Ex Parte Ji

Patent Trial and Appeal Board

Aug 21, 2014

12562355 (P.T.A.B. Aug. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RICHARD JI
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Appeal 2013-001394
Application 12/562,3551
Technology Center 1700
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Before CHUNG K. PAK, TERRY J. OWENS, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 3, 5–8, and 10–12. We have jurisdiction under
35 U.S.C. § 6.

1 According to Appellant, the Real Party in Interest is Becton, Dickinson and
Company. App. Br. 3.
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STATEMENT OF THE CASE
Claims 1 and 7 are representative of the subject matter on appeal and
are set forth below (emphasis added):
1. A method of making a recycled medical device comprising:
obtaining plastic resin from a sterile shredded plastic medical waste
material recovered from a mixture of plastic medical waste containers
containing medical waste in which shredding and sterilizing are
performed simultaneously, shredding and sterilizing are performed
with only water and/or steam; and
forming the plastic resin into the recycled medical device.

7. The method of claim 1, wherein the used plastic medical waste
containers comprise polypropylene and polyethylene, and greater than
60% of the polypropylene and polyethylene is recovered.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Held et al. US 5,833,922 Nov. 10, 1998

THE REJECTION
1. Claims 1, 3, 5–8, and 10–12 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Held.2

2 After final rejection, Appellant amended claim 1 to incorporate the
limitation of claim 4 and cancelled claim 4. The Examiner’s Answer
withdraws the rejection of claim 4 and, in maintaining the rejection of claim
1, does not rely upon the additional reference (Aubert, US 2003/0170157)
that was cited against claim 4. Answer 2. We therefore need not consider
Appellant’s argument addressing the rejection of claim 4 as applied to claim
1. App. Br. 13–14.
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ANALYSIS
Appellant argues claims 1, 3, 5–8, and 10–12 as a group, presenting
separate arguments only for independent claim 1 and dependent claim 7.
Accordingly, claims 1, 3, 5, 6, 8, and 10–12 stand or fall together, and we
need not consider the separate patentability of any claims other than claims 1
and 7. 37 C.F.R. § 41.37(c)(iv).
Claim 1
The Examiner finds, and Appellant does not contest, that Held
discloses a method of making a recycled medical device comprising
shredding and sterilizing medical waste and transforming the reclaimed
plastic into useful material such as a medical device. Answer 2–3; App. Br.
10–11, quoting 10-20-2012 Office Action at 5. Appellant focuses on the
claim elements set forth in bold above, arguing that these aspects of claim 1
are not disclosed by and would not have been obvious in view of Held. We
find that the Examiner’s rejection sets forth a prima facie case of
obviousness, which has not been convincingly rebutted by Appellant.
Appellant initially argues that “Held does not teach or suggest
shredding and sterilizing being performed simultaneously.” App. Br. 11.
That argument fails to address whether it would have been obvious in view
of Held to perform shredding and sterilization simultaneously, as asserted by
the Examiner:
The selection of any order of performing process steps, as
determined by case law (See MPEP 2144.04 IV. C.), is prima
facie obvious in the absence of new and unexpected results.
Therefore, it would have been obvious to one of ordinary skill
in the art to have shredded and sterilized the plastic medical
waste either sequentially or simultaneously, as a matter of
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preference, and have obtained the same final recycled plastic
material and recycled medical device.
Answer 5; see also Final Rejection 3–4. The Examiner’s reasoning is
consistent with precedent, for one of ordinary skill in the art, from reading
the disclosure of Held, would have had a reasonable expectation of
successfully forming the same shredded and sterilized plastic medical waste
regardless of performing shredding and sterilizing of plastic medical waste
sequentially or simultaneously. New Wrinkle, Inc. v. Watson, Comr. Pats.,
96 USPQ 436, 437 (D.C. Cir. 1953) (“Where the result accomplished is
substantially the same, steps taken concurrently or simultaneously are the
equivalent of and not patentable over steps taken successively.”); In re
Burhans, 154 F.2d 690, 692 (CCPA 1946) (where a combination of prior art
suggests the claimed process, reordering the steps is not patentable absent
proof in the record that the order of performing the steps produces a new and
unexpected result). Appellant makes no attempt to compare the results of
the claimed process with the results of the process disclosed in Held, nor to
show that any improvement would be unexpected. See In re Freeman, 474
F.2d 1318, 1324 (CCPA 1973) (to show unexpected results, applicant must
establish: “(1) that there actually is a difference between the results obtained
through the claimed invention and those of the prior art, . . . and (2) that the
difference actually obtained would not have been expected by one skilled in
the art at the time of invention”) (citation omitted).
Next, Appellant argues that “Held does not use either water or steam
in the shredding process.” App. Br. 11. That argument fails to address the
Examiner’s position that it would have been obvious in view of Held to
combine the shredding and sterilization steps such that water is present
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during both steps. Answer 6. Although Held discloses adding water to the
medical waste after it has been shredded, Held, 5:48–52, we find no error in
the Examiner’s reasoning that it would have been obvious to one of ordinary
skill in the art to combine the shredding and sterilization steps, such that
water is also present during the shredding step. Appellant does not
challenge the Examiner’s identification of a reason or motivation that would
have prompted a person of ordinary skill in the art to combine the steps:
“For instance, a single device that does both processes may save space and
the cost of buying two pieces of equipment; or first performing
decontamination followed by shredding can keep the shredder always
decontaminated.” Answer 5. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 417–22 (2007) (teachings can be combined based on design needs,
market pressures, and common sense without an express teaching,
suggestion, or motivation).
Instead, Appellant argues that combining Held’s shredding and
sterilizing steps would be “irrational” and “unpredictable” because, in the
hypothetical combination, “the shredding equipment would need to be in the
RF heating chamber,” which could lead to electrical shorts and uneven
heating. App. Br. 12–13. The Examiner responds as follows:
HELD teaches to heat the waste and water to 90 – 100°C (6:57-
64) using RF frequencies, wherein the water is disclosed to be
used in order to disperse the heat created by the radio
frequencies (5:48–53, 10:50-54). HELD further explains how
water helps to heat other materials, like plastics, that are not
heated as well or as rapidly by RF fields as water, and how any
metal present can also help in spreading the heat, as Appellant
points out (see HELD, 5:66–67, 6:1–56). In other words, Held
can control the temperature to 90 – 100°C when waste that
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includes metals is present. Therefore, heating in the presence of
a shredding device, if made of metal, can just as well be
controlled.
Answer 7–8. Although both Appellant and the Examiner rely on Held’s
disclosure as support for their positions, we find that a preponderance of the
evidence supports the Examiner. We agree with the Examiner that Held’s
teachings would not have dissuaded one of ordinary skill in the art from
combining the shredding and sterilization steps in order to achieve the space
and cost benefits one of ordinary skill in the art would have reasonably
expected from such combination as the Examiner suggests.
Although Appellant argues that “substantial engineering and
construction” would be required to combine these steps, Reply Br. 6,
Appellant does not assert that any technical difficulties that might arise
would have been insurmountable by one of ordinary skill in the art. Absent
such an assertion, we “take account of the inferences and creative steps that
a person of ordinary skill in the art would employ,” and find that a person of
ordinary skill in the art would overcome those difficulties within their level
of skill. KSR, 550 U.S. at 418. We further note that nothing in Appellant’s
claims precludes the shredding and sterilization steps from being spatially
separated, such that any metal equipment used for shredding the waste is not
exposed to the means for sterilization. There is no showing that such spatial
separation would require more than ordinary skill to implement or would not
have overcome the technical difficulties posited by Appellant.
Appellant’s argument based on Ex parte Iversen is not persuasive.
Reply Br. 6, citing 2008 WL 4359803 (BPAI Sept. 23, 2008). In contrast to
that case, here the Examiner has explained why a person of ordinary skill in
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the art would have viewed it as technically feasible to carry out Held’s
shredding and sterilization steps simultaneously. Answer 7–8. We find the
Examiner’s explanation is sufficient to establish a prima facie case that shifts
the burden to Appellant to submit rebuttal evidence, such as evidence of
unexpected results. Appellant has failed to carry that burden, and therefore
we sustain the rejection.
Lastly, Appellant argues that, even if Held’s shredding and
sterilization steps were combined, “the combination would still not render
claim 1 obvious” because “Held shreds with rotating blades, not with only
water and/or steam.” App. Br. 13. Appellant’s argument is inconsistent
with the meaning of the phrase “only water and/or steam” that is apparent
from Appellant’s Specification. As support for this claim element,
Appellant directs us to paragraph 22 of the Specification. App. Br. 7.
There, the Specification describes a process in which waste, steam and water
are continuously circulated through a tank equipped with a pump grinder,
cutter and impeller, and the waste is cut into small pieces as it circulates
through the system. Spec. ¶ 22. In this forum, claim terms must be given
their “broadest reasonable construction consistent with the specification.” In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). We
agree with the Examiner that the phrase “only water and/or steam” requires
that the shredding and sterilizing be carried out in the presence of only water
and/or steam and no other chemicals, but that it does not exclude the use of
equipment, such as grinders, cutters and impellers, to shred the waste.
Answer 3, 4, 6, 8. Appellant’s argument depends on an incorrect claim
construction, and it fails to demonstrate error in the Examiner’s rejection.
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Claim 7
Claim 7 depends from claim 1 and further specifies that greater than
60% of the polypropylene and polyethylene is recovered from the recycled
medical containers. In support of the obviousness rejection over Held, the
Examiner asserts:
The claim has been interpreted as a purification, wherein more
than 60% of polypropylene is claimed to be recovered. HELD
teaches 99.999%, thus meeting the claim. Moreover, whatever
goes into HELD’s shredder and sterilizer also comes out. If
polypropylene goes in, 100% of it comes out, thus reading on a
recovery, as Appellant argues. Alternatively, one of ordinary
skill in the art would have known to maximize the recovery by
making sure to remove all the sterilized waste from the
shredding and sterilizing devices with reasonable expectation of
success.
Answer 9. We agree with Appellant that the “60%” recited in Appellant’s
claim 7 relates to a different parameter than the “99.999%” disclosed in Held
and relied upon by the Examiner. App. Br. 13; Reply Br. 8. Whereas claim
7 is directed to the percent recovery of polypropylene and polyethylene,
Held discloses the purity of the resulting polypropylene. Held, 11:32–34
(“The polypropylene coming from the plastics separator 84 is as much as
99.999% pure polypropylene.”).
Nevertheless, we agree with the Examiner that the subject matter of
Appellant’s claim 7 is implicitly taught by Held. Answer 9; see In re Preda,
401 F.2d 825, 826 (CCPA 1968) (“in 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”). The Examiner’s finding that
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“whatever goes into HELD’s shredder and sterilizer also comes out” is
consistent with the disclosure of Held. Answer 9. Held’s disclosed process
provides no opportunity for loss of material during the shredding or
sterilization steps. Such losses would be inconsistent with Held’s expressly
stated objective to render the medical waste “incapable of causing an
infection.” Held, 4:32–33. Held’s additional steps for converting the
disinfected waste into reclaimed plastic have the goal of maximizing the
recovery of plastic, including polypropylene. Held, 11:1 (“The non-metallic
fragments remain on the belt . . .”); id. at 11:14–15 (In the elutriator, “[t]he
plastic particles segregate in one definable layer . . .”); id. at 11:30–31 (“The
plastics separator 84 is highly effective in selecting for polypropylene . . .”).
Although Held does not quantify the percent recovery of plastic, we
nevertheless agree with the Examiner that Held’s implicit disclosure of near
100% recovery is sufficient to establish a prima facie case that Appellant’s
lower claimed threshold – greater than 60% recovery – would have been
obvious. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir.
2012) (affirming obviousness rejection where “there was no indication that
obtaining the claimed dimensions was beyond the capabilities of one of
ordinary skill in the art or produced any unexpectedly beneficial
properties”); see also In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here
the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine
experimentation.”).

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CONCLUSION OF LAW AND DECISION
The rejection 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).

AFFIRMED

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