Ex Parte Bandholz et alDownload PDFPatent Trial and Appeal BoardApr 27, 201512393614 (P.T.A.B. Apr. 27, 2015) Copy Citation 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. 12/393,614 02/26/2009 Justin P. Bandholz RPS920080246US1 1065 63638 7590 04/27/2015 STREETS & STEELE - IBM CORPORATION (ROC) 13100 WORTHAM CENTER DRIVE, SUITE 245 Suite 245 HOUSTON, TX 77065 EXAMINER SPURLOCK, BRETT SHANE ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 04/27/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JUSTIN P. BANDHOLZ, JOSEPH E. MAXWELL, PRAVIN PATEL, AND PHILLIP L. WEINSTEIN ____________ Appeal 2013-005135 Application 12/393,614 Technology Center 3700 ____________ Before LINDA E. HORNER, JUSTIN T. ARBES, and RICHARD H. MARSCHALL, Administrative Patent Judges. MARSCHALL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Justin P. Bandholz et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 12–23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and designate our affirmance as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal 2013-005135 Application 12/393,614 2 THE CLAIMED SUBJECT MATTER Appellants’ claimed subject matter relates to “operating an appliance based on cooking instructions embedded in an RFID product tag.” Spec. 1 (Title). Claim 12 is the only independent claim, and is illustrative of the subject matter on appeal. 12. A method comprising: using an RFID antennae of a cooking appliance to read a plurality of cooking instruction sets from an RFID tag associated with a food product that is positioned to be cooked by the cooking appliance; automatically selecting one of the plurality of cooking instruction sets that the cooking appliance is capable of performing; and cooking the food product by controlling the cooking appliance according to the selected cooking instruction set. THE EVIDENCE The Examiner relied upon the following prior art in rejecting the claims on appeal: Clothier US 6,953,919 B2 Oct. 11, 2005 Jeon et al. US 2008/0102175 A1 May 1, 2008 (hereinafter “Jeon”) THE REJECTIONS Appellants seek review of the following Examiner’s rejections: 1. Claims 12–18, 20, 21, and 23 under 35 U.S.C. § 102(b) as anticipated by Clothier. 2. Claims 19 and 22 under 35 U.S.C. § 103(a) as unpatentable over Clothier in view of Jeon. Appeal 2013-005135 Application 12/393,614 3 ANALYSIS Claims 12, 14–16, 18, 20, 21, and 23 Appellants argue that the Examiner erred in rejecting independent claim 12 as anticipated. Appellants also argue that the Examiner erred in rejecting dependent claims 14–16, 18, 20, 21, and 23 as anticipated and that the dependent claims are “allowable for at least the same reasons” as claim 12, without providing any separate argument related to these dependent claims. App. Br. 14. Accordingly, dependent claims 14–16, 18, 20, 21, and 23 stand or fall with claim 12. With respect to claim 12, Appellants argue Clothier does not disclose: (1) a plurality of cooking instruction sets; (2) automatically selecting one of the plurality of cooking instruction sets that the cooking appliance is capable of performing; and (3) a food product. App. Br. 9‒13. We address each argument in turn below. plurality of cooking instruction sets Appellants argue that Clothier fails to disclose the claimed “plurality of cooking instruction sets” because “Clothier’s ‘recipe’ is merely a single set of cooking instructions.” App. Br. 9 (underlining omitted). The Examiner found, and we agree, that Clothier’s recipe discloses a plurality of cooking instruction sets. Appellants’ specification is instructive. It notes that the “cooking instruction sets may include not only power levels, cooking duration, measured humidity, and food temperature, but may also include human intervention instructions.” Spec. para. 22. A portion of Figure 4 depicting a “data structure 54” is reproduced below. Appeal 2013-005135 Application 12/393,614 4 Spec. Fig. 4; para. 27. This portion of Figure 4 depicts a table of cooking instruction sets 52. Id. (“The RFID tab 50 contains a plurality of cooking instruction sets 52 in a data structure 54.”). Each line in the table is therefore its own “set,” and includes information regarding the power level and cooking duration associated with the power output of an appliance. Clothier’s recipe contains steps that are similar to the cooking instruction sets shown in Figure 4 of the application: The recipe may be very long and detailed and may include ingredients and amounts, a sequence for adding the ingredients, stirring instructions, desired vessel type, vessel regulation temperature for each recipe step, maximum power level to be applied to the vessel 28 during each recipe step (some processes may require very gentle heating while others can tolerate high power applications), duration of each recipe step . . . . Clothier, col. 12, ll. 32–40 (emphasis added). The broadest reasonable interpretation of “plurality of cooking instruction sets” in light of the Specification encompasses instruction sets that set forth the power level and duration information to be used by the appliance. Clothier’s disclosure of recipe steps that include the power level of the appliance and duration of each step fall within the scope of this limitation. Appeal 2013-005135 Application 12/393,614 5 automatically selecting one of the plurality of cooking instruction sets Appellants argue that the Examiner failed to support the rejection of claim 12 with an explanation of how Clothier discloses the “automatically selecting” step of claim 12. App. Br. 11–12. We agree that the Final Office Action does not cite any specific portion of Clothier for support. Final Action 2. The Examiner makes findings in the Answer, apparently based on the premise that Clothier’s “multiple cooking modes” are instructions, and the RFID chip automatically initiates one of those multiple modes. Ans. 8. We disagree with the Examiner’s premise. Clothier’s “modes” are not the same as the claimed “cooking instruction sets.” Claim 12 requires cooking instruction sets read from an RFID tag associated with a food product. Clothier’s modes, on the other hand, are selected by the appliance based on the information available regarding the cooking vessel or manual input from the user—they are not read from an RFID tag external to the appliance such as the RFID tag on the food product packaging. Clothier, col. 11, ll. 12–20; col. 16, ll. 1-3. Clothier’s appliance automatically selects Mode 1, for example, before reading any RFID tags. Clothier, col. 11, ll. 21–22. Because Clothier’s “modes” are not the claimed “cooking instruction sets” read from an RFID tag associated with a food product, selecting one of a plurality of modes is not the same as selecting one of the cooking instruction sets. Nevertheless, we do find that Clothier discloses “automatically selecting one of the plurality of cooking instruction sets” as required by claim 12. As discussed above, Clothier’s recipes disclose multiple steps that correspond to the claimed plurality of instruction sets. Clothier also Appeal 2013-005135 Application 12/393,614 6 discloses automatic selection of one of those instruction sets within the recipe followed by performance of the selected step by the appliance. For example, Clothier discloses the following steps: (1) downloading a recipe from an RFID tag associated with the food product to the “hob 44” of the appliance, col. 11, lines 45–51; (2) uploading the recipe to a heating vessel’s RFID tag that has been placed above the hob 44 having a heating coil 46, col. 11, lines 55–62; Fig. 1; (3) before the recipe is completed, moving the heating vessel 28 to a different hob and heating coil, which then reads the RFID tag to determine the appropriate point or step within the recipe at which to start, col. 11, lines 62–66; col. 12, lines 15–22; and (4) continuing the recipe by performing the appropriate next step in the recipe, col. 11, lines 62–66. In other words, Clothier is not limited to performing all of the recipe steps at once; it discloses a system that can perform specific steps—one of the plurality of claimed “cooking instruction sets”—within the recipe. See also Fig. 3 (step 214, “Execute recipe step.”); col. 12, ll. 18–22 (“If the elapsed time indicates that a recipe was recently in progress, then the microprocessor 48 will proceed to complete the recipe after determining an appropriate point or step within the recipe at which to start, as depicted in box 210.”); col. 12, ll. 22–26 (data may indicate “that the heating step should be repeated”); col. 15, ll. 13–25 (appliance prompts user for confirmation that step has been performed; “The assistance . . . preferably includes automatically heating the vessel 28 to a temperature specified by the recipe and maintaining that temperature for a specified period of time.”). Accordingly, we find that the “selecting” step of claim 12 is disclosed by Clothier. Appeal 2013-005135 Application 12/393,614 7 food product Appellants argue that Clothier’s “heating vessel 28” is not the same as the claimed “food product.” App. Br. 12. Although we agree as a general matter that food is not the same as a vessel that holds the food, Clothier nevertheless discloses an “RFID tag associated with a food product” as required by claim 12. Clothier discloses two different RFID tags 24 read by the RFID reader/writer 52 of the appliance. A first tag is directly associated with the food package, and therefore the food product: First, the user scans a food package over the peripheral RFID antenna 54B of the hob 44 in order to transfer the recipe information stored in the package’s RFID tag 24 to the hob’s microprocessor 48. Clothier, col. 15, ll. 45–48; see also col. 11, ll. 45–51 (“A recipe card, food package, or other item provided with its own RFID tag on which is stored the recipe is simply waved over one of the hob’s two antennas 54A, 54B so that the RFID reader/writer 52 can read the attached RFID tag 24 and download the recipe.”). A package holding the food and having its own RFID tag on which the recipe is stored is an “RFID tag associated with a food product” as required by claim 12. In other situations, Clothier’s appliance reads the recipe, or the progress of the recipe, from the RFID tag 24 attached to the vessel 28. While the vessel may not be a “food product,” its RFID tag is still “associated with” the food product. The Specification of the application makes clear that an “RFID tag associated with a food product” includes within its scope RFID tags attached to packaging used to hold the food product during heating. See Spec. paras. 24–26; Figs. 2–4 (depicting RFID Appeal 2013-005135 Application 12/393,614 8 tag 50 on food packaging 44 that holds food product 40 during heating in microwave). Accordingly, both the RFID tag on the “food package” as well as the RFID tag on the “heating vessel 28” of Clothier disclose an RFID tag associated with the food product as required by claim 12. For these reasons, we affirm the rejection of claims 12, 14–16, 18, 20, 21, and 23 as anticipated by Clothier. Claim 13 Appellants argue that the rejection of claim 13 as anticipated by Clothier contains further flaws that warrant reversal. App. Br. 13. Claim 13 requires “reading a performance parameter rating of the cooking appliance from a memory device of the cooking appliance.” Appellants argue that the Examiner’s reliance on the vessel’s temperature sensor 26 and the appliance’s real time clock 56 fail to support the rejection. Id. We agree that these devices themselves do not amount to a parameter rating that is stored in the memory of the appliance. The temperature sensor is located on the vessel 28, not the appliance, and is a structure rather than a “rating” stored within the memory of the appliance. Clothier, col. 8, ll. 14–17; Fig. 1. The real time clock 56 is located on the appliance, but is also a structure rather than a rating stored in memory. In addition, Clothier does not suggest that real time is a performance rating. Id. at col. 8, ll. 25–29; col. 9, ll. 34– 46. Because the Examiner’s findings are insufficient to support the rejection of claim 13 as anticipated by Clothier, we reverse that rejection. 1 1 The Examiner made no findings regarding inherency or obviousness in the event that Clothier does not expressly disclose this limitation, and we decline to make those findings for the first time on appeal. Appeal 2013-005135 Application 12/393,614 9 Claim 17 Appellants argue that the Final Office Action failed to articulate a proper basis for the rejection of claim 17 as anticipated by Clothier. App. Br. 14. We agree. Claim 17 requires a determination of whether the food product is frozen or not frozen, and selecting a cooking instruction set in response to that determination. App. Br. 16. The Examiner found that column 12, lines 31–45 of Clothier disclosed the steps of claim 17. Final Action 3. The cited passage from Clothier merely describes the types of steps that may be included in a recipe, and mentions nothing about determining whether the food is frozen or not frozen, or steps that might be taken in response to that determination. For these reasons, we reverse the rejection of claim 17 as anticipated by Clothier. Claims 19 and 22 Appellants argue that claims 19 and 22 were improperly rejected under 35 U.S.C. § 103(a) as unpatentable over Clothier in view of Jeon, and are patentable “for at least the same reasons” as claim 12, from which they depend. App. Br. 14. Appellants therefore present the same assertions of error with respect to claims 19 and 22 as discussed above with respect to claim 12. We reject these arguments for the same reasons set forth above. For these reasons, we affirm the rejection of claims 19 and 22 under 35 U.S.C. § 103(a) as unpatentable over Clothier in view of Jeon. DECISION The decision of the Examiner to reject claims 12, 14–16, and 18–23 is AFFIRMED. The decision of the Examiner to reject claims 13 and 17 is REVERSED. Because in some instances the fact finding and reasoning Appeal 2013-005135 Application 12/393,614 10 relied on by the Board to sustain the rejections of claims 12, 14–16 and 18– 23 differs from the facts and reasoning relied on by the Examiner, we designate our affirmance of the rejections of these claims as NEW GROUNDS OF REJECTION so as to provide Appellants with a full and fair opportunity to respond to the thrust of the rejections. No inference should be drawn from the Board’s failure to make a new ground of rejection for other claims. 2 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 that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds 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 proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . 2 See 37 C.F.R. § 41.50(b); see also Manual of Patent Examining Procedure (MPEP), 9th ed., rev. Mar. 2014, § 1213.02 (“Since the exercise of authority under 37 CFR 41.50(b) is discretionary, no inference should be drawn from a failure to exercise that discretion.”). Appeal 2013-005135 Application 12/393,614 11 37 C.F.R. § 41.50(b). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) rvb Copy with citationCopy as parenthetical citation