Ex Parte Forget ShieldDownload PDFPatent Trial and Appeal BoardSep 29, 201410799826 (P.T.A.B. Sep. 29, 2014) Copy Citation 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,” Appeal 2010-002774 Application 10/799,826 2 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). Appeal 2010-002774 Application 10/799,826 3 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?” Appeal 2010-002774 Application 10/799,826 4 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 Appeal 2010-002774 Application 10/799,826 5 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 Appeal 2010-002774 Application 10/799,826 6 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 Appeal 2010-002774 Application 10/799,826 7 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 Appeal 2010-002774 Application 10/799,826 8 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 Appeal 2010-002774 Application 10/799,826 9 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. Appeal 2010-002774 Application 10/799,826 10 “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 Appeal 2010-002774 Application 10/799,826 11 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 Appeal 2010-002774 Application 10/799,826 12 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 Appeal 2010-002774 Application 10/799,826 13 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 Appeal 2010-002774 Application 10/799,826 14 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 Appeal 2010-002774 Application 10/799,826 15 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 Appeal 2010-002774 Application 10/799,826 16 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 Appeal 2010-002774 Application 10/799,826 17 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 Appeal 2010-002774 Application 10/799,826 18 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 Appeal 2010-002774 Application 10/799,826 19 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. Appeal 2010-002774 Application 10/799,826 20 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 . . . . Appeal 2010-002774 Application 10/799,826 21 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 Copy with citationCopy as parenthetical citation