Ex Parte Belady et al

Patent Trial and Appeal Board

Aug 30, 2016

12928638 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/928,638 12/14/2010
127496 7590 09/01/2016
ICT Law I Technology Group, pllc
918 S. Horton St. Suite 717
220
Seattle, WA 98134
FIRST NAMED INVENTOR
Christian L. Belady
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.
0109-003-013-000000 4606
EXAMINER
DUNCAN, DELAINE M
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
ict_isf_ edcktng_ 127 496@ictlawtech.net
dalecook@ictlawtech.net
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN L. BELADY, ROB BERNARD,
ANGEL SARMENTO CALVO, LARRY COCHRANE, JASON GARMS,
RODERICK A. HYDE, ROYCE A. LEVIEN, ROBERT W. LORD,
RICHARDT. LORD, MARK A. MALAMUD,
JENNIFER MAME POLLARD, JOHN D. RINALDO, JR.,
CLARENCE T. TEGREENE, RENE A. VEGA, LOWELL L. WOOD, JR.,
and FENG ZHAO
Appeal2014-000748
Application 12/928,638
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
TARA L. HUTCHil...JGS, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1, 71, 139, 207, 275, 332, 388, 444, and 500-
510. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-000748
Application 12/928,638
Claim 1 is illustrative:
1. A system, comprising:
a physical product associated with a device-readable
indicator, the device-readable indicator associated with:
a first potential-ecological-impact quantification and with
a first disposal mode identifier describing a first mode of
disposing of at least a first portion of the physical product; and
a second potential-ecological-impact quantification and
with a second disposal-mode identifier describing a second
mode of disposing of at least the first portion of the physical
product.
Appellants appeal the following rejections: 1
1. Claims 1, 71, 139, 207, 275, 332, 388, 444, 500-504, 506-508, and 510
under 35 U.S.C. § 103(a) as unpatentable over Yoder (US
2006/0286518 Al, pub. Dec. 21, 2006) and Bowles (US 8,195,511 B2,
iss. June 5, 2012).
2. Claims 505 and 509 under 35 U.S.C. § 103(a) as unpatentable over
Yoder, Bowles, and Gotthelf (US 2008/0228516 Al, pub. Sept. 18,
2008).
ISSUE
Did the Examiner err in rejecting the claims because of a failure to
establish that there is a reason to combine the teachings of the references to
arrive at the claimed invention?
1 The rejection of claims 1, 71, 139, and 207 under 35 U.S.C. § 112, second
paragraph (pre-AIA) was withdrawn in the Advisory Action mailed on April
10, 2013.
2
Appeal2014-000748
Application 12/928,638
ANALYSIS
The Appellants argue that that the Examiner has not provided any
objective evidence that a person of ordinary skill in the art would have a
reason for combining the references. Specifically, the Appellants argue that
a person of ordinary skill in the art would not be motivated to provide
options to clients within the context of the technologies of Yoder as stated
by the Examiner (Appeal Br. 11 ). We agree.
The Examiner found that Yoder discloses the invention as claimed
except that Yoder does not disclose two disposal modes. The Examiner
found, however that Bowles discloses a second disposal-mode identifier
describing a second mode of disposing of at least the first portion of the
physical product (Final Act. 4).
We find that Yoder discloses a product environmental information
system that keeps track of and reports to the user the amounts of pollutant
associated with products purchased by the user (Yoder ii 28). The system
collects information on the behavior of users in regard to recycling and reuse
and uses the information to produce a personalized profile (id. i-f 31 ). The
profile is used to personalize the user's pollution accounting algorithm to
produce product ratings at point of purchase so that a user can make a
decision about the purchase (id. i-fi-119, 21). In this regard, Yoder's
algorithm accounts for one disposal method of the user but does not disclose
a device-readable indicator that is associated with a second disposal method.
The Examiner relies on column 6, lines 10-26 of Bowles for teaching
this subject matter.
We find Bowles discloses a secondary market and vending system for
a device which enables a user to securely recycle, donate, trade-in and sell
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Appeal2014-000748
Application 12/928,638
portable/mobile electronic devices, such as cell phones. Bowles, col. 2, 11.
7-10. Column 6, lines 10-26 of Bowles discloses that the customer
activates the on-screen menu system and goes through a series of menus to
determine if the phone is eligible for sale or only recycling.
The Examiner concludes:
It would have been obvious for one of ordinary skill in
the art at the time of the invention to combine the teachings of
Yoder and Bowles because of the motivation to provide options
for clients. Yoder teaches a system for calculating product
environmental information. Bowles teaches a system for the
recycling of mobile devices.
Final Act. 5.
We agree with the Appellants that the rejection of the Examiner
does not provide a reason for combining Yoder and Bowles. The only
reason given by the Examiner is to provide options for clients. The
Examiner does not explain what options are referred to. In addition, it
is not clear from the Examiner's rejection how it is proposed that the
teachings of Yoder and Bowles be combined. Yoder discloses that the
disposal behavior of the user in the past is used to create a profile of
the user which in tum is used to personalize a user's pollution
accounting algorithm so that users can evaluate products at the time of
purchase. As such, the user's past disposal behavior is part of the
profile of the user. It is not clear how a second disposal method would
be incorporated into the Yoder system, i.e., it is not clear from the
rejection how a second disposal method would be used in the user's
pollution accounting algorithm, which uses the past behavior of the
user.
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Appeal2014-000748
Application 12/928,638
In view of the foregoing, we will not sustain the Examiner's
rejection of claim 1. We will also not sustain the Examiner's rejection
of each of the remaining claims because each the rejections of each of
the remaining claims is based on the combination of Yoder and
Bowles.
DECISION
The decision of the Examiner is reversed.
REVERSED
5