Ex Parte Honegger

Board of Patent Appeals and Interferences

Feb 16, 2010

10788165 (B.P.A.I. Feb. 16, 2010)

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.
10/788,165 02/26/2004 Chris Honegger 67137-002 5563
26096 7590 02/16/2010
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
HAGEMAN, MARK
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
02/16/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHRIS HONEGGER
____________________

Appeal 2009-005738
Application 10/788,165
Technology Center 3600
____________________

Decided: February 16, 2010
____________________

Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-5, 8, 10, 12, 14-19 and 21-23.1 We have jurisdiction
under 35 U.S.C. § 6(b) (2002). We affirm.

1 Claims 6, 7, 9, 11, 13 and 20 have been canceled. (App. Br. 2).
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STATEMENT OF THE CASE
The claimed invention relates to a process for sorting, counting and
preparing recyclable materials for reuse. (Spec. [0001]).
Representative claims read as follows:
1. A method of tracking quantities and categories of recyclable
material received from multiple distribution centers comprising the
steps of:
a) loading a container of pre-sorted recyclable materials
containing one identified category of recyclable material onto a
sorting and data collection station;
b) reading and recording information stored on the container
that identifies a specific one of the multiple distribution centers
from which the container originates;
c) determining the category of recyclable material contained
within the container,
d) weighing the container and recyclable materials within the
container;
e) recording the weight of the recyclable materials within the
container;
f) crediting the weight of the recyclable materials to the
identified specific one of the multiple distribution centers; and
g) unloading the recyclable material according to the
determined category.

8. The method as recited in claim 1, wherein the contents of the
container are unloaded on one of a first or a second conveyor
according to the category of recyclable material.

16. The system as recited in claim 14, wherein a sensor detects the
presence of a container at said scale device, and initiates said scanner
in response to detecting a container on said scale device, and initiates
movement of a container from the load conveyor in response to a
detected absence of a container on the scale device.

21. The method as recited in claim 1, wherein the step of
determining a category of recyclable materials includes the step of
visually examining a category of recyclable material disposed within
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the container and actuating a switch corresponding to the category or
recyclable material within the container.

22. The method of claim 21, including the step of comparing a
weight of the container with the category of recyclable material
identified and determining an error responsive to the weight not
corresponding to the identified category of recyclable material.

THE EVIDENCE

The Examiner relies upon the following as evidence in support of the
rejections:
Moyer 3,955,678 May 11, 1976
Hansen 5,072,833 Dec. 17, 1991
Hirano 5,109,973 May 05, 1992
Hulls 5,628,412 May 13, 1997
Christ 5,834,706 Nov. 10, 1998
Warsing 5,842,652 Dec. 01, 1998

THE REJECTIONS

The following rejections are before us for review:
1. Claims 1-5, 14, 15, 17, 19 and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Hansen and Hulls.
2. Claims 8, 10, 12 and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hansen, Hulls and Warsing.
3. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hansen, Hulls and Moyer.
4. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hansen, Hulls and Hirano.
5. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hansen, Hulls and Christ.
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Appellant raises the same arguments for claims 1-5, 14, 15, 17, 19 and
23. Therefore, we select independent claim 1 to decide the appeal for these
claims. See 37 C.F.R. § 41.37(c)(1)(vii)(2006). Accordingly, claims 2-5,
14, 15, 17, 19 and 23 stand or fall with claim 1. Appellant also argues the
rejections of claims 8, 10, and 12 together. Therefore, we select claim 8 to
decide the appeal for these claims. (Id.). Accordingly, clams 10 and 12
stand or fall with claim 8. We address the remaining claims 16, 18 and 22
separately.
ISSUE
Has Appellant established that the Examiner erred in determining that
it would have been obvious to one of ordinary skill in the art at the time the
invention was made to combine known steps for tracking quantities and
categories of recyclable material received from multiple distribution centers?
FINDINGS OF FACT
The record supports the Examiner’s findings of fact, as set forth in the
Final Rejection, Aug. 6, 2007, pp. 2-10. Therefore, we adopt the Examiner’s
findings.
PRINCIPLES OF LAW
A rejection for obviousness must include “articulated reasoning with
some rational underpinning to support the legal conclusion.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006). “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 416. “[I]f a technique has been used
to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
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technique is obvious unless its actual application is beyond his or her skill.”
KSR, 550 U.S. at 417. The reason for combining teachings may arise from
the nature of the problem, the teachings of references, or the ordinary
knowledge of those skilled in the art. In re Fulton, 391 F.3d 1195, 1200
(Fed. Cir. 2004).
It is well settled that “claims in an application are to be given their
broadest reasonable interpretation consistent with the specification and that
claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Sneed, 710 F.2d 1544,
1548 (Fed. Cir. 1983).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley 27 F.3d 551, 553
(Fed. Cir. 1994).
ANALYSIS
I. The Rejection of Claims 1-5, 14, 15, 17, 19 and 23 under 35 U.S.C.
§ 103(a) over the combination of Hansen and Hulls.
The Examiner found that Hansen described the invention of claim 1,
except for not disclosing (1) that materials are pre-sorted containing one
identified category of material, (2) determining the category of recyclable
material contained within the container, and (3) that unloading is carried out
on the determined category. (Fin. Rej. 2-3). However, the Examiner found
that Hulls described a recycling method that included each of these
limitations. (Id.). According to the Examiner, it would have been obvious
to a person of ordinary skill in the art at the time the invention was made “to
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have modified Hansen to include [1] the materials being pre-sorted
containing one identified category of material and [2] determining the
category of recyclable material contained within the container and [3] the
unloading being carried out based on the determined category, as taught by
Hulls,” to yield a recycling process that did not involve labor-intensive
transfer from container to container or major contamination. (Id.).
Appellant challenges this rejection, and all the subsequent rejections,
by asserting that nothing in the proposed combination discloses or suggests
“tracking quantities and categories of recyclable material received from
multiple distribution centers,” as claimed. (See App. Br. 6-9). According to
Appellant, the “cited prior art is directed toward the collection of material
with residential refuse pick up typically known as curbside pick-up,” which
is allegedly “entirely different than tracking quantities of recyclable
materials from multiple distribution centers.” (Id. at 6).
This argument is not persuasive. Claims in an application are given
their broadest reasonable interpretation consistent with the specification.
See Sneed, 710 F.2d at 1548. The Specification does not define the claim
term “multiple distribution centers,” which appears in both the preamble and
claim limitation “b).” Nor has Appellant directed us to any persuasive
evidence that the claim term excludes the residential homes, communities,
apartment buildings, etc. described in the prior art as being the locations
from which recyclable material is received, via curb-side service. (See Ans.
11). Indeed, Appellant does not even assert a definition for the claim term,
but contends that “it is not likely that anyone skilled in the art would
understand a private residence or even a group of private residences to be a
distribution center,” as recited in the claims. (Reply Br. 2).
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We interpret the claim term “multiple distribution centers” broadly to
describe any multiple locations that collect or gather recyclable materials for
distribution, i.e., sending via pick-up or delivery, to recyclable materials
processors. Appellant has not provided evidence that “centers” as recited in
the claim has any special meaning other than a centralized location from
where recyclable material is distributed. The Examiner explained, in many
instances, such as in apartment complexes and town-home communities, the
curb-side pick up involves receiving refuse and recyclable material from a
designated pick-up point where the community inhabitants previously
pooled their materials. (Id.). In particular, Hansen expressly described
having home owners deposit their respective recyclable materials “into
designated collection bins located at strategic locations within the local
community.” (Hansen, 10:19-24.) We agree with the Examiner’s
interpretation, and Appellant has not provided evidence or reasoning
establishing that the Examiner’s reading of Hansen is inconsistent with the
claim term “centers.”
Moreover, even if we interpreted “multiple distribution centers” to be
different than curbside pick-up, Appellant still has not persuasively
established that a person of ordinary skill in the art at the time the invention
was made would not have found tracking quantities of recyclable materials
from multiple distribution centers to be obvious over the known methods of
tracking quantities of recyclable materials received from curb-side pick up.
For these reasons, we do not find that Appellant has established error
on the part of the Examiner.
Appellant also challenges the Examiner’s rejection by asserting that
“Hansen and Hulls are not properly combinable” because “Hansen explicitly
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teaches away from the proposed combination.” (App. Br. 7). Appellant
asserts that Hansen describes co-mingling all recyclable materials together in
the same bag, while Hull describes pre-sorting recyclable materials into
different color coded bags. (Id.). According to Appellant, modifying
Hansen to include a pre-sorting step described in Hull would destroy
Hansen’s intended purpose of eliminating the need for presorting. (Id. at 8).
This argument is also unpersuasive. Hansen described an “alternative
to prior art methodologies for collecting recyclable materials” that
conveniences participants by not requiring the recyclable materials to be pre-
sorted prior to pick-up. (Hansen, 3:31-33). However, Hansen did not teach
that collected materials cannot be recycled according to the disclosed
method if the materials are pre-sorted prior to pick-up. Thus, we do not find
that Hansen’s method of recycling materials teaches away from modifying
the invention with a pre-sorting step. See Gurley, 27 F.3d at 553.
Further, as the Examiner explained, Hansen’s co-mingling step
ensured efficiency by providing convenience to the participants, while
Hulls’ pre-sorting step ensured efficiency by providing an advantage to the
processor. (Ans. 12). In either alternative, the intended efficient processing
of recyclable materials is achieved. Therefore, we also do not find that the
Examiner’s modification of Hansen destroys the intended recycling purpose
of the disclosed recycling method. Consequently, Appellant has not
provided adequate evidence to establish Examiner error.
II. The Rejection of Claims 8, 10, 12 and 21 under 35 U.S.C. § 103(a)
over the combination of Hansen, Hulls and Warsing.
Appellant challenges the Examiner’s rejection for the same reasons
discussed regarding the rejection of claim 1, i.e., that the “rejection depends
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on the improper combination of Hansen and Hulls.” (App. Br. 8). We are
not persuaded by this argument for the same reasons discussed above.
Appellant also argues that the proposed combination of Hansen and
Hulls with Warsing is improper because “Warsing is directed toward a
separate system of residential pick-up of recyclable materials,” i.e., where
refuse and recyclable materials are not picked-up together, whereas “Hansen
and Hulls are directed at a process for eliminating separate pick-ups of
recyclable material.” (Id. at 8). According to Appellant, Hansen and Hulls
therefore teach away from combination with “the dedicated mobile recycling
system disclosed in Warsing.” (Id.).
This argument is also unpersuasive. The Examiner cited Warsing’s
disclosure of methods and equipment that processed container contents,
conveyors, crushers, and balers used “for the purpose of reducing the
recyclable materials according to type.” (Ans. 8.) We agree with the
Examiner’s finding that Warsing concerned sorting recyclable materials
(Ans. 13), and that a person of ordinary skill in the art would have found
those teachings pertinent to curb-side, non-curb-side, separate pick-up or
combined pickup systems. Appellant has not introduced evidence that
Warsing would have limited its processing equipment to the particular
pickup system it described. The fact that Hansen and Hulls described
methods that pick-up refuse and recyclable materials together does not
constitute a teaching away from combining their steps with the steps
Warsing taught. See Gurley 27 F.3d at 553.
In the Reply Brief, Appellant asserts the proposed combination does
not disclose or suggest the features of claim 8 because Warsing discloses
only one conveyor. (Reply Br. 3-4). According to Appellant, “Warsing
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cannot suggest multiple conveyors as the space provided in the Warding
device is limited to provide the desired mobility.” (Id. at 4).
We disagree with Appellant that Warsing does not suggest more than
one conveyor. Warsing disclosed various means “for automatic delivery to
processors” and described that such means may be used in combination with
“a small articulated conveyor delivery system that can tip items into a
selected processor….” (Warsing, 6:43-48)(Emphasis added). Because the
delivery means is provided to deliver items to multiple processors and the
conveyor system is described as tipping items into a selected processor, it is
reasonable to interpret this disclosure as suggesting that the conveyor system
may comprise more than one conveyor belt. Such an interpretation is also
consistent with the knowledge in the art at the time of the invention that
employing more than one conveyor was useful in sorting/recycling
operations. (See, e.g., Hulls, 4:34). Additionally, it is reasonable that a
skilled artisan at the time of the invention who reviewed Warsing would
have the skill to incorporate a second conveyor that was compatible with the
space provided, given the level of skill evidenced in the references.
In the Reply, Appellant further argues that claim 21 “requires the step
of determining a category of recyclable material by visually inspecting the
inside of a container and actuating a switch corresponding to the category of
recyclable material.” (Reply Br. 4.) According to Appellant, “[n]othing in
Warsing discloses examining the contents of a container and actuating a
switch based on that examination.” (Id.)
The evidence supports the Examiner’s findings and conclusions. In
Warsing’s method, a worker sorts the waste and deposits compatible
materials in one or another of a multiplicity of processors which may be
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arranged for crushing clear glass, crushing brown glass and for flattening or
shredding plastics. (Warsing, 7:63-8:1). Warsing taught that once sufficient
material is accumulated for processing in catching/storing bins, the
processor may be activated “by manual or automatic means….” (Id. at 6:39-
43). A person of ordinary skill in the art at the time the invention was made
would have found it obvious to actuate a switch to manually activate the
processor because the artisan would have recognized and appreciated the
obvious functional and operational advantages of using a switch. (See KSR,
550 U.S. at 1742-1743) (“[r]igid preventative rules that deny factfinders
recourse to common sense … are neither necessary under our case law nor
consistent with it.”). Additionally, it would have been obvious for the
worker in Warsing to have visually examined the category of recyclable
material within the container prior to activating the processor, as the worker
had sorted the materials by category (also through visual examination) into
the respective containers. Consequently, we do not find that Appellant has
established that the Examiner erred in rejecting claim 8, 10, 12 and 21 as
obvious over the combined prior art.
III. The Rejection of Claim 16 under 35 U.S.C. § 103(a) over the
combination of Hansen, Hulls and Moyer.
Appellant challenges the Examiner’s rejection for the same reasons
discussed regarding the rejection of claim 1, i.e., that the “rejection depends
on the improper combination of Hansen and Hulls.” (App. Br. 9). We are
not persuaded by this argument for the same reasons discussed above.
Appellant additionally challenges the Examiner’s addition of Moyer
to the combination of Hansen and Hulls because Moyer disclosed a sorting
system for containers that did not “require a picking operation where the
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bags with recyclable material are pulled from other refuse,” as described by
Hansen and Hulls. (App. Br. 9). In the Reply, Appellant adds that “[a]
picking operation is much different than the container sorting system
disclosed in Moyer,” and asserts that the rejection is “likely” the result of
hindsight. (Reply Br. 4).
This argument is not persuasive as Appellant considers the references
too narrowly. More broadly, Moyer, Hansen and Hulls describe processes
for separating and sorting materials. The fact that Moyer’s operation
functions differently than Hansen and Hulls does not establish that a skilled
artisan would not find it obvious to combine their teachings. Here, the
Examiner relied upon Moyer to teach a sensor and control system for a
conveyor and scale set up, rather than its distinct sorting system. (See Ans.
14). The Examiner found that Moyer disclosed that its control system
maximized flow rate and sorting rate (Ans. 9)(citing Moyer Abstract) and
determined that a skilled artisan would have therefore, found it obvious to
modify Hansen and Hulls to include Moyer’s sensor to achieve the same
result, i.e., maximize the flow rate and sorting rate. (Id.). Such a
modification relies upon the ordinary skill in the art at the time of the
invention, rather than on knowledge gained solely from Appellant’s
disclosure. (See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971)(“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning ….” Reconstruction is
proper, however, if it relies on ordinary skill at the time of the invention and
not on knowledge gained solely from the Applicant’s disclosure.). We do
not find that Appellant has established otherwise with persuasive evidence.

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IV. The Rejection of Claim 18 under 35 U.S.C. § 103(a) over the
combination of Hansen, Hulls and Hirano.
Appellant challenges the Examiner’s rejection for the same reasons
discussed regarding the rejection of claim 1, i.e., that the “rejection depends
on the improper combination of Hansen and Hulls.” (App. Br. 9). We are
not persuaded by this argument for the same reasons discussed above.
Appellant does not raise any additional arguments regarding the
rejection of claim 18. (See id.; Reply Br. 5). Consequently, we do not find
that Appellant has established that the Examiner erred in rejecting the claim
over the combined prior art.
Accordingly, we affirm the Examiner’s rejection.
V. The Rejection of Claim 22 under 35 U.S.C. § 103(a) over the
combination of Hansen, Hulls and Christ.
Claim 22 recites, “the step of comparing a weight of the container
with the category of recyclable material identified and determining an error
responsive to the weight not corresponding to the identified category of
recyclable material.” The Examiner found that the combination of Hansen
and Hulls suggested a method of tracking quantities and categories of
recyclable material received from multiple distribution centers comprising
steps that included loading a container of pre-sorted recyclable materials
containing one identified category of recyclable material onto a sorting and
data collection station. (Ans. 3, 4, and 10). The Examiner further found that
the combination of Hansen and Hulls disclosed all of the limitations of claim
22, except for “the step of comparing a weight of the container with the
category of recyclable material identified and determining an error
responsive to the weight not corresponding to the identified category of
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recyclable material.” (Id. at 10). However, the Examiner found that Christ
disclosed this limitation. (Id.)(citing Christ, Abstract). According to the
Examiner, it would have been obvious for a person of ordinary skill in the
art at the time the invention was made to modify the method suggested by
Hansen and Hulls to include the step of comparing a weight of the container
with the category of recyclable material identified and determining an error
responsive to the weight not corresponding to the identified category of
recyclable material, as taught by Christ, in order to verify the contents of a
container. (Id.).
Appellant challenges the Examiner’s rejection for the same reasons
discussed regarding the rejection of claim 1, i.e., that the “rejection depends
on the improper combination of Hansen and Hulls.” (App. Br. 9). We are
not persuaded by this argument for the same reasons discussed above.
Appellant also asserts that because Hansen describes “co-mingling
different categories of recyclable materials in the same bag,” the volume of
the bag is not useful to verify its contents relative to weight. (App Br. 9-10;
Reply Br. 5). This argument is also unpersuasive because the Examiner’s
proposed combination of Hansen and Hulls resulted in bags of pre-sorted
recyclables, rather than co-mingled categories.
Appellant additionally challenges the combination of Hansen and
Hulls with Christ by asserting that the combination “does not make sense”
and “is the result of hindsight reasoning ….” (App. Br. 9). Specifically,
Appellant asserts that “[t]he Christ device discloses using the weight and
volume of a container to determine a plausibility of the contents of a
container,” while “Hansen and Hulls disclose the use of bags, not anything
with a defined volume.” (App. Br. 9; Reply 5). In the Answer, the
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Examiner challenges Appellant’s assertion that a bag has no defined volume
by explaining that a bag, although flexible, has a maximum amount that it
can hold, e.g., a specific amount of water. We agree with the Examiner and
do not find that Appellant has established otherwise with any persuasive
evidence.
CONCLUSION OF LAW
On the record before us, Appellant has not shown error on the part of
the Examiner. It would have been obvious to one of ordinary skill in the art
at the time the invention was made to combine known steps for tracking
quantities and categories of recyclable material received from multiple
distribution centers as now claimed.
DECISION
The Rejection of claims 1-5, 14, 15, 17, 19 and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Hansen and Hulls is
AFFIRMED.
The Rejection of claims 8, 10, 12 and 21 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hansen, Hulls and Warsing is
AFFIRMED.
The Rejection of claim 16 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hansen, Hulls and Moyer is
AFFIRMED.
The Rejection of claim 18 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hansen, Hulls and Hirano is
AFFIRMED.
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The Rejection of claim 22 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hansen, Hulls and Christ is
AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).

AFFIRMED

lp

CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM MI 48009