KONINKLIJKE PHILIPS N.V.Download PDFPatent Trials and Appeals BoardJun 29, 20212020003285 (P.T.A.B. Jun. 29, 2021) 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. 15/035,273 05/09/2016 MARC ANDRE DE SAMBER 2013P01149WOUS 8937 24737 7590 06/29/2021 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus Avenue Suite 340 Valhalla, NY 10595 EXAMINER BECKER, DREW E ART UNIT PAPER NUMBER 1792 NOTIFICATION DATE DELIVERY MODE 06/29/2021 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): katelyn.mulroy@philips.com marianne.fox@philips.com patti.demichele@Philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARC ANDRE DE SAMBER ____________ Appeal 2020-003285 Application 15/035,273 Technology Center 1700 ____________ Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3–6, 8–14, and 16–23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Koninklijke Philips N.V. as the real party in interest. Appeal Br. 3. Appeal 2020-003285 Application 15/035,273 2 The invention relates to a method for preparing a food product and a cooking apparatus for use in a method for preparing a food product. Spec. 1. Claim 1, reproduced from the Claims Appendix to the Appeal Brief, illustrates the invention (formatting added): 1. A method for preparing a food product from a food component in a cooking process, wherein the method comprises: - acquiring food component input information concerning the food component; and - controlling a cooking process parameter of the cooking process as function of (i) the food component input information and (ii) a cooking process model, comprising a mathematical model, wherein the food component input information is historical information, and not real-time empirical information, concerning the food component, and wherein the cooking process model comprises a relation between the food component input information and the cooking process parameter of the cooking process for preparing the food product from the food component, wherein the historical information comprises one or more selected from the group consisting of: (i) growing information of the food component, (ii) harvesting information of the food component, (iii) processing information of the food component, (iv) transporting information of the food component, and (v) storage information of the food component. Independent claim 12 recites a cooking apparatus to practice the method of claim 1. Appellant requests review of the following rejections from the Examiner’s Final Office Action dated August 16, 2019: I. Claims 1, 3–6, 8–14, and 16–23 rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Appeal 2020-003285 Application 15/035,273 3 II. Claims 1, 3–6, 8–14, and 16–23 rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. III. Claims 1, 3–6, 8, 11–13, 16, 17, and 23 rejected under 35 U.S.C. § 103 as unpatentable over Minvielle (US 2013/0273217 A1, published October 17, 2013) and Witt (US 3,732,468, issued May 8, 1973). IV. Claims 9, 10, and 14 rejected under 35 U.S.C. § 103 as unpatentable over Minvielle, Witt, and Bandholz (US 2010/0213187 A1, published August 26, 2010). V. Claims 18 and 20–22 rejected under 35 U.S.C. § 103 as unpatentable over Minvielle, Witt, and Heit (US 2014/0263640 A1, published September 18, 2014). VI. Claim 19 rejected under 35 U.S.C. § 103 as unpatentable over Minvielle, Witt, and Hoffman (US 2010/0310733 A1, published December 9, 2010). Appellant argues independent claims 1 and 12 together in addressing the respective rejections of these claims under 35 U.S.C. §§ 112 (Rejections I and II) and 103 (Rejection III). See generally Appeal Br. Appellant does not address substantively the various rejections of any of the dependent claims 3–6, 8–11, 13, 14, and 16–23. Id. Accordingly, we select claim 1 as representative of the subject matter claimed and decide the appeal as to all grounds of rejections based on the arguments presented for claim 1. Appeal 2020-003285 Application 15/035,273 4 OPINION Rejection I: 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph – Written Description After review of the respective positions the Appellant and the Examiner present, we affirm the Examiner’s rejection of claims 1, 3–6, 8–14, and 16–23 under 35 U.S.C. § 112 (a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, for the reasons the Examiner provides in the Final Office Action and the Answer. We add the following for emphasis. The purpose of the written description requirement in 35 U.S.C. § 112(a) is to “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas- Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991) (citation omitted)). The Examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims. See In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). “[T]he test for sufficiency 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, 598 F.3d at 1351 (citations omitted). This test “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. Appeal 2020-003285 Application 15/035,273 5 Further, the claimed subject matter need not be described in haec verba in the Specification in order for that Specification to satisfy the description requirement. In re Smith, 481 F.2d 910, 914 (CCPA 1973). That is, it is enough that one of ordinary skill in the art would recognize that the inventor invented what is claimed without a claim using the same words as the Specification. Union Oil Co. of Cal. v. Atlantic Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000). However, in order for a disclosure to be inherent, the missing descriptive matter must necessarily be present in the parent application’s Specification such that one skilled in the art would recognize such a disclosure. Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998). Claim 1 Claim 1 recites a method for preparing a food product from a food component in a cooking process comprising controlling a cooking process parameter of the cooking process as a function of a food component input information, wherein the food component input information is historical information, and not real-time empirical information, concerning the food component. The principal premise of the Examiner’s rejection under this ground is that the claim language “not real-time empirical information” lacks written descriptive support in the Specification, as originally filed. Final Act. 2; Ans. 12. In the Answer, the Examiner explains there is no evidence that historical information would exclude “not real-time empirical information,” such as “measured or observed data.” Ans. 13. Specifically, the Examiner Appeal 2020-003285 Application 15/035,273 6 contends that the claimed historical information, as it relates to the steps of growing, harvesting, processing, transporting, and storage of the food, are measurements/observations that could have been “real-time” measurements/observations. Id. Appellant argues the disputed language “clarifies that the food component input information is not gathered during the sequence of the method of claim 1.” Appeal Br. 8. Appellant further argues that the Specification defines historical information as information “gathered before the method of cooking takes place, and thus excludes the real-time empirical information that would be garnered during the cooking process.” Appeal Br. 9 (citing Spec. 7 (describing historical information as “may relate to an entire period from generation up to substantially the cooking process, but may also refer to a much shorter period, such as the information whether or not the food component has been stored (at reduced temperature), etc.”)). Thus, Appellant asserts that one skilled in the art would reasonably infer from the Specification that real-time empirical information is not historical information. Appeal Br. 10. Appellant’s arguments do not identify reversible error in the Examiner’s determination that the disputed language lacks adequate written descriptive support. As Appellant acknowledges, the Specification includes a number of references describing the claim term “historical information.” Appeal Br. 8–10. In one instance, the Specification describes historical information as “precooking parameters.” Spec. 2. In addition, immediately following this description, the Specification describes historical information as “additionally [including] some input parameters [that] might be measured by Appeal 2020-003285 Application 15/035,273 7 the smart cooker itself.” Id. Thus, the Specification appears to describe historical information as including real-time empirical information. Appellants does not explain why this information is not considered as “gathered during the sequence of the method of claim 1” or why it is not considered “real-time empirical information.” Appeal Br. 8. Although Appellant contends page 7 of the Specification provides a definition of “historical information” (Appeal Br. 9; Reply Br. 7), the noted definition is conditioned by the use of the term “may,” which does not limit what constitutes historical information but, instead, merely exemplifies what can be historical information. The noted definition becomes less helpful when taking into account the Specification’s description that appears to include real-time empirical measurements by a smart cooker as historical information. Spec. 2. Appellant’s argument that “real-time empirical information” is exemplified in the Specification is also unavailing. Appeal Br. 10; see Spec. 10. According to the Specification, “historical information also influences the characteristics of the food component, and thus also the final food product.” Spec. 6. The Specification also describes “the user preference input information may include one or more of a food product characteristic, a cooking process start, a cooking process time, a food component characteristic, and (optionally) a further cooking process characteristic.” Id. at 10. Thus, the distinction between historical information and “real-time empirical information” is blurred because both aim to “influence[] the characteristics of the food component, and thus also the final food product.” Id. at 6. Therefore, Appellant has not established adequately that the “missing descriptive matter must necessarily be present in the parent Appeal 2020-003285 Application 15/035,273 8 application’s Specification such that one skilled in the art would recognize such a disclosure.” Tronzo, 156 F.3d at 1159; see also In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Thus, on this record, the Specification, as originally filed, does not show that Appellant was in possession of the scope of the subject matter described in claims 1, 3–6, 8–14, and 16–23. Rejection II: 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph – Indefiniteness After review of the respective positions the Appellant and the Examiner present, we affirm the Examiner’s rejection of claims 1, 3–6, 8– 14, and 16–23 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, for the reasons the Examiner provides. The text of 35 U.S.C. § 112(b) requires “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or joint inventor regards as the invention.” “As the statutory language of ‘particular[ity]’ and ‘distinct[ness]’ indicates, claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). Claims are in compliance with 35 U.S.C. § 112(b) if “the claims, read in light of the specification, reasonably apprise those skilled in the art both of the utilization and scope of the invention, and if the language is as precise as the subject matter permits.” Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986) (citing Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985)). Thus, the test for determining the question of Appeal 2020-003285 Application 15/035,273 9 indefiniteness may be formulated as whether the claims “set out and circumscribe a particular area with a reasonable degree of precision and particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). With regard to the reasonableness standard, one must consider the language in the context of the circumstances. Packard, 751 F.3d at 1313. Language is an imprecise method of drawing boundaries delineating patent rights, thus unreasonable precision cannot be demanded. Id. On the other hand, the claims must notify the public of what they are excluded from making and using. Id. For this reason, while exact precision is not required, an applicant is required to use language as precise as the subject matter reasonably permits. Id. Claim 1 The Examiner finds the claim language “real-time empirical information” is indefinite because the scope of the term is unclear. Final Act. 3. The Examiner explains that historical information would have been considered “real-time empirical information” at the time of measurement. Id. In the Answer, the Examiner maintains the position expressed in the Final Office Action by relying on the reasoning presented for the earlier rejection. Ans. 14–15. Appellant relies on a line of arguments similar to the arguments presented for the rejection under 35 U.S.C. § 112 (a) or 35 U.S.C. § 112 (pre-AIA), first paragraph. Appeal Br. 11–13. We have again considered these arguments in full as they apply to this ground of rejection and find that Appeal 2020-003285 Application 15/035,273 10 Appellant does not identify reversible error in the Examiner’s determination that the claims are indefinite essentially for the reasons we give above. As we discuss above, the Specification appears to describe historical information as including additional input parameters measured by the smart cooker itself. Spec. 2. Thus, the noted portion of the Specification appears to describe historical information as including real-time empirical information. Given this disclosure, the claim 1 language “not real-time empirical information” is indefinite because it is unclear what information is being excluded as historical information. Moreover, Appellant does not explain with any reasonable specificity why the portions of the Specification Appellant relies upon are considered to reasonably circumscribe the scope of protection sought by the disputed claim language, particularly in light of the disclosure on page 2 of the Specification. See Packard, 751 F.3d at 1313 (“Given the role of the applicant in the process, it is a reasonable implementation of the examination responsibility, as applied to § 112[, second paragraph], for the USPTO, upon providing the applicant a well-grounded identification of clarity problems, to demand persuasive responses on pain of rejection.”). Therefore, on this record, one skilled in the art would not be able to determine the metes and bounds of the subject matter of independent claims 1, 3–6, 8–14, and 16–23. Accordingly, claims 1, 3–6, 8–14, and 16–23 are indefinite for the reasons the Examiner provides and we give above. Appeal 2020-003285 Application 15/035,273 11 Prior Art Rejection of Claims 1, 3–6, 8, 11–13, 16, 17, and 23 (Rejection III) After review of the respective positions the Appellant and the Examiner present, we affirm the Examiner’s prior art rejections of claims 1, 3–6, 8, 11–13, 16, 17, and 23 under 35 U.S.C. § 103 for the reasons the Examiner provides. Claim 1 The Examiner finds Minvielle discloses a method for preparing a food product from a food component in a cooking process that comprises acquiring food component input information concerning the food component and using the acquired information to control a cooking process parameter, such as cooking temperature and duration, as a function of the food component information and a cooking process model/protocol including a relation between the food information. Final Act. 4; Minvielle ¶¶ 63, 74, 75, 90, 101, 106, 131. The Examiner finds Minvielle teaches the food component input information can be historical information, as claimed. Final Act. 4–5; Minvielle ¶¶ 75, 90. The Examiner finds that Minvielle differs from the claimed invention in that Minvielle does not recite a cooking process model comprising a mathematical model. Final Act. 5. The Examiner finds Witt teaches it was well known in the art to use a cooking process model comprising a mathematical model to prepare a food component. Final Act. 5; Witt Abstr., Figure 2, col. 4, ll. 46–47. The Examiner finds that, for example, Witt’s cooking process for meat relies on information, such as meat doneness and thickness, for the mathematical model to calculate the cooking time. Final Act. 5; Witt Abstr, Figures 2–4. Appeal 2020-003285 Application 15/035,273 12 The Examiner finds that the thickness of the food would qualify as historical information (processing information of the food component) and the meat doneness would be considered user preference information. Final Act. 5. The Examiner determines it would have been obvious to one of ordinary skill in the art to modify Minvielle’s method for preparing a food product from a food component by incorporating a mathematical model into Minvielle’s cooking process, as taught by Witt, because both are directed to automated cooking systems and the use of a mathematical model would define the relationship between the various food component input information of Minvielle to arrive at the desired food product. Id. at 6. Appellant argues Minvielle does not specifically excludes use of real- time empirical information as claimed. Appeal Br. 15. Appellant’s argument fails to identify error in the Examiner’s determination of obviousness. The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In addition, “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Minvielle discloses the use of historical information provided via a Appeal 2020-003285 Application 15/035,273 13 label. Minvielle ¶¶ 75–77. Minvielle also discloses an additional embodiment where consumer (user) preferences can be inputted to modify the historical information. Id. ¶ 109. Given that the noted disclosure describes different embodiments, one skilled in the art would reasonably infer from these disclosures that Minvielle contemplates an embodiment that relies exclusively on historical information. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (holding that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). In other words, Minvielle encompasses an embodiment where “real-time empirical information” is not inputted to modify the cooking process. Appellant argues Witt relies explicitly on empirical data. Appeal Br. 15; Witt Abstr. Thus, Appellant contends that, given Witt does not exclude the use of empirical data, Witt fails to disclose any mathematical modeling where the food component input information comprises historical information, and not real-time information, concerning the food component, as claimed. Appeal Br. 15. These arguments do not persuade us of reversible error in the Examiner’s determination of obviousness. As the Examiner notes, Witt appears to use the term “empirical” to also include historical information. Ans. 15. For example, Witt discloses the use of data (information) on variations of cooking time with thickness and doneness. Witt col. 4, ll. 43–46. While this information was empirical when generated (id. at col. 3, ll. 1–40), the information was subsequently used to provide a historical graphical information from which to select the necessary parameters for a desired level of cooking, as shown in Witt’s Appeal 2020-003285 Application 15/035,273 14 Figures 3 and 4. Nevertheless, even assuming arguendo that Witt does not teach the use of historical information, Witt still teaches the concept of using information in a mathematical model to control a cooking process. Appellant fails to explain why the type of information (historical v. empirical) would necessarily impact how a mathematical model performs its tasks. Appellant fails to explain why one skilled in the art, using no more than ordinary creativity, would not have been capable of modifying Witt’s mathematical model so as to receive historical information as input. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in the art). Thus, Appellant has not distinguished sufficiently the claimed invention from the teachings of the prior art. Arguments not specifically addressed are deemed not persuasive for the reasons the Examiner presents. Accordingly, we affirm the prior art rejection of claims 1, 3–6, 8, 11–13, 16, 17, and 23 under 35 U.S.C. § 103 for the reasons the Examiner presents and those we give above. Prior Art Rejections IV–VI The Examiner relied on additional secondary references in the separate prior art rejections of claims 9, 10, 14, and 18–22. See generally Final Act. Appellant does not present substantive arguments for these rejections. See generally Appeal Br. Instead, Appellant relies on the previous Appeal 2020-003285 Application 15/035,273 15 arguments presented when discussing claim 1 to address these rejections and did not address the Examiner’s reliance on the respective additional references to address the limitations of the respective limitations of the dependent claims. Id. Because we find Appellant’s previous arguments do not identify reversible error in the Examiner’s determination of obviousness for reasons we give above, we also affirm the prior art rejections of claims 9, 10, 14, and 18–22 under 35 U.S.C. § 103 for those reasons and the reasons the Examiner provides. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–6, 8–14, 16–23 112 Written Description 1, 3–6, 8–14, 16–23 1, 3–6, 8–14, 16–23 112 Indefiniteness 1, 3–6, 8–14, 16–23 1, 3–6, 8, 11–13, 16, 17, 23 103 Minvielle, Witt 1, 3–6, 8, 11–13, 16, 17, 23 9, 10, 14 103 Minvielle, Witt, Bandholz 9, 10, 14 18, 20–22 103 Minvielle, Witt, Heit 18, 20–22 19 103 Minvielle, Witt, Hoffman 19 Overall Outcome 1, 3–6, 8–14, 16–23 Appeal 2020-003285 Application 15/035,273 16 TIME PERIOD FOR RESPONSE 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) (2018). AFFIRMED Copy with citationCopy as parenthetical citation