Ex Parte JiDownload PDFPatent Trial and Appeal BoardAug 21, 201412562355 (P.T.A.B. Aug. 21, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RICHARD JI ____________ Appeal 2013-001394 Application 12/562,3551 Technology Center 1700 ____________ 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. Appeal 2013-001394 Application 12/562,355 2 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. Appeal 2013-001394 Application 12/562,355 3 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 Appeal 2013-001394 Application 12/562,355 4 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 Appeal 2013-001394 Application 12/562,355 5 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 Appeal 2013-001394 Application 12/562,355 6 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 Appeal 2013-001394 Application 12/562,355 7 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. Appeal 2013-001394 Application 12/562,355 8 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 Appeal 2013-001394 Application 12/562,355 9 “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.”). Appeal 2013-001394 Application 12/562,355 10 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 cdc Copy with citationCopy as parenthetical citation