of locations—are not commensurate in scope with
what is claimed. Cf. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many
of appellant’s arguments fail from the outset because, . . . they are not based
on limitations appearing in the claims . . . .”).
For the foregoing reasons, the rejection of claim 1 is affirmed.
Because the other independent claim 12 stands or falls with claim 1, the
rejection of claim 12 is also affirmed.
Regarding dependent claims 3–5, 9–11, 13, 14, 17–20, and 23, the
Appellant (Br. 19–22) made arguments with respect to these claims which
simply state, in whole or in part, that the references do not disclose or
suggest certain claimed features—without responding to the Examiner’s
reasoning in establishing a prima facie case of obviousness. See Ans. 6–13.
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“It is not the function of this court to examine the claims in greater detail
than argued by an appellant, looking for nonobvious distinctions over the
prior art.” In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991).
See also In re Wiseman, 596 F.2d 1019, 1022 (CCPA 1979) (arguments
must first be presented to the board). A general allegation that the art does
not teach any of the claim limitations is no more than merely pointing out
the claim limitations. A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim. 37 C.F.R. § 41.37(c)(1)(vii).
For the foregoing reasons, the rejection of claims 3–5, 9–11, 13, 14,
17–20, and 23, as well as of dependent claims 6, 7, 8, 15, 21, and 22, for
which there are no arguments challenging their rejection, is affirmed.

The rejection of claims 2 and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Kasik, Hershey, and Hassett.
The Appellant argued against the rejection of claims 2 and 16 for the
same reasons used to argue against the rejection of claim 1. Br. 22–23.
Accordingly, because we found them unpersuasive as to that rejection, we
find them equally unpersuasive as to error in the rejection of claims 2 and
16.

SUPPLEMENTAL ANALYSIS
“adapted to”
We take this opportunity to re-assess our obviousness analysis in light
of In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014).
Giannelli, which was decided on January 13, 2014 and thus after the
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First PTAB Decision was mailed, concerned the construction to be given the
claim phrase “adapted to.” Likewise, claim 1, the claim representative of the
claims on appeal and the claim we analyzed in the First PTAB Decision,
also recites the phrase “adapted to.” In our analysis, we construed “adapted
to” to mean “capable of.” See First PTAB Decision 5 (“[C]laim 1 is
reasonably broadly construed to cover any structural modification to the
memory, processor, input element, and/or output element so as render the
base system and portable unit capable of performing the corresponding
function.”) (Emphasis added). However, we did not consult the
Specification in construing the phrase as required. Cf. Giannelli, 739 F.3d
1379 (“Although the phrase can also mean ‘“capable of” or “suitable for,”’
id., here the written description makes clear that ‘adapted to,’ as used in the
′261 application, has a narrower meaning, viz., that the claimed machine is
designed or constructed to be used as a rowing machine whereby a pulling
force is exerted on the handles.”)
We have reviewed the Specification to determine if the written
description makes clear that “adapted to” has a narrower meaning; that is,
we reviewed the Specification to determine if the claimed base system and
portable unit are designed or constructed in a particular way in order to
perform the corresponding functions set forth in claim 1. In that regard, we
could find no narrower meaning for “adapted to” in the Specification. In
fact, it appears that any conventional computing device without hardware
modification may be used.
The base unit can be any computational electronic processor
suitable for performing all or part of the duties described herein,
including without limitation computers including desktops,
laptops, notebooks, minicomputers, mainframes, super
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computers, and other electronic units. The portable unit can also
be any computational electronic processor suitable for
performing all of part of the duties described herein with the
additional feature that it is portable with the operator, or with
the operator's vehicle, during the route and can include without
limitation laptops, notebooks, personal assistance devices, and
other portable electronic units.
Specification 11:10–18.
The software necessary to cause these conventional computing
devices to be “adapted to” perform the corresponding functions set forth in
claim 1 is also not narrowly defined. The software involves a database(s)
and a driver functions interface program (Specification 10:28–29). They
communicate with each other and provide input and output
between the program 102 and database 100, and related
programs, to populate the database and provide information to
the program 102. The term “program” is used broadly herein
and includes, for example and without limitation, software,
firmware and hardwired code, including routines, sub-routines,
steps, lines, and commands. In general, the program(s) of the
present invention can reside in a base unit, a portable unit,
modems, printers, websites, or other electronic devices to
compute, relate, interact, received input, generate output, and
perform the other functions described herein.
Specification 11:1–8. According to the Specification, “the driver functions
interface program 102 [is] described in reference to Figure 1 and Figure 9.”
(Specification 16:6–7). But Figures1 and 9 simply show boxes containing
the words “DRIVER FUNCTIONS INTERFACE PROGRAM.” This
disclosure does not provide any specific information about the software that
is to be used to perform the corresponding functions set forth in claim 1.
There is, for example, no disclosure of an algorithm. Accordingly, we do
not see that the Specification narrowly defines the software necessary to
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cause conventional computing devices to be “adapted to” perform the
corresponding functions set forth in claim 1.
One of the functions for the portable unit is “to allow onsite input at a
customer facility from preprogrammed queries regarding the waste removal”
(claim 1). With respect to that function, the Appellant has argued that:
[a]s the term is used herein, “preprogrammed queries” includes
a sequence of steps that guide the operator through a defined set
of questions, instructions, or options. Such aspect is found
throughout the application, including Figures 5, 7-16, 19,21,
22-24, and 26-27 as exemplary, and at pg. 7, ll. 8-20, pg. 14, l.
25 to pg. 15, l. 11, pg. 16, ll. 11-23, pg. 17, l. 30 to pg. 18, l. 5,
pg. 18, ll. 14-27, pg. 20, ll. 1-22, and pg. 21, ll. 15-26, as
exemplary. The complexities of certain aspects of the system
and proper recordation of desired or necessary information are
assisted by the preprogrammed system of queries.
Br. 18. However, we have been unable to find in the Specification any
disclosure which limits the claim phrase “preprogrammed queries” to the
extent argued. The Specification provides no specific definition for
“preprogrammed queries” and whenever “preprogrammed queries” are
discussed, the discussion is about the possible types of information that
could be obtained via “preprogrammed queries.” See, e.g., Specification
15:7–9 (“[T]the portable unit could include preprogrammed queries that
require operator or maintenance personnel input as to the particular
condition.”); see also, e.g., Specification 26:30–31 (“For example, a series
of preprogrammed queries can be made to the operator or other personnel
that step through a variety of ‘yes’ and ‘no’ questions, ... .”). We do not see
that the software necessary to cause conventional computing devices to be
“adapted to” “to allow onsite input at a customer facility from
preprogrammed queries regarding the waste removal” (claim 1) is narrowly
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defined.
In light of the Specification, we reasonably broadly construe the
portable unit adapted “to allow onsite input at a customer facility from
preprogrammed queries regarding the waste removal” (claim 1) as covering
a computing device which is capable of allowing onsite input at a customer
facility from preprogrammed questions “regarding” the waste removal.
Where a Specification discloses no algorithm corresponding to a
function recited in a computer-enabled system claim, a question of
definiteness could arise. Ex parte Erol, 107 USPQ2d 1963 (PTAB Mar. 13,
2013) (Informative) addressed the construction to be given the phrase “a
processor adapted to.” In Erol, the Board concluded that it was a verbal
construct devoid of structure and was being used as a substitute for the term
“means for,” leading the Board to invoke the application of § 112, sixth
paragraph, and, consistent with Aristocrat Techs. Australia Pty Ltd. v. Int’l
Game Tech., 521 F.3d 1328 (Fed. Cir. 2008), to look to the Specification for
disclosure of an algorithm corresponding to the function recited in the claim
associated with the “a processor adapted to” clause. Finding none, the
Board determined that the computer-enabled system claim was indefinite
under 35 U.S.C. § 112, second paragraph.
The difference between Erol and this case is that the “adapted to”
clauses in instant claim 1 are preceded by additional elements “a memory,
processor, an input element, and an output element.” The question is
whether these additional elements provide sufficient structure to perform
“the functions in question.” TriMed, Inc. v. Stryker Corp., 514 F.3d 1256,
1260 (Fed. Cir. 2008). In our view they do. The functions for the base unit
are: “to process waste management data for tracking a waste storage unit at a
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variety of locations, billing a customer associated with a waste removal, and
paying personnel for services associated with the waste removal” (claim 1)
and for the portable unit: “to allow an operator during the waste removal to
use the portable unit and to allow onsite input at a customer facility from
preprogrammed queries regarding the waste removal and further ... to
generate an output of the data to the base system for processing” (claim 1).
These functions ask no more of a computing device than to perform such
common data processing activities as inputting data, processing data, and
outputting data. In our view, a person of ordinary skill in the art would be
able to recognize in “a memory, processor, an input element, and an output
element” (claim 1) the supporting structure for performing these common
computing functions. The additional elements are sufficient structure to
perform the functions claimed. Cf. TECSEC, Inc.. v IBM, 731 F.3d 1336
(Fed. Cir. 2013) (“system memory means” and “digital memory means” do
not invoke the application of § 112, sixth paragraph). Accordingly,
notwithstanding there is no disclosure of an algorithm, claim 1 appears to
provide sufficient, albeit generic, structure, to render the claim definite.
We have reassessed our obviousness analysis in light of In re
Giannelli, 739 F.3d 1375 (Fed. Cir. 2014). We have reviewed the
Specification. For the foregoing reasons, we find that the written description
does not make clear that the claim phrase “adapted to” has a narrower
meaning. Accordingly, we stand on our original construction of the claim
phrase “adapted to” as meaning “capable of.” And, as a result, our
obviousness analysis remains unchanged.
However, this additional reassessment adds reasoning that changes the
thrust of the Examiner’s reasoning and therefore, though the rejections of
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claims 1, 3–15, and 17–23 under 35 U.S.C. § 103(a) as being unpatentable
over Kasik and Hershey and claims 2 and 16 under 35 U.S.C. § 103(a) as
being unpatentable over Kasik, Hershey, and Hassett, are affirmed, we
denominate the affirmed rejections as NEW GROUNDS OF REJECTION.

“portable unit”
We indicated (and repeat above) that
[w]e do not see that the Appellant has disputed that the cited
prior art shows, at a minimum, a portable unit with a memory,
processor, an input element, and an output element adapted to
perform this function. Accordingly, we take as accepted that
an electronic portable unit having a memory, processor,
an input element, and an output element, the portable unit
adapted to allow an operator during the waste removal to
use the portable unit and to allow onsite input at a
customer facility from preprogrammed queries regarding
the waste removal and further being adapted to generate
an output of the data to the base system for processing is
disclosed in the prior art.
First PTAB Decision 5. We maintain that position.
The maintenance of our position notwithstanding, the Order states that
“we remand for the Board to reassess its obviousness analysis in light of the
Director’s concession of error.” Order 2. According to the Director, “the
Board’s current rationale is incomplete and could not be adequately
reviewed or defended because it lacks adequate findings.” Order 2. The
Court states that “Shield challenges the Board’s reliance on the Kasik
reference as teaching the ‘adapted to’ element of the claim.” Order 1
(emphasis added). The Court states that “[t]he Director notes that the Board
did not make a finding about whether the reference [Kasik] teaches that
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limitation [i.e., the “adapted to” element of the claim].” Order 2. According
to the Director, rather than addressing it, “the Board mistakenly concluded
that [the Appellant] had not challenged the limitation and only on that basis
accepted the limitation as present in the art.” Id.
We believe that the concern is over the portable unit and the
particular “adapted to” limitation which defines one of the portable unit’s
functions as to “allow onsite input at a customer facility from
preprogrammed queries regarding the waste removal” (claim 1) and whether
Kasik discloses it. We find that it does.
As we have reasonably broadly construed it (see above), the portable
unit as claimed which is defined as being adapted “to allow onsite input at a
customer facility from preprogrammed queries regarding the waste removal”
(claim 1) covers a computing device which is capable of allowing onsite
input at a customer facility from preprogrammed questions regarding the
waste removal. In that regard, we find, as did the Examiner, that Kasik
discloses a “laptop” (column 10, line 8). Kasik discloses that the “laptop” is
carried by an operator of a service vehicle. Given that those of ordinary skill
in the art at the time of the invention would have known that laptops were
capable of being preprogrammed with questions, one of ordinary skill in the
art would understand Kasik’s “laptop” is a computing device which is
capable of allowing onsite input at a customer facility from preprogrammed
questions regarding the waste removal. In fact, the Specification states that
the portable unit
portable unit can also be any computational electronic processor
suitable for performing all of part of the duties described herein
with the additional feature that it is portable with the operator,
or with the operator's vehicle, during the route and can include
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without limitation laptops, notebooks, personal assistance
devices, and other portable electronic units
Specification 11:14–18 (emphasis added). Thus, the claimed portable unit,
which the Specification indicates covers a laptop, reads on Kasik, which also
discloses a laptop.
We have reviewed the Brief. The section on pages 18–19 focuses on
“preprogrammed queries” (claim 1) but the portable unit, its elements, and
the “adapted to” clauses as claimed are are not otherwise mentioned. We
addressed this section of the Brief above in construing the portable element
of the claim. This section does not however mention/discuss any findings
the Examiner made in the Answer with respect to the “electronic portable
unit” element of claim 1. The Examiner specifically cited column 5, lines 5–
19; column 7, lines 5–64; column 9, lines 14–63; and column 10, lines 3–12
and 27–67 of Kasik as evidence that all aspects of the “electronic portable
unit” element of claim 1 were disclosed in the prior art. Answer 5. Column
10, line 8 in particular mentions a “laptop,” which claim 1, in light of the
Specification, reasonably broadly covers. We do not see, and the Appellant
does not explain, the unobvious difference between the portable unit as
claimed and Kasik’s “laptop.”
The Appellant argues that “in no event does Kasik disclose guiding
the operator through a series of preprogrammed queries.” Br. 19. But all
that claim 1 requires is a portable unit capable of “allow[ing] onsite input at
a customer facility from preprogrammed queries regarding the waste
removal.” The portable unit of claim 1 is not limited so as to guide an
operator through a series of preprogrammed queries. The portable unit of
claim 1 is broad, requiring only that it “allow onsite input at a customer
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facility from preprogrammed queries regarding the waste removal.” Kasik’s
“laptop” meets that requirement.
Accordingly, we are unpersuaded as to error in the Examiner’s finding
that Kasik discloses the portable unit as claimed.
We agreed earlier (in the “ANALYSIS” section) with the Examiner’s
finding that Kasik discloses the base system as claimed. The “ANALYSIS”
section above addresses the Appellant’s arguments with respect to the
Examiner’s position on Kasik disclosing the base system as claimed, finding
the arguments unpersuasive as to error in the rejection as it pertains to the
base system.
The “SUPPLEMENTAL ANALYSIS” section re-assesses the prima
facie case of obviousness in light of In re Giannelli, 739 F.3d 1375 (Fed.
Cir. 2014). The re-assessment did not result in a change in the prima facie
case but it did change the rationale that originally underpinned the prima
facie case.
The “SUPPLEMENTAL ANALYSIS” section also re-assesses the
prima facie case of obviousness in light of the concern raised by the Order
that no finding was made as to whether Kasik discloses the portable unit as
claimed. The finding has been made. The finding buttresses the prima facie
case.
Accordingly, we find a prima facie case of obviousness for the
claimed subject matter over the cited prior art combination. However, our
reasoning departs from that which the Examiner used to establish the prima
facie case. Accordingly, while we sustain the rejections, we denominate
them as new grounds of rejection.

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CONCLUSIONS
The rejection of claims 1, 3–15, and 17–23 under 35 U.S.C. § 103(a)
as being unpatentable over Kasik and Hershey is sustained but denominated
as a new ground of rejection.
The rejection of claims 2 and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Kasik, Hershey, and Hassett but denominated as a new
ground of rejection.

DECISION
The decision of the Examiner to reject claims 1–23 is affirmed but the
grounds are denominated as NEW GROUNDS OF REJECTION.

NEW GROUNDS
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner . . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED; 37 C.F.R. § 41.50(b)

mls