Chung Chan et al.

Patent Trials and Appeals BoardJan 22, 2021

2020004298 (P.T.A.B. Jan. 22, 2021)

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. 15/250,359 08/29/2016 Chung Wah Chan AVN001NP / 230593 3520 23444 7590 01/22/2021 ANDREWS KURTH KENYON LLP 600 TRAVIS, SUITE 4200 HOUSTON, TX 77002 EXAMINER KIM, BOBBY YEONJIN ART UNIT PAPER NUMBER 3725 NOTIFICATION DATE DELIVERY MODE 01/22/2021 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): pat-tmk@andrewskurth.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHUNG WAH CHAN and RICARDO J. PEREZ ____________ Appeal 2020-004298 Application 15/250,359 Technology Center 3700 ____________ Before EDWARD A. BROWN, CARL M. DeFRANCO, and NATHAN A. ENGELS, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1, 2, 4–8, and 19–24.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART and enter a NEW GROUND OF REJECTION. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Avangard Innovative LP, as the real party in interest. Appeal Br. 1. 2 Claim 3 is cancelled, and claims 9–18 are withdrawn from consideration. Appeal Br. 15–17 (Claims App.). Appeal 2020-004298 Application 15/250,359 2 CLAIMS Claims 1 and 24 are independent. Claim 1, reproduced below, illustrates the claimed subject matter. 1. An apparatus for baling materials comprising: a stationary baler for baling recyclable materials; a scale with digital signal output; a processor operably connected to said scale; an input device operably connected to said processor; and a label printer mounted on the stationary baler and operably connected to said processor. Appeal Br. 15 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Waitkus US 7,146,294 B1 Dec. 5, 2006 Rivard US 2010/0011717 A1 Jan. 21, 2010 Whitman US 2017/0008671 A1 Jan. 12, 2017 REJECTIONS Claim 23 is rejected under 35 U.S.C. § 112(b) as being indefinite. Claims 1, 5–8, 22, and 23 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Waitkus. Claims 2, 4, and 19–21 are rejected under 35 U.S.C. § 103 as unpatentable over Waitkus and Whitman. Claim 24 is rejected under 35 U.S.C. § 103 as unpatentable over Waitkus, Whitman, and Rivard. Appeal 2020-004298 Application 15/250,359 3 ANALYSIS Indefiniteness — Claim 23 Claim 23 recites that “the processor is configured to record a time at which a recyclable material is fed into the baler and the time at which a completed bale is formed.” Appeal Br. 17 (Claims App.) (emphasis added). The Examiner determines that “[i]t is unclear if ‘the time at which a completed bale [is] formed’ is referring to ‘a time at which a recyclable material is fed into the baler’ or if it is referring to a different time.” Non- Final Act. 4. We construe “the time at which a completed bale is formed” as a different time than “a time at which a recyclable material is feed into the baler.” This difference is apparent from the claim language itself. The Specification also supports this construction. The method of bailing material as depicted in Figure 5 includes step 415 of “feeding material into a baler” and step 420 of “recording the time at which material is fed into the baler,” which steps are performed before step 435 of “forming a completed bale” and step 440 of “recording the time at which the bale is completed.” This time gap is required simply because step 430 of “baling the materials” fed into the baler to form a completed bale takes time to occur. In light of this disclosure, we agree with Appellant that claim 23 is definite. Appeal Br. 12–13. Thus, we do not sustain the rejection of claim 23 under 35 U.S.C. § 112(b). Appeal 2020-004298 Application 15/250,359 4 Anticipation by Waitkus — Claims 1, 5–8, 22, and 23 Claims 1, 5, 6, 8, and 22 As for claim 1, the Examiner finds that Waitkus discloses, in part, a stationary baler (baler 100) for baling recyclable material, a processor (computational device 110), and a label printer mounted on the stationary baler and operably connected to the processor (herein, also “printer limitation”). Non-Final Act. 4 (citing Waitkus col. 4, ll. 61–62, col. 6, ll. 28–39, Figs. 1, 6). Column 6, lines 28–39 of Waitkus discloses: Also, the recording device 112 may be attached to the baler 100 or may be separate from the baler 100. One example recording device is located at a remote location, relative to the baler. Furthermore, the recording device 112 may have a printer to print directly on the bale or on a label which may be affixed to the bale. The printer records information allowing identification of the weight of the bale. (Emphasis added). Appellant contends that Waitkus does not disclose “a label printer mounted on the stationary baler,” as claimed. Appeal Br. 6. According to Appellant, the recitation “‘printer mounted on the stationary baler’ . . . means that the printer is attached to or fixed securely on the baler.” Id. (emphasis added). Appellant reproduces Figure 1, purportedly “showing printer 175 ‘mounted on’ baler 101.” Id. at 6–7. Appellant contends that the above-quoted passage in Waitkus “[a]t best . . . only suggests that the Waitkus printer may be close to the Waitkus baler – not that it is ‘mounted on the stationary baler,’” as claimed. Id. at 6. Additionally, Appellant disagrees with the Examiner’s statement that: Appeal 2020-004298 Application 15/250,359 5 Col. 6 line 28-39 discloses that recording device 112 is attached to the baler 100 . . . [.] Its noted that the claims do not positively recite any direct relationship or mounting structure, therefore because the prior art discloses that the printer 112 can be either attached to, i.e., mounted on or located at a remote location, it meets the limitation that the printer is mounted on as there is no requirement it be mounted directed [sic] on or to. Appeal Br. 6; see Advisory Act. 3. Appellant contends that Waitkus does not disclose that “the printer 112 can be either attached to, i.e., mounted on,” as the Examiner states. Appeal Br. 6. Appellant’s contentions are unpersuasive. Appellant’s Figure 1 shows printer 175 located “on” smart control panel 130. Appellant does not direct us to any original disclosure that printer 175 is “mounted on” baler 101 or smart control panel 130. As for Appellant’s position that “‘printer mounted on the stationary baler’ . . . means that the printer is attached to or fixed securely on the baler’” (Appeal Br. 6 (emphasis added)), Appellant does not identify, nor can we find, any original disclosure that the printer can be attached to, or fixed securely on, the baler. However, even accepting Appellant’s position that “mounted on” can mean “attached to” (Appeal Br. 6), Appellant fails to explain persuasively why Waitkus fails to disclose that the printer is attached to baler 100. We interpret Waitkus’s description that “the recording device 112 may be attached to the baler 100 or may be separate from the baler 100” to mean, that recording device 112 may be “attached to” and not separate from baler 100. As Waitkus also discloses that recording device 112 can have a printer, we are unpersuaded that Waitkus fails to disclose that the printer can be attached to baler 101 when recording device 112 is attached to baler 101. Appeal 2020-004298 Application 15/250,359 6 Accordingly, we sustain the rejection of claim 1, and claims 5, 6, 8, and 22 depending therefrom, as anticipated by Waitkus. Claim 7 Claim 7 depends from claim 1 and recites that “the processor is programmed to notify the operator if the scale signal is outside of a predetermined range.” Appeal Br. 15 (Claims App.). The Examiner states that “the predetermine[d] range is [interpreted] from 0 to just under specified weight indicating fullness, and thus the processor is configured to notify the operator when the scale signal is outside the predetermined range i.e. reaches specified weight, and notifies the operator via recording and ejecting the bale.” Non-Final Act. 4–5 (citing Waitkus col. 7, ll. 15–27, col. 8, ll. 1–23). Appellant contends that the passage at column 7, lines 15–27 of Waitkus “does not pertain to ‘notifying an operator’ or to any ‘predetermined range.’ Instead, it only pertains to recording a final weight.” Appeal Br. 11. According to Appellant, “[a] range requires a minimum and maximum. Waitkus merely marks ‘the measured weight as the final weight’ and has no way to notify the operator if a weight is too low or too high.” Id. at 12. We agree with Appellant. Waitkus discloses that “it may be useful to have a system to notify the recording device 112 when the material in the bailer 100 has reached a final weight.” See Waitkus col. 7, ll. 18–21. This does not disclose notifying an operator about the final weight, or that the final weight corresponds to “[a] scale signal . . . outside of a predetermined range,” as claimed. The Examiner also finds that “Waitkus . . . discloses a label printer which indicates each weight of the bale on each corresponding label. Since Appeal 2020-004298 Application 15/250,359 7 it is notifying the weight of each and every bale on each corresponding label, it would also be indicating when it is outside of a predetermined range.” Non-Final Act. 3 (citing Waitkus col. 6, ll. 35–39). Appellant contends that “this newly cited passage simply refer[s] to printing a final weight on the bale.” Appeal Br. 12. We agree with Appellant that Waitkus’s teaching of printing the weight of a bale on the bale or on a label affixed to the bale does not disclose notifying an operator that a scale signal is outside of a predetermined range. See Waitkus col. 6, ll. 35–39. For example, this passage does not indicate that the operator would even have knowledge of a predetermined range to be able to know when a weight is outside of it. Accordingly, we do not sustain the rejection of claim 7 as anticipated by Waitkus. Claim 23 The Examiner finds that Waitkus discloses the limitation of claim 23. Non-Final Act. 5 (citing Waitkus col. 7, ll. 30–34). Waitkus discloses: One example recording device 112 records and tracks the weight of the bale currently in the baler. Another example recording device 112 records the weight of each finalized bale and a date and time that the bale was produced, or ejected from the baler. Waitkus col. 7, ll. 30–34 (bold face omitted). Appellant contends that this passage “only pertains to recording a date and time that the bale was produced and says nothing about the ‘time at which a recyclable material is fed into the baler.’” Appeal Br. 13. We agree with Appellant. The Examiner responds that “a time” and “the time” recited in claim 23 are concurrent, and thus, Waitkus also discloses “a time at which a Appeal 2020-004298 Application 15/250,359 8 recyclable material is fed into the baler.” Ans. 7. As discussed above, we disagree with this construction. Alternatively, the Examiner finds that “Waitkus . . . discloses that the recording device determines the trend of the ‘projected full time.” Ans. 7 (citing Waitkus col. 7, ll. 31–40, col. 8, ll. 12–24). The Examiner submits that, “in order to determine how much time the baler would take to reach fullness, inherently it is required to determine the time at which a recyclable material is fed into the baler since this time designates the starting time of producing a bale (to thus determine full time).” Ans. 7 (emphasis added). Appellant replies that the passage at column 8, lines 12–24, of Waitkus does not support the rejection. Reply Br. 4. We agree with Appellant. To establish inherency, the claimed limitation must necessarily be present in Waitkus, and mere possibility is insufficient. See, e.g., Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir. 2010) (“A prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.”) (brackets omitted). Although we do not disagree with the Examiner that the time at which a recyclable material is fed into the baler could be used as the starting time of producing a bale, Waitkus does not appear to disclose that such starting time must be known to be able to project the “full time.” For example, it appears possible to project the full time in Waitkus based on using a current weight (“current fullness”) and time and other factors other than the “starting time.” Thus, we do not sustain the rejection of claim 23 as anticipated by Waitkus. Appeal 2020-004298 Application 15/250,359 9 Obviousness over Waitkus and Whitman — Claims 2, 4, and 19–21 Claims 2, 4, and 19–21 depend from claim 1. Appellant does not present separate argument for this rejection. Hence, we sustain the rejection of claims 2, 4, and 19–21 as unpatentable over Waitkus and Whitman. Obviousness over Waitkus, Whitman, and Rivard — Claim 24 As for independent claim 24, the Examiner finds that Waitkus discloses a display screen operably connected to a processor, a minimum weight indicator operably connected to a scale, and a printer attached to the baler and operably connected to the processor. Non-Final Act. 7–8. The Examiner finds that Waitkus does not disclose an imaging device operably connected to a processor and relies on Whitman as teaching this limitation. Id. at 8 (“an imaging device [camera] . . . operably connected to a processor i.e. system in order to identify each material by storing information on the label” (citing Whitman ¶ 189). The Examiner concludes that because both Waitkus and Whitman are concerned with tracking a recycled material using a label, it would have been obvious to one of ordinary skill in the art to modify Waitkus “to add . . . an imaging device to store and retrieve visual information of each recycled material as taught by Whitman.” Id. First, Appellant contends that Waitkus fails to disclose “a printer attached to the baler,” as claimed. Appeal Br. 9. This contention is unpersuasive for the reasons discussed above for the rejection of claim 1. Second, Appellant contests the Examiner’s rationale for modifying Waitkus in view of Whitman—that is, “to add . . . an imaging device to store and retrieve visual information of each recycled material as taught by Appeal 2020-004298 Application 15/250,359 10 Whitman.” Appeal Br. 9–10. Appellant acknowledges that “Whitman employs an imaging device ‘to assist in characterizing the unit of material’” (id. at 10 (citing Whitman ¶ 189)), but contends that “Waitkus has no need for such an imaging device and there is no motivation to make the suggested combination. That is, Waitkus already teaches characterizing the unit of material.” Id. According to Appellant, Waitkus teaches a computational device 110 to “allow the user to input characteristics of the material in the baler 100, or the computational device 110 may have stored characteristics . . . [.] Based on the characteristics of the material in the baler 100, and the measurements of any of the sensors described above, the computational device 110 will determine the weight of the material in the baler 100.” Id.; see Waitkus col. 6, ll. 49–51, 58–62. Accordingly, Appellant contends, because Waitkus already has a way of characterizing the unit of material, the Examiner “has provided no rationale as to why an ordinary artisan would look to Whitman” to modify Waitkus. Id. The Examiner responds that, “although Waitkus has a way of characterizing a material i.e. by user input, Waitkus does not disclose characterizing the visual information of each material.” Ans. 4. Appellant is correct that Waitkus discloses that the computational device 110 can be used to input characteristics of the material that is baled, or the characteristics may be stored in computational device 110. However, the Examiner proposes to modify Waitkus to be able to additionally provide visual information about the material. Appellant’s contention does not persuasively address this reasoning, and thus, does not apprise us of Examiner error. Appeal 2020-004298 Application 15/250,359 11 Third, Appellant contests the Examiner’s finding that Waitkus discloses a minimum weight indicator operably connected to the scale, as claimed. Appeal Br. 10; Non-Final Act. 7 (citing Waitkus col. 7, ll. 15–27, col. 8, ll. 1–23). Appellant points out that the Specification describes that a minimum weight indicator 205 can be used to notify the operator that the bale has reached a minimum predetermined weight threshold. Appeal Br. 10 (quoting Spec. 6, ll. 18–22). Appellant contends that the passage at column 7, lines 15–27 of Waitkus, “simply says there is a notification of final weight. It does not disclose any minimum weight indicator operably connected to the scale.” Id. Appellant’s contention is unpersuasive. The Specification discloses that “[o]nce the bale has reached a minimum predetermined weight threshold, the smart baler 101 notifies the operator. This may be accomplished using minimum weight indicator 205 . . . . The operator can then complete the bale or add additionally material to the bale as long as the bale does not exceed a maximum predetermined weight threshold.” See Spec. 6, ll. 18–22 (emphasis added). Accordingly, the “minimum predetermined weight threshold” would correspond to the “final weight” of the bale when no additional material is added to the bale. Also, Waitkus discloses that the weight of the material in baler 100 can be continuously calculated, and that “the system may automatically mark the measured weight as the final weight when the bale . . . has reached a specified weight.” Waitkus col. 7, ll. 15–27. Appellant does not explain persuasively why the “specified weight” cannot be considered as corresponding to the recited “minimum weight,” as both can be the final weight of the material. Waitkus also discloses that the system indicates the “specified weight” by marking. Appeal 2020-004298 Application 15/250,359 12 Appellant also does not explain persuasively why the marking device in Waitkus is not “operatively connected” to the weight measuring and computational device, where the marking device operates based on information provided by them. Accordingly, Appellant does not apprise us of error in the Examiner’s rejection of claim 24. Thus, we sustain the rejection of claim 24 as unpatentable over Waitkus, Whitman, and Rivard. New Ground of Rejection — Claims 1, 2, 4–8, and 19–24 As discussed above, claim 1 recites “a label printer mounted on the stationary baler.” Appeal Br. 15 (Claims App.) (emphasis added). Claim 24 similarly recites “a printer attached to the baler.” Id. at 17 (emphasis added). The test for sufficiency under the written description requirement of 35 U.S.C. § 112(a) “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). To have “possession,” “the specification must . . . show that the inventor actually invented the invention claimed.” Id. The purpose of the written description requirement is to prevent an applicant from later asserting that he invented that which he did not; the applicant for patent is therefore required to “recount his invention in such detail that his future claims can be determined to be encompassed within his original creation.” Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). Appeal 2020-004298 Application 15/250,359 13 As for claim 1, the Specification does not describe that illustrated printer 175 (or another printer) is “mounted on” baler 101, on some element of baler 101, such as smart control panel 130, or on another baler. Likewise for claim 24, Appellant does not identify, nor can we find, any disclosure that printer 175 (or another printer) can be “attached to” baler 101 (or another baler). Accordingly, Appellant’s disclosure fails to reasonably convey to persons skilled in the art that the inventors had possession of the full scope of subject matter of claim 1 or claim 24 as of the filing date. Thus, we enter a new ground of rejection of claims 1 and 24, and claims 2, 4–8, and 19–23 depending from claim 1, under 35 U.S.C. § 112(a), as failing to comply with the written description. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 23 112(b) Indefiniteness 23 1, 5–8, 22, 23 102(a)(1) Waitkus 1, 5, 6, 8, 22 7, 23 2, 4, 19–21 103 Waitkus, Whitman 2, 4, 19– 21 24 103 Waitkus, Whitman, Rivard 24 1, 2, 4–8, 19–24 112(a) Written Description 1, 2, 4–8, 19–24 Overall Outcome 1, 2, 4–6, 8, 19–22, 24 7, 23 1, 2, 4–8, 19–24 Appeal 2020-004298 Application 15/250,359 14 FINALITY OF DECISION AND RESPONSE This Decision contains a new ground 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: When the Board enters such a non-final decision, [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 prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, [Appellant] may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under §41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01 (9th Ed., Rev. 10.2019, June 2020). Appeal 2020-004298 Application 15/250,359 15 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). AFFIRMED IN PART; 37 C.F.R. § 41.50(b)