Ex Parte Waite et al

Patent Trial and Appeal Board

Jun 29, 2018

13690574 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/690,574 11130/2012 Frederick Waite
23506 7590 07/03/2018
GARDNER GROFF GREENWALD & VILLANUEVA. PC
2018 POWERS FERRY ROAD
SUITE 800
ATLANTA, GA 30339
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5B27.l-010 1293
EXAMINER
MINCARELLI, JAN P
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patent@gardnergroff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERICK WAITE, DREW SIGMUND JR., and
MATTHEW PERRY
Appeal2016-007505 1
Application 13/690,5742
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
1 We make reference to the Specification ("Spec.," filed Nov. 30, 2012),
Appeal Brief ("Appeal Br.," filed Jan. 26, 2016), and Reply Brief
("Reply Br.," filed Aug. 1, 2016), as well as the Examiner's Final Office
Action ("Final Act.," mailed Aug. 31, 2015) and Answer ("Ans.," mailed
June 2, 2016).
2 According to the Appeal Brief, the real party in interest is BACE, LLC.
Appeal Br. 1.
Appeal2016-007505
Application 13/690,574
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant3 appeals from the
Examiner's decision to reject claims 33, 35, and 37-39. We have
jurisdiction under § 6(b ).
We AFFIRM.
SUBJECT MATTER ON APPEAL
The invention relates to methods of recycling. Spec. i-f 1. Claim 33,
reproduced below, is the sole independent claim on appeal and
representative of the claimed subject matter.
33. A recycling method that is particularly suitable for old
corrugated containers (OCC) at retailers, the method comprising:
compacting multiple pieces of discarded OCC from at a
retail site into a fixed bale of OCC at that retail site in which the
compacted bale is a solid rectangle that has dimensions of about
58 by 30 by 45 inches and that weighs about 1250 pounds;
while concurrently weighing the OCC in the compactor
and independently of the force that the compactor applies to the
material or to the bale;
assigning an individual identifier to the fixed bale in which
the identifier includes at least the weight of the identified bale;
and
sending the fixed identified bale in an intermodal
container to a destination selected from the group consisting of
shippers and mills without any rebaling step.
3 We use the term "Appellant" herein to refer to any and all appellants
collectively.
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REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Bolstad
Waitkus, Jr. ("Waitkus")
Moran et al. ("Moran")
us 5,174,198 Dec. 29, 1992
US 7,146,294 Bl Dec. 5, 2006
US 2014/0122347 Al May 1, 2014
WasteCare Corporation, 60" VERTICAL BALERS Comparison Chart
(Aug. 13, 2010), http://www.wastecare.com/Products-Services/Balers/
Balers_Large_ Vertical_Bal ... [http://www.web.archive.org ... ]
("WasteCare").
Green Recycling, Services - Recycling Card/Cardboard/DCC (Old
Corrugated Cardboard) (June 18, 2012), http://www.greenrecycling.co.uk/
servicesrecyclingcardboard [http://www.web.archive.org ... ]
("GreenRecycling").
REJECTIONS
The Examiner rejects the claims on appeal as follows:
claims 33, 35, and 37-39 under 35 U.S.C. § 112, second paragraph, as
indefinite;
claim 33 under 35 U.S.C. § 103(a) as unpatentable over Waitkus,
WasteCare, and Bolstad;
claim 35 under 35 U.S.C. § 103(a) as unpatentable over Waitkus,
WasteCare, Bolstad, and GreenRecycling; and
claims 37-39 under 35 U.S.C. § 103(a) as unpatentable over Waitkus,
WasteCare, Bolstad, and Moran.
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ANALYSIS
Indefiniteness
Independent claim 33 recites a compacted bale having "dimensions of
about 58 by 30 by 45 inches and that weighs about 1250 pounds." The
Examiner determines the phrases "about 58 by 30 by 45 inches" and "about
1250 pounds" are indefinite. Final Act. 2-3. According to the Examiner,
the claims do not define these terms of degree, and the Specification does
not provide a standard for ascertaining the requisite degree. Id. at 3.
Appellant does not refute that neither the claims nor the Specification
expressly defines "about." Rather, Appellant argues these terms are definite
because the Specification describes the relative dimensions of a bale in the
context of a standard intermodal container. Appeal Br. 6-7 (citing
Spec. i-fi-17-9, 37, 39); Reply Br. 2--4. Appellant's argument is not
convmcmg.
The Specification describes that a standard intermodal container is
40 feet long, 8 feet wide and 8 1/2 feet high, with a maximum load of about
30,000 kg. Spec. i17. The Specification also describes "compacted OCC
bales that (i) have dimensions of about 58 x 30 x 45" and (ii) weight about
1250 pounds, will fill a standard container most efficiently." Id. i19. The
Specification further describes that the weight of a bale is understood "to
include an appropriate tolerance or uncertainty rather than the level of
precision that might be expected, for example in bench top chemistry
experiments" (id. i137), and that the most typical shape of bale "is a solid
rectangle (again used generally with an understood tolerance)" (id. i139).
Although we appreciate that the Specification references tolerances
for the dimensions and weight of a bale, the Specification does not describe
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what these tolerances are. The mere reference to a tolerance does not
provide clarity as to the meaning of "about."
Moreover, the Specification describes the dimensions and weight of a
bale relative to the efficient filling of a standard intermodal container, but, as
the Examiner correctly determines, the Specification does not describe how
a standard intermodal container is efficiently filled with bales. Ans. 3. The
dimensions and weight capacity of a standard intermodal container, i.e.,
40 feet long, 8 feet wide, 8 1/2 feet high and about 30,000 kg, are much
larger than the dimensions and weight of a bale, i.e., about 58 x 30 x 45
inches and about 1250 pounds, and the Specification does not describe how
many bales are placed into a standard container to efficiently fill it.
Similarly, although the bale and standard intermodal container are
rectangular in shape, they have different proportions. Yet, the Specification
does not describe how the bales are oriented within the standard container to
efficiently fill it. Consequently, the Specification's description of the
efficient filling of a standard container does not provide a standard for
determining the dimensions and weight of a bale.
In view of the foregoing, it is unclear what constitutes "about 58 by 30
by 45 inches" and "about 1250 pounds." Appellant does not apprise us of
error in the Examiner's determination that these terms render the claims
indefinite, and we sustain the rejection.
Obviousness
Independent claim 33
In rejecting independent claim 33, the Examiner finds Waitkus
discloses the claimed invention, except for the OCC bale being "a solid
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rectangle that has dimensions of about 58 by 30 by 45 inches and that
weighs about 1250 pounds" and sending the OCC bale "in an intermodal
container." Final Act. 4---6. To teach a bale having the recited shape and
weight, the Examiner relies on WasteCare (id. at 6-9), and to teach sending
a bale in an intermodal container, the Examiner relies on Bolstad (id. at 9--
10).
Appellant argues Bolstad does not disclose "compacting multiple
pieces of discarded OCC from at a retail site into a fixed bale of OCC," as
claimed. Appeal Br. 8-9. The Examiner, however, relies on Waitkus, not
Bolstad, for teaching this limitation. Final Act. 4 (citing Waitkus 3: 12-16,
3:34--36, 6:40-51); Ans. 5. Appellant does not address the Examiner's
finding that Waitkus discloses this limitation, and, therefore, does not
apprise us of error.
Appellant also contends Bolstad does not teach sending the OCC bale
in an intermodal container as independent claim 33 requires because Bolstad
does not disclose corrugated cardboard. Appeal Br. 9. Appellant's
argument is not convincing because the Examiner is not relying solely on
Bolstad for teaching this limitation, but rather on the combined teachings of
Waitkus and Bolstad. Ans. 5. Namely, the Examiner finds that Waitkus
discloses a bale of OCC (Final Act. 4 (citing Waitkus 3:34--36)), and that
Bolstad teaches sending baled material in an intermodal container (id. at 9
(citing Bolstad 5:38---62)). Appellant does not address the Examiner's
proposed combination, and, consequently, does not apprise us of error.
Appellant further contends Bolstad does not teach sending the OCC
bale in an intermodal container as independent claim 33 requires, but instead
teaches how to determine the volume that would best fill an intermodal
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container while maintaining a low density. Appeal Br. 9. Appellant's
argument is not persuasive of error.
"[I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom." In re Preda, 401 F.2d 825, 826 (CCPA 1968). Here, Bolstad
teaches "the formation of a group of bales 22 of uniform density for
packaging in a transport such as a trailer, shipping container, or rail car."
Bolstad 5:38--41. Bolstad further teaches "forming such bales to facilitate
shipment" (id. at 1 :7), and "[a]fter the bale has been transported the
restraints are removed whereupon the bale about doubles in volume" (id. at
7:3-5). Given that Bolstad discloses packaging bales in a transport, i.e.,
intermodal container, for shipping and removing packaging restraints after
shipping, a person of ordinary skill in the art would understand Bolstad
teaches sending a bale in an intermodal container. Accordingly, Appellant
does not apprise us of error in the Examiner's finding that Bolstad teaches
sending a bale in an intermodal container.
Appellant contends Bolstad teaches away from the claimed invention.
Appeal Br. 9-10; Reply Br. 4--5. More specifically, Appellant asserts
Bolstad is directed to making low-density bales and, therefore, teaches away
from producing high-density bales designed to maximize an intermodal
container's carrying capacity, as claimed. Appeal Br. 10; Reply Br. 5.
Appellant's argument is not convincing at least because it is not aligned with
the Examiner's rejection. The Examiner is not proposing to modify the
teachings of Bolstad to form high-density bales. Rather, the Examiner is
proposing to modify the teachings of Waitkus' method of recycling OCC to
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incorporate Bolstad's teaching of sending baled material in an intermodal
container. Final Act. 9; Ans. 6-7.
Furthermore, Appellant acknowledges that "Bolstad is specifically
directed at the recycling of cellulose fibers, rather than OCC" (Appeal Br. 9
(citation omitted)), and the cited portions of Bolstad Appellant relies upon as
evidence of teaching away regard bulk cellulose fibers. Namely, Bolstad
teaches that one drawback of compressing bulk cellulose fiber is the fiber's
subsequent inability to regain its prior absorbency. Bolstad 1:38--43.
Bolstad further teaches forming bales of cellulose fibers having the lowest
possible density while making the most efficient use of a transport's volume
and payload capacities. Id. 2:30-33. As such, even if Bolstad teaches away
high-density sheets of cellulose fibers, Bolstad does not teach away from
forming the bales of OCC recited in the claims.
Appellant additionally argues the Examiner's replacement of a
previously relied-upon reference, Newsome et al. (US 2012/0152133 Al,
pub. June 21, 2012), with Bolstad demonstrates non-obviousness.
Appeal Br. 11-12. According to Appellant, Newsome and Bolstad have
entirely different goals-increasing bale density versus decreasing bale
density, and the substitution of a reference with a contradictory reference
demonstrates the non-obviousness of the claimed subject matter. We,
however, do not find Appellant's argument persuasive of error at least
because the Examiner has not relied upon Newsome or Bolstad for teaching
bale density. Ans. 7. We also agree with the Examiner's response to this
argument (id.) and adopt it as our own.
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In view of the foregoing, Appellant does not apprise us of error in the
Examiner's rejection of independent claim 3 3. We, therefore, sustain the
rejection.
Dependent claims 35 and 37-39
Appellant does not present arguments for claims 35 and 37-39 apart
from the arguments for independent claim 33. Accordingly, we sustain the
rejections of these claims for the same reasons discussed above with respect
to independent claim 33.
DECISION
The Examiner's decision to reject claims 33, 35, and 37-39 under 35
U.S.C. § 112, second paragraph, is affirmed.
The Examiner's decision to reject claims 33, 35, and 37-39 under 35
U.S.C. § 103(a) 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). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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