Ex Parte Solon

Board of Patent Appeals and Interferences

Feb 26, 2004

09849315 (B.P.A.I. Feb. 26, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte JOSEPH J. SOLON

Appeal No. 2004-0572
Application 09/849,315

ON BRIEF

Before GARRIS, PAK, and WARREN, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves
claims 1, 2, 9-11, 13-15 and 24. Of the remaining claims pending
in this application, claims 3-8, 12 and 16 are objected to but
otherwise allowable, and claims 18-21 are withdrawn from further
consideration by the examiner.
Appeal No. 2004-0572
Application 09/849,315
1 We observe that the appellant has inaccurately reproduced
the appealed claims in the Appendix of the Brief filed March 27,
2003. For example, the claim 24 reproduction in this Appendix
contains numerous errors of omission and in content. No useful
purpose would be served by identifying these reproduction errors.
Suffice it to say, therefore, that our disposition of this appeal
is based upon the actual language of the appealed claims pending
in this application.
2
The subject matter on appeal relates to a method of
storing and handling rubber salvaged from discarded tire
carcasses. The method includes the steps of cutting the tire
carcasses into flat tire strips excluding sidewalls and stacking
the flat strips onto pallets in a plurality of abutting rubber-
to-rubber contact configurations. Further details of this
appealed subject matter are set forth in representative
independent claims 1 and 24, which read as follows1:
1. The environmentally safe method of storing and
handling batches of rubber pieces salvaged from discarded tire
carcasses in a bulk storage configuration obtained at low cost
for compact storage of residual bulk rubber at bulk storage sites
from which bulk rubber may be reclaimed in due course for
preparation of rubber products, comprising in combination the
steps of: cutting reclaimed tire carcasses into sets of
substantially flat storable sections of tire tread strips
excluding sidewalls, preparing pallets with loading platform
areas of specified length and width dimensions for retaining a
plurality of stacks of said substantially flat sections in a
storage configuration, and stacking a plurality of the storable
sections into said stacks in compact rubber-to-rubber interfacing
configurations with frictional resistance against movement of the
Appeal No. 2004-0572
Application 09/849,315
3
sections lateral to the pallet platform area thereby to
facilitate transportation on said pallets for storing and
recalling the pallets from designated storage areas of confined
space.
24. The method of bulk storage in outdoor sites of
discarded tire rubber without accumulation of water comprising
the steps of:
cutting rubber portions of reclaimed tire carcasses in
the format into substantially constant thickness flat treaded
strips excluding sidewalls, and
stacking the flat strips on pallets in a plurality of
abutting rubber-to-rubber contact stacks of the treaded strips
interlocked in a frictional format for withstanding lateral
movement when travelling upon a loading platform of a pallet
transported by a fork lift truck with a rubber-to-rubber contact
configuration precluding accumulation of water when stored on the
pallets in bulk storage at outdoor locations.
The references set forth below are relied upon by the
examiner as evidence of obviousness:
Miller 5,472,750 Dec. 5, 1995
Pignataro 5,834,083 Nov. 10, 1998
Claims 1, 2, 9-11, 13-15 and 24 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Miller in view of
Pignataro.
On page 7 of the Brief, the appellant indicates that
the appealed claims are grouped separately. Therefore, in
assessing the merits of the rejection before us, we will
Appeal No. 2004-0572
Application 09/849,315
4
individually consider the claims which have been separately
grouped and argued by the appellant. See Ex parte Shier,
21 USPQ2d 1016, 1018 (Bd. Pat. App. & Int. 1991)(In order to
obtain separate consideration of commonly rejected claims, an
appellant must state that the claims do not stand or fall
together and must present arguments why the claims are separately
patentable). Also see 37 CFR § 1.192(c)(7)(8) (2002).
Rather than reiterate the respective positions
advocated by the appellant and by the examiner concerning this
rejection, we refer to the Brief (i.e., the Brief filed March 27,
2003) and to the Answer for a complete exposition thereof.
OPINION
For the reasons which follow, we will sustain the
above-noted rejection.
In the examiner’s view, appealed independent claim 1
distinguishes from Miller by requiring the step of “cutting
reclaimed tire carcasses into sets of substantially flat storable
sections of tire tread strips excluding sidewalls.” Although
patentee’s method includes a similar step wherein reclaimed tire
Appeal No. 2004-0572
Application 09/849,315
5
carcasses are cut into sets of substantially flat storable
sections, these sections include sidewalls as well as tire tread
strips (e.g., see the paragraph bridging columns 6 and 7). It is
the Examiner’s conclusion, however, that it would have been
obvious for one having an ordinary level of skill in the art to
modify this cutting step so as to remove the sidewalls from the
tire carcasses, thereby leaving substantially flat storable
sections of only tire tread strips, in view of Pignataro’s
teaching of such a cutting step.
More specifically, Pignataro discloses a method of
removing sidewalls from tire carcasses and stacking the resulting
tread strips into a flat configuration on a truck storage bed for
transportation to a central recycling facility (e.g., see
Figure 4 and lines 51-64 in column 3). These stacked tread
strips are ultimately recycled in the form of various
construction products (e.g., see the Abstract as well as
Figures 5-20 and the Specification disclosure relating thereto
in the Pignataro reference). Thus, the issue presented by the
rejection before us is whether an artisan with ordinary skill
would have found it obvious to modify Miller’s cutting step so as
Appeal No. 2004-0572
Application 09/849,315
6
to remove sidewalls and thereby obtain tread strips to be stacked
and ultimately used in the manner and for the reasons taught by
Pignataro.
In support of his nonobviousness position, the
appellant argues that the above-discussed combination proposed by
the examiner would render Miller inoperable (e.g., see page 11 of
the Brief) apparently because “Miller requires that the sidewalls
must be attached to the tire treads to be operational to produce
the article of manufacture desired by Miller” (Brief, page 20).
It is true that Miller wishes to recycle the whole tire carcass
and concomitantly wishes to ultimately manufacture a product made
from the recycled whole tire carcass. Nevertheless, this is only
one of four primary benefits sought by patentee (e.g., see
lines 36-44 in column 1), and the other benefits would be
achieved in the modified method proposed by the examiner. More
importantly, the Pignataro reference evinces that it was known in
the prior art to remove sidewalls for separate recycle (e.g., see
the last line of the abstract) in order to obtain only the tire
strips for use in manufacturing products made solely therefrom.
Under these circumstances, it is clear that the Examiner’s
Appeal No. 2004-0572
Application 09/849,315
7
proposed combination would result in a modification of Miller’s
method so as to obtain and utilize only the tire strips pursuant
to the teachings of Pignataro; however, this combination
certainly would not render the method of Miller inoperative as
the appellant seems to believe.
The appellant further argues that appealed claim 1
includes distinctions over Miller beyond those acknowledged by
the examiner and discussed above. In particular, the appellant
contends that Miller contains no teaching or suggestion regarding
the claim 1 features of storing and handling batches of rubber
pieces “in a bulk storage configuration obtained at low cost for
compact storage of residual bulk rubber at bulk storage sites
from which bulk rubber may be reclaimed in due course for
preparation of rubber products” or of “stacking a plurality of
the storable sections into said stacks in compact rubber-to-
rubber interfacing configurations with frictional resistance
against movement of the sections lateral to the pallet platform
area.” Like the examiner, we find this argument unpersuasive.
The first mentioned “bulk storage configuration” feature is
disclosed by Miller at lines 53-67 in column 4 and lines 34-63 in
Appeal No. 2004-0572
Application 09/849,315
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column 7. Moreover, patentee’s disclosure of palletizing banded
stacks of recycled tire material to facilitate warehousing and
handling purposes (e.g., again see lines 46-63 in column 7), when
considered in combination with the teachings of Pignataro, would
have suggested the second mentioned “stacking” feature wherein
tread strip sections are stacked on pallets in rubber-to-rubber
configurations.
With regard to appealed claim 9 which depends from
claim 1, the appellant argues that the applied prior art contains
no teaching or suggestion regarding the here claimed step of
piling said flat sections into stacks “that avoid accumulation of
water when stored outside in the environment.” In support of
this argument, the appellant refers to the Declaration under
37 CFR § 1.132, filed December 9, 2002, in which it is asserted
that Miller’s stacked structure would form cavities, which would
accumulate water, as depicted in the sketch on Declaration
page 2. The appellant also considers this Declaration to evince
that the method of Miller would not yield the previously
mentioned rubber-to-rubber feature of independent claim 1.
Appeal No. 2004-0572
Application 09/849,315
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According to the examiner, this Declaration is
deficient in that it is based on opinion rather than objective
evidence. The examiner’s criticism has merit. For example, the
Declaration appears to be evidentiarily inaccurate in that the
aforenoted sketch depicts Miller’s stacked structure in an
“opposing-spoons” configuration rather than the “nested-spoons”
configuration disclosed by patentee. Even if the sketch were
accurate, the depicted structure seemingly would not accumulate
water since the upper stack would function like an umbrella to
prevent water from accumulating in the cavity shown in the
sketch. Additionally, contrary to the appellant’s belief,
the Declaration sketch plainly depicts a rubber-to-rubber
configuration along the tread strip portions of the stacked
structure, and such a configuration is adequate to satisfy the
corresponding claim 1 feature.
With further regard to this matter, the appellant’s
above discussed reliance upon the § 1.132 Declaration is
misplaced. That is, the appellant relies upon the Declaration
representations concerning the stacked structure resulting from
the method of Miller vis-á-vis the method defined by the appealed
Appeal No. 2004-0572
Application 09/849,315
10
claims. While these representations may be relevant to the issue
of claim novelty, they are of questionable relevance to the issue
of obviousness under consideration. This is because the
teachings of Miller and Pignataro, when combined as proposed,
would have resulted in a method which would have formed stacks
of tire tread strips excluding sidewalls in rubber-to-rubber
configurations, which stacks would have avoided water
accumulation, in accordance with appealed claims 1 and 9.
With further regard to the claim 9 feature of avoiding
water accumulation, the appellant argues that “[t]he elimination
of mosquito breeding grounds [i.e., by avoiding water accumula-
tion] in outside bulk storage sites for reclaimable tire rubber
is a significant breakthrough in the art and this objective of
the invention . . . is not achieved by either cited reference”
(Brief, pages 12-13). This argument lacks convincing merit. It
is well known in the prior art that “old tire casings . . . often
collect stagnant water and serve as breeding grounds for
mosquitoes and other pests” (Miller, column 4, lines 38-42).
While the elimination of such breeding grounds clearly is
desirable, it is not at all clear that such elimination supports
Appeal No. 2004-0572
Application 09/849,315
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a conclusion of nonobviousness (i.e., for a claim which might
be restricted to this desideratum such as appealed dependent
claim 9). This is because the record of this appeal contains no
support for the appellant’s aforequoted assertion that “[t]he
elimination of mosquito breeding grounds in outside bulk storage
sites for reclaimable tire rubber . . . is not achieved by either
cited reference” (Brief, pages 12-13). More particularly, the
§ 1.132 Declaration is insufficient to establish that the stacked
structures of Miller could not avoid water accumulation, and the
Declaration does not even contain an assertion that the stacked
structures of Pignataro could not avoid water accumulation.
In short, the appellant’s argument regarding the
elimination of mosquito breeding grounds is not well taken for a
number of reasons. First, while this result is concededly
desirable, it is clear that not all of the appealed claims are
restricted to the achievement of such a result. See In re Dill,
604 F.2d 1356, 1361, 202 USPQ 805, 808 (CCPA 1979). Second, no
support exists for the appellant’s assertion that the applied
prior art would not be capable of achieving this result. See In
re Merchant, 575 F.2d 865, 869, 197 USPQ 785, 788 (CCPA 1978).
Appeal No. 2004-0572
Application 09/849,315
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Third, the record contains no evidence that such a result would
have been unexpected to an artisan with ordinary skill. See In
re Freeman, 474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973).
For the reasons set forth above, it is our determina-
tion that the reference evidence adduced by the examiner estab-
lishes a prima facie case of obviousness with respect to appealed
claims 1 and 9 which the appellant has failed to successfully
rebut with argument and/or evidence of nonobviousness. For
analogous reasons, we reach the same determination with respect
to appealed independent claim 24. We shall sustain, therefore,
the examiner’s § 103 rejection of these claims as being unpatent-
able over Miller in view of Pignataro.
As for the other dependent claims on appeal, it would
have been obvious for the artisan to load, stack and handle
pallets as required by these claims in view of the previously
discussed palletizing disclosure of Miller (i.e., again see
lines 46-63 in column 7). We do not perceive and the appellant
does not point to any specific feature in any of these claims
which is not taught or would not have been suggested by the
applied prior art. More specifically, the appellant argues that
Appeal No. 2004-0572
Application 09/849,315
13
the examiner has reached a conclusion of obviousness regarding
dependent claims 2, 11, 14 and 15 “without any evidence or
reason” (Brief, page 17). This is incorrect. For example,
Miller’s aforenoted disclosure of palletizing to facilitate
handling with fork lift trucks (see column 7, line 51-53) plainly
would have suggested the claim 14 feature of handling loaded
pallets with a fork lift truck. Similarly, there is no
discernable merit in the appellant’s argument that the features
of claims 10 and 14 are contrary to the applied references
(Brief, page 18). It is clear that Pignataro’s disclosure at
lines 51-64 of column 3 would have suggested removing sidewalls
per claim 10 and stacking without hardware per claim 13.
We also shall sustain, therefore, the examiner’s § 103
rejection of claims 2, 10, 11 and 13-15 as being unpatentable
over Miller in view of Pignataro.
In summary, we have sustained the examiner’s § 103
rejection of all appealed claims.
The decision of the examiner is affirmed.
Appeal No. 2004-0572
Application 09/849,315
14
No time period for taking any subsequent action in con-
nection with this appeal may be extended under 35 CFR § 1.136(a).
AFFIRMED

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
BRG:psb
Appeal No. 2004-0572
Application 09/849,315
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Laurence R. Brown
7412 Spring Village Drive
Apt. 204
Springfield, VA 22150