Rational Aktiengesellschaft

Patent Trials and Appeals Board

Apr 20, 2020

14415272 - (D) (P.T.A.B. Apr. 20, 2020)

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.
14/415,272 01/16/2015 Peter Wiedemann PRINZ R1875 3135
26812 7590 04/20/2020
HAYES SOLOWAY P.C.
175 CANAL STREET
MANCHESTER, NH 03101
EXAMINER
STAPLETON, ERIC S
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
04/20/2020 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):
KStevens@hayes-soloway.com
TSULLIVAN@HAYES-SOLOWAY.COM
rchriston@hayes-soloway.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER WIEDEMANN, JANA KIRCHGAESSNER,
SASCHA BARBY, GERD FUNK, TORSTEN BRINKMANN,
BRUNO MAAS, FRANK MAREK, ANTON MEINDL,
WILHELM MAERZ, SONJA REICH, LEONORA MINISINI,
WOLFGANG SCHMIDBERGER, and MEIKE STELLJES
Appeal 2019-005154
Application 14/415,272
Technology Center 3700
BEFORE CHARLES N. GREENHUT, JAMES P. CALVE, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, 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 1–20. We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Rational
Aktiengesellschaft. Appeal Br. 3.
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We AFFIRM and enter NEW GROUNDS OF REJECTION in
accordance with 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The claims are directed to displaying cooking parameters. Claims 1
and 11, reproduced below (with our correction to claim 1), are illustrative of
the claimed subject matter:
1. A method of displaying parameters of a cooking process,
the method comprising the steps of displaying [an] information
window within an indicating window and displaying a cooking
intelligence applied temporarily in said information window.

11. A cooking appliance display device in which various
parameters and steps of a cooking process are displayed and
made available to an operator for interaction, wherein an
information window is provided within an indicating window
and currently applied cooking intelligence is displayed in said
information window.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Ording US 2007/0022389 A1 Jan. 25, 2007
Anderson US 2010/0147823 A1 June 17, 2010
REJECTIONS
Claims 11–20 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
Claims 7, 8, and 11–20 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
Claims 11–20 are rejected under 35 U.S.C. § 101 as patent-ineligible.
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Claims 1–20 are rejected under 35 U.S.C. § 102(b) as anticipated by
Anderson.
Claims 1–20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ording and Anderson.
OPINION
Enablement
The Examiner’s enablement rejection is premised on a construction of
claim 11, which gives no weight to the recitation of the “cooking appliance
display device.” Non-Final Act. 1; Ans. 3. The Examiner explains that “the
recitation of a cooking appliance display device in the preamble has not been
given patentable weight because the recitation occurs in the preamble.” Ans.
3. “In general, a preamble limits the invention if it recites essential structure
or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the
claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
808 (Fed. Cir. 2002). Claim 11’s recitation of “[a] cooking display device”
recites essential structure. As the Examiner acknowledges, without that
limitation, there is “no structure in . . . the claim.” Ans. 3. The body of
claim 11 depends on the “cooking appliance display device,” e.g., “various
parameters and steps of a cooking process are displayed,” “an information
window is provided within an indicating window,” and “currently applied
cooking intelligence is displayed in said information window.” See Bicon,
Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“Together, the
preamble and the body of the claim contain a detailed description of the
features of the abutment used in connection with the emergence cuff.”).
Accordingly, we determine that the “cooking display device” recited
in claim 11 limits the scope of the claim.
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Moreover, the Examiner’s rejection lacks the requisite analysis for a
proper enablement rejection. When rejecting a claim for lack of enablement,
the Examiner bears the initial burden of setting forth a reasonable
explanation as to why the scope of protection provided by the claim is not
enabled adequately. In re Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993).
The claimed invention must be enabled so that any person skilled in the art
can make and use the invention without undue experimentation. In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (listing factors to be considered
in determining whether a disclosure would require undue experimentation);
MPEP §§ 2164.01, 2164.01(a). The Examiner makes no attempt to explain
why it would require undue experimentation for one of ordinary skill in the
art to make and/or use the invention. Non-Final Act. 1; Ans. 3.
Accordingly, we do not sustain the Examiner’s decision to reject
claims 11–20 as lacking enablement.
Indefiniteness
The Examiner determines that “[c]laim 7 is incomplete such that the
scope of the claim is not definite.” Non-Final Act. 2. That is the entire
explanation provided in the rejection. Appellant responds that “[t]he text of
claim 7 was inadvertently and erroneously removed from the text of the
pending claims shown in the Response filed December 28, 2017.”2 Appeal
Br. 11.
The Response referenced by Appellant included a reproduction of
claim 7 as follows:

2 Hereinafter referred to as “Response.”
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7. (Original) The method of claim 1 wherein said information
window is displayed at different positions within said indicating
window as a function of at least one parameter of
There was no punctuation at the end of the claim, and we understand
Appellant to contend that the claim has not been amended, and that the end
of the claim was simply omitted in error in that Response. Appeal Br. 11;
Reply Br. 1–2. There is no dispute that original claim 7 recites:
7. (Original) The method of claim 1 wherein said information
window is displayed at different positions within said indicating
window as a function of at least one parameter of said cooking
process.
Nevertheless, in the Answer, the Examiner again asserts that “as noted in the
Argument, the pending version of claim 7 is missing text such that it is
submitted that claim 7 is incomplete such that the scope of the claim is not
definite.” Ans. 4.
The validity of the Examiner’s rejection appears to hinge on whether
the amendment to claim 7 in Appellant’s Response was entered. The
amendment to claim 7 in the Response was not in compliance with 37
C.F.R. § 1.121(c), first, because the claim listing identified claim 7 to be in
its “Original” form when, in fact, it was not. The amendment to claim 7 was
additionally not in compliance with 37 C.F.R. § 1.121(c)(2) because it failed
to indicate deleted matter in excess of five consecutive characters by strike-
though. Thus, this rejection is ultimately predicated on a procedural
question of whether the Examiner failed to recognize and deny entry of a
non-compliant amendment to the claims. See MPEP § 714(II)(F). That is
not sufficient basis to sustain the Examiner’s decision to reject claim 7 as
indefinite on the merits. See In re Hengehold, 440 F.2d 1395, 1403 (CCPA
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1971) (“There are a host of various kinds of decisions an examiner makes in
the examination proceeding — mostly matters of a discretionary, procedural
or nonsubstantive nature — which have not been and are not now appealable
to the board”).
The Examiner additionally rejects claims 8 and 18 based on the
recitation of “particularly” and “substantially.” Non-Final Act. 2. Claim 8
depends from claim 7, and ultimately from claim 1, and recites that “a
distance of said information window from a lower edge of said indicating
window depends from a temperature and particularly is substantially
proportional to said temperature.” Claim 18 includes similar language, but
ultimately depends from claim 11.
The Examiner explains that “[t]he scope of these claims is not definite
due to the word ‘particularly;’ it is not definite if the language following
‘particularly’ is necessarily part of the claimed subject matter.” Non-Final
Act. 2. The Examiner additionally explains that “the relative term,
‘substantially,’ is not definite as recited in claims 8 and 18 such that it is not
definite what is meant by ‘substantially proportional to said temperature.’”
The basis for the Examiner’s rejection appears to be MPEP §§ 2173.05(b)–
(d). MPEP § 2173.05(b) explains, for example, that “[a]cceptability of the
claim language depends on whether one of ordinary skill in the art would
understand what is claimed, in light of the specification.”
A claim is properly rejected as indefinite if, after applying the
broadest reasonable interpretation in light of the specification, the metes and
bounds of a claim are not clear because the claim contains words or phrases
whose meaning is unclear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir.
2014) (per curiam); see also Ex parte McAward, Appeal No. 2015-006416,
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2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the
approach for assessing indefiniteness approved by the Federal Circuit in
Packard). Appellant has the opportunity to resolve ambiguities during
prosecution. See, e.g., McAward, at *6–7.
“Appellant submits that these terms would be readily understood by
one skilled in the art, especially upon consideration of the subject
disclosure.” Appeal Br. 12–13; Reply Br. 2 (including similar statement).
Appellant, however, fails to identify any evidence, such as portions of the
Specification, supporting such an understanding, or even explain why one
skilled in the art would have such an understanding. That is, Appellant does
nothing to resolve the ambiguities asserted by the Examiner. Rather,
Appellant only provides an unsupported allegation (i.e., attorney argument),
which does not apprise us of error. For example, if we give meaning to each
limitation in the claims, it is not clear what meaning the term “particularly”
adds to the claims, resulting in a potential ambiguity asserted by the
Examiner. As for the phrase “substantially proportional,” we note that the
Specification provides no guidance, as it does not even use the term
“proportional,” other than in original claim 8 and what is essentially a
reproduction of that claim in the “Brief Description of the Invention.” Spec.
4:5–7.
For the reasons set forth above, we are not apprised of error in the
Examiner’s determination that claims 8 and 18 are indefinite.
“Claims 11–20 are [rejected as] indefinite because the claims are
directed to a device but recite no structure such that the scope and structure
of the device is not definite.” Non-Final Act. 2. This, like the enablement
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rejection, appears to be premised on improperly failing to give the recitation
of the “cooking appliance display device” any weight.
For the reasons set forth above, the Examiner has failed to provide
sufficient basis to sustain the rejection of claims 11–20 as indefinite.
Patent Eligibility
The Examiner rejects claims 11–20 as patent-ineligible. The entire
rejection is set forth below.
Claims 11–20 are rejected under 35 U.S.C. 101 because the
claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without
significantly more. Claim(s) 11–20 is/are directed to a cooking
appliance display device. The claim(s) does/do not include
additional elements that are sufficient to amount to significantly
more than the judicial exception because the claims are directed
to a device but recite no structure. It appears that claims 11–20
are directed to an abstract idea of an unspecified device carrying
out a process.
Non-Final Act. 2–3. In the Answer, the Examiner clarifies that the rejection
is premised on failing to give the recitation of “cooking appliance display
device” any weight. See Ans. 5 (“the device is recited in the preamble and
the windows recited in the body are digital, no[t] structural”). Again, as
discussed with respect to the enablement rejection, it is improper to
disregard the recitation of the “cooking appliance display device.”
For at least these reasons, the Examiner has failed to provide a
sufficient basis to sustain the rejection of claims 11–20 as patent-ineligible.
Anticipation and Obviousness
Claim 1 recites “[a] method of displaying cooking parameters” and
claim 11 recites “[a] cooking appliance display device.” Claims 1 and 11
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each recite “a cooking intelligence” that is displayed in an information
window. Appellant’s sole dispute with the Examiner’s rejection of claims
1–20 as anticipated by Anderson, or obvious over Ording and Anderson, is
based on whether Anderson teaches that the particular type of information
displayed on its display device is “cooking intelligence.” See Appeal Br.
15–21. There is no dispute that Anderson teaches a cooking appliance that
includes a display having an “information window” that is “within an
indicating window,” with cooking information displayed within the
“information window.” See, e.g., id. at 18.
Neither claim 1, nor claim 11, recites how the “cooking intelligence”
is determined or any further steps using that “cooking intelligence” in any
way. Indeed, in this application, Appellant does not purport to have
invented a cooking appliance that operates based on “cooking intelligence.”
Rather, Appellant’s claims and Specification are simply directed to
displaying “cooking intelligence” information to a user. Appellant notes that
“[t]he term ‘cooking intelligence’ is explicitly defined in the specification at
the bottom of page 2.” Appeal Br. 16. We agree.
The Specification explains:
“Cooking intelligence” in this connection means an alteration,
proceeding in an automated manner, in the cooking process
based on an automatic detection of a[] parameter, the alteration
in the cooking process being calculated by the controller of the
cooking appliance as a function of the parameter ascertained.
Spec. 2:29–32.
One simple example of a cooking intelligence is an adaptation of
the cooking time (or target time) as a function of the detected
caliber of a piece of meat to be cooked. If the cooking
intelligence applied is displayed, as is provided according to the
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invention, it is comprehensible to an operator why “suddenly”,
that is, after the caliber has been recognized, a later finishing time
is displayed for the current cooking process than at the beginning
of the cooking process.
Id. 3:4–10. Simply stated, the displayed “cooking intelligence” recited in
the claims is an indication of a cooking parameter so that a user can
understand what is occurring during the automated cooking process. In one
particular example, the displayed “cooking intelligence” may be a
pictogram. Id. 11:7–8. That is, the displayed “cooking intelligence” is
simply information conveyed to a user.
Our reviewing court “ha[s] long held that if a limitation claims
(a) printed matter that (b) is not functionally or structurally related to the
physical substrate holding the printed matter, it does not lend any patentable
weight to the patentability analysis.” In re Distefano, 808 F.3d 845, 848
(Fed. Cir. 2015) (citing In re Gulack, 703 F.2d 1381, 1384–85 (Fed. Cir.
1983)); see also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). In
Gulack, the court explained that “[w]here the printed matter is not
functionally related to the substrate, the printed matter will not distinguish
the invention from the prior art in terms of patentability,” and “[a]lthough
the printed matter must be considered, in that situation it may not be entitled
to patentable weight.” Gulack, 703 F.2d at 1385. “[T]he relevant question
is whether ‘there exists any new and unobvious functional relationship
between the printed matter and the substrate.’” King Pharm., Inc. v. Eon
Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (citations omitted). “The
rationale behind this line of cases is preventing the indefinite patenting of
known products by the simple inclusion of novel, yet functionally unrelated
limitations.” Id.
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Each of the claims before us, whether the method of claim 1, or the
apparatus of claim 11, requires displaying information (i.e., “cooking
intelligence”) on a display device. The sole purpose of displaying that
information in the claims is to convey information to a person. Therefore,
under the first step of the printed matter analysis, we determine that the
claim limitations in question are directed toward printed matter because it is
“matter claimed for what it communicates,” i.e., that cooking intelligence is
applied. See Distefano, 808 F.3d at 848–49.
For similar reasons, we also determine that this recitation is
insufficient to create the requisite functional relationship to the substrate.
See In re Jones, 373 F.2d 1007, 1012 (CCPA 1967) (“. . .‘printed matter’ in
the sense in which that term has heretofore been used [] indicate[s] various
sorts of indicia whose primary purpose is the conveying of intelligence to a
reader”). As explained in the Specification, “information that is relevant in
connection with the cooking process step currently in progress can be
indicated in the information window” and “is indicated in the form of text,
images or combined information T and which relates to the cooking
intelligence of the cooking process.” Spec. 6:5–9. One example is provided
where “the fact that the cooking duration was adjusted based on the detected
caliber of the food to be cooked could be displayed in the information
window 20 (cooking intelligence III).” Id. at 6:10–12.
Further examples in the Specification make clear that the displayed
information simply allows the user to understand what is happening during
cooking. See Spec. 10:4–6 (“[A] signal is given to an operator by an arrow
or similar visual markings that a further cooking process step was
incorporated into the process chain.”); id. at 10:11–15 (“[A]n operator can
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instantly and intuitively perceive whether at present a high cooking chamber
temperature or a low cooking chamber temperature is used. It is also
possible to adapt the color of the area, for example blue for low temperature
and red for high temperature.”); id. at 11:5–11 (“In all of the embodiments,
when the currently applied cooking intelligence is displayed, it may also be
indicated in the information window 20 which ‘finding’ the cooking
intelligence has obtained based on the sensors queried by it. It may be
specified, for example (in the form of a pictogram, in plain writing or in
some other form), which caliber has been detected, that a partial load was
detected, that a particular state of the food was detected, such as, e.g., deep-
frozen), that a particular product was detected, etc.”).
To assign patentable weight to the particular information conveyed by
the recited “cooking intelligence” would mean that each novel type of
information displayed and conveyed is sufficient to warrant a separate patent
even if the remainder of the invention is unchanged. That is, the same
cooking appliance could be repeatedly patented simply by changing what
type of information is depicted on its display. To do so, we would need to
ignore our reviewing court’s concerns with repeated patenting noted above.
See King Pharm., 616 F.3d at 1279 (“The rationale behind this line of cases
is preventing the indefinite patenting of known products by the simple
inclusion of novel, yet functionally unrelated limitations.”) (citations
omitted). We decline to do so.
Because the only issue disputed in the Examiner’s rejections under
§§ 102 and 103 concerns whether the particular content of the information
displayed in Anderson can be considered “cooking intelligence,” which is
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not entitled to patentable weight, we are not apprised of error in the
Examiner’s rejections.
The Examiner did not consider the particular content of the
information conveyed by “cooking intelligence” to be printed matter when
rejecting claims 1–20 under 35 U.S.C. §§ 102 and 103. We designate our
affirmance as new grounds of rejection in order to provide Appellant an
opportunity to respond to our determination that the particular content of the
“cooking intelligence” information recited in claims 1–20 is not entitled to
patentable weight.
CONCLUSION
The Examiner’s rejection under 35 U.S.C. § 101 is reversed. The
Examiner’s rejection of claims 7 and 11–20 under 35 U.S.C. § 112 is
reversed and the rejection of claims 8 and 183 under § 112 is affirmed. The
Examiner’s rejections under 35 U.S.C. §§ 102 and 103 are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
11–20 112,
¶ 1
Enablement 11–20
7, 8, 11–
20
112,
¶ 2
Indefiniteness 8, 18 7, 11–20
11–20 101 Eligibility 11–20
1–20 102(b) Anderson 1–20 1–20

3 As explained above, the Examiner provides two separate bases for
rejecting claim 18 under 35 U.S.C. § 112, second paragraph. We affirmed
one, and reversed the other.
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1–20 103(a) Ording, Anderson 1–20 1–20
Overall
Outcome
1–20 1–20
TIME PERIOD FOR RESPONSE
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides that Appellant, 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.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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; 37 C.F.R. § 41.50(b)