Elwha LLC

Patent Trials and Appeals Board

Sep 3, 2020

2020002354 (P.T.A.B. Sep. 3, 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.
14/263,828 04/28/2014 Pablos Holman SE2-1197-US 6032
80118 7590 09/03/2020
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
LUDWIG, PETER L
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
09/03/2020 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):
ISFDocketInbox@intven.com
Tyler@constellationlaw.com
admin@constellationlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PABLOS HOLMAN,
RODERICK A. HYDE, MURIEL Y. ISHIKAWA,
JORDIN T. KARE, MAX R. LEVCHIN,
ROYCE A. LEVIEN, RICHARD T. LORD,
ROBERT W. LORD, MARK A. MALAMUD,
NATHAN P. MYHRVOLD, ROBERT C. PETROSKI,
CLARENCE T. TEGREENE, CHARLES WHITMER,
LOWELL L. WOOD JR., and VICTORIA Y.H. WOOD

Appeal 2020-002354
Application 14/263,8281
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
TAWEN CHANG, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 103 as obvious.
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s
decision to reject the claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “The ’828 Application.”
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Elwha LLC,
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STATEMENT OF THE CASE
Claims 202, 301, 232, 233, 237–242, 248–251, and 301–327 stand
rejected by the Examiner under 35 U.S.C. § 103 as obvious in view of
Kolawa et al. (US 8,429,026 B1, issued Apr. 23, 2013), Burritobot,3 Havas
(US 2013/0317921 A1, published Nov. 28, 2013), and Spears (US
2015/0264532 A1, filed Mar. 16, 2015, published Sept. 17, 2015; based on
provisional application No. 61/954,316, filed Mar. 17, 2014). Final Act. 2–3.
There are two independent claims on appeal, claims 202 and 301.
Claim 202 is directed to a method. Claim 301 is directed to a non-transitory
computer-readable medium comprising instructions to the same method
recited in claim 202. Claim 202 is representative and reproduced below,
annotated with bracketed numbers for reference to the specific limitations in
the claim:
202. A food generation method for user preference-based food
item customization, comprising:
[1] receiving a generic food request from a user for one or
more food items;
[2] obtaining one or more food customization preferences
of the user related to generation of one or more customized food
items;
[3] determining that there are at least two automated
customized food generation machines capable of generating the
one or more customized food items in full compliance with the
one or more food customization preferences of the user;

which is wholly owned by The Invention Science Fund II, LLC. Appeal Br.
3.
3 Burritobot: A 3-D Printer That Spits Out Burritos (June 19, 2012),
retrieved on 08/26/2015 from
http://www.fastcodesign.com/1670070/burritobot-a-3-d-printer-that-spits
out-burritos.
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[4] identifying a current location of the user based, at least
in part, on location data from at least one hardware-based sensor
of a mobile device of the user;
[5] obtaining past travel data of the user that indicates one
or more past travel paths of the user;
[6] selecting an automated customized food generation
machine that will generate the one or more customized food
items for the user, including at least selecting, responsive to the
determining that there are at least two automated customized
food generation machines capable of generating the one or more
customized food items in full compliance with the one or more
food customization preferences of the user, an automated
customized food generation machine from the at least two
automated customized food generation machines that is along at
least one past travel path of the user based, at least in part, on the
identifying the current location of the user and based, at least in
part, on the obtaining the past travel data of the user;
[7] presenting one or more indicators capable of being
perceived by the user that indicate to the user the selected
automated customized food generation machine that will
generate the one or more customized food items for the user; and
[8] directing automated generation, by the selected
automated customized food generation machine, of the one or
more customized food items for the user,
[9] wherein at least one of the receiving, obtaining,
determining, identifying, selecting, presenting, or directing is at
least partially implemented using at least one processing device.

ISSUE
The rejection is based on Kolawa, Burritobot, Havas, and Spears.
Appellant argues that the Examiner erred in making the rejection because
Spears does not qualify as prior art. Appeal Br. 6–7. Specifically, Appellant
argues that claims 202 and 301 are described in parent application
14/199,667 (“the ’667 Application”) filed March 6, 2014, “11 days” before
the Spears disclosure (based on provisional application filed March 17,
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2014). Appeal Br. 10. The Examiner finds that limitations 1–3, 5–7, and 9 of
claim 202 are described in parent application 14/200,514 (“the ’514
Application”), but not limitations 4 and 8. Ans. 6–9. The ’514 Application is
a continuation of the ’667 Application and has the same specification. See
’828 Appl. ¶ 5. The ’828 Application claims benefit to the ’667 Application
and the ’514 Application, which is a continuation of the ’828 Application.

CLAIM INTERPRETATION
We begin with claim interpretation. During patent examination, claim
terms are given “the broadest reasonable meaning . . . in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Limitation 4 of claim 202 recites “identifying a current location of the
user based, at least in part, on location data from at least one hardware-based
sensor of a mobile device of the user.” The ’828 Application discloses that
the mobile device can be, for example, a smartphone, tablet computer, or
workstation. ’828 Appl. ¶ 73. GPS data is described in the ’828 Application
as an example of “location data.” Id. ¶ 74. Thus, we interpret the recited
limitation to include identifying the user location using GPS on a
conventional cell phone.
Limitation 8 of claim 202 recites “directing automated generation, by
the selected automated customized food generation machine, of the one or
more customized food items for the user.” We interpret this step, based on
the plain language of the claim, to mean that the customized food item is
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made by the automated customized food generation machine by “automated
generation.”
Appellant does not direct us to where in the ’828 Application the term
“automated generation” is defined. However, we do find useful guidance in
the Application. The ’828 Application describes using 3-D printing
technologies and robotics to generate customized food items “on the spot” in
accordance with the customized preferences of a user. ’828 Appl. ¶¶ 48, 49.
The ’828 Application also describes an “automated system that is capable of
automatically generating one or more customized food items for a particular
user in response to the particular user submitting a simple food request and
without indicating any user customization preferences.” Id. ¶ 52. Examples
of customized food preferences include the preferences to use “beef
ingredients from Kobe Japan and not from Britain” and “sources of
ingredients such as beef having been tested to be free of impurities such as
certain bacterial agents.” Id. ¶ 54. The food generation machines are
described as being “compliant” when they have sufficient quantities of the
preferred ingredients for generating a customized food item. Id. ¶ 55. In
view of these disclosures, we interpret “automated generation” to mean that
the machine automatically generates, without assistance, the customized
food item from the preferred ingredients present in the machine.
Claim 202 does not expressly identify what initiates step [8] of
“directing automated generation” of the customized food item. Figures 5 and
9 of the ’828 Application show operational flow charts, each which recite
“directing automated generation of one or more customized food items in
response to the received generic food request and in accordance, at least in
part, with the obtained user preference information.” See also ’828 Appl.
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¶¶ 198, 199 (emphasis added). Thus, these figures indicate that the
“directing automated generation” of the customized food item can be
initiated as a response to the receipt of the generic food request from a user.
However, the claim is not limited to this specific way of “directing” the
automated generation of the customized food item and, in fact, the claim was
amended during prosecution to omit the “in response to” limitation.4 “[A]
particular embodiment appearing in the written description may not be read
into a claim when the claim language is broader than the embodiment.”
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004). For these reasons, the broadest reasonable interpretation of “directing
automated generation” of the customized food item is that the food
generation machine is directed, by some means, to automatically make the
customized food.

DISCUSSION
As explained above, the only issue before us in this appeal is whether
the Examiner erred in determining that the ’667 Application – a priority
application upon which the ’828 Application is based – does not describe
limitations [4] and [8] of claim 202. If the Examiner erred, then we are
compelled to reverse the obviousness rejection because Spears, one of the
publications cited in the rejection, was published after the priority date of the

4 Original claim 1 recited “directing automated generation of one or more
customized food items in response to the received generic food request and
in accordance, at least in part, with the obtained user preference
information.” ’828 Appl. ¶ 114. The “directing automated generation . . . in
response” to the generic food request language was deleted by amendment
on April 28, 2014.
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’667 Application and therefore would not be prior art to the ’828
Application.

Limitation 4
We agree with Appellant that the ’667 Application describes
limitation [4] of claim 1 of “identifying a current location of the user based,
at least in part, on location data from at least one hardware-based sensor of a
mobile device of the user.” We interpret this limitation to include identifying
the user location using GPS on a conventional cell phone. See Claim
Interpretation section supra. The ’667 Application describes this specific
embodiment:
There are a number of ways to determine or ascertain the
presence of the one or more automated customized food
generation machines 10* within a short walking, mass transit,
and/or driving distance from the current location of the user 13.
For example, such information may be obtained using GPS data
obtained from a mobile device of the user 13 and the known
locations of the automated customized food generation machines
10*[.]
’667 Appl. ¶ 139 (emphasis added). The location of the user by GPS must be
ascertained in order to determine the presence of food generation machines
close to the user’s location. Thus, limitation 4 is described by the ’667
Application.

Limitation 8
As explained in more detail below, we also agree with Appellant that
the ’667 Application describes limitation 8 of claim 1 of “directing
automated generation, by the selected automated customized food generation
machine, of the one or more customized food items for the user.”
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The ’667 Application describes a food request made by a user and
obtaining the user’s customized food preferences. ’667 Appl. ¶¶ 68, 70.5 The
’667 Application also discloses that the user is navigated to a food
generation machine which is capable of generating the customized food
item. ’667 Appl. ¶ 71.6
In addition, the ’667 Application has a similar disclosure to the ’828
Application about 3-D printing of food “on the spot” with the use of
robotics. ’667 Appl. ¶ 47; see also ¶ 78.7 The ’667 Application also
describes an “automated customized food generation machine . . . that is
designed to generate customized food items 22 in accordance with
customization preferences of users.” Id. ¶ 52. Furthermore, the ’667
Application describes “capable automated customized food generation
machines that have the one or more ingredients in the one or more sufficient

5 “Turning particularly now to FIG. 2A, which illustrates an exemplary
screen 200a that includes indicator 210a that provides information that
identifies the customized food being requested (e.g., hamburger) and the
customized food preferences (e.g., Beef from Kobe, Japan, source for the
beef tested for prions, and so forth) of the user 13.” ’667 Appl. ¶ 68.
“[I]ndicator 210b of FIG. 2B identifies the capable machine that was
selected by the user 13 (e.g., ‘Preferred Machine – Shell Gas Station – 245
Main Street’) and the original user preference information (e.g., name of the
food requested-hamburger and customization preferences – beef from Kobe,
Japan, source tested for prions, and so forth).” ’667 Appl. ¶ 70.
6 “Indicator 220c further includes route 232 that shows a route that the user
13 may take in order to get to the location of one of the capable automated
customized food generation machines 10* from the current location of the
user 13.” ’667 Appl. ¶ 71.
7 “In various embodiments, the customized food item production system 320
may include one or more ingredient supplies, and components for
manufacturing customized food items including, for example, robotic
components, 3-D printing components, heating and/or cooling components,
molding components, and so forth.” ’667 Appl. ¶ 78.
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quantities to be able to currently generate the at least one customized food
item in accordance with the one or more customized food preferences of the
user.” ’667 Appl. ¶ 131.
While these passages do not state what directs the machine to generate
the food, the machine clearly does have the capability to generate the food
automatically, as required by limitation 8, because the user is directed to the
“automated customized food generation machine” and the machine has the
ingredients to make the customized food. See also flow chart depicted in
Figure 8C of the ’667 Application.8
In addition to teaching a machine capable of generally customized
food automatically, the ’667 Application explicitly teaches obtaining the
user’s customized food preferences “for use in generating one or more
customized food items.” ’667 Appl. ¶ 90 (emphasis added).9 The ’667
Application also describes an exemplary screen on a computing device, such
as a phone, that enables a user to request a customized food, such as a
hamburger, and then to select a customized food generation machine that has
the ingredients to “currently generate one or more customized food items”
according to the customized food preferences, indicating that the inventors

8 “Presenting the one or more indicators that direct the user to the at least
one automated customized food generation machine that was identified as
having the one or more ingredients in the one or more sufficient quantities to
be able to currently generate the at least one customized food item in
accordance with the one or more customized food preferences of the user.”
’667 Appl., Fig 8C.
9 “[T]he operational flow 500 of FIG. 5 may move to a user preference
information acquiring operation 502 for acquiring user preference
information of a user that indicates . . . customized food preferences of the
user . . . for use in generating . . . customized food items.” ’667 Appl. ¶ 90
(emphasis added).
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contemplated that the food is in fact made. ’667 Appl. ¶¶ 68 (emphasis
added), 70.10 Indeed, the ’667 Application teaches that the reason to direct a
user to such a machine (i.e., a machine that will have the appropriate
ingredient supplies in sufficient quantities) is “in order [for the user] to
consume a customized food item that is in full compliance with the
customization preferences of the user or . . . a substituted customized food
item that is in partial compliance.” Id. ¶ 48. In order for the user to consume
the customized food item, of course, the food item must first be generated.
While these passages do not specifically disclose what causes the
machine to automatically make the requested customized food item, they
also do not limit how the request is made to the machine to generate the
item, and thus provides written descriptive support for limitation 8 of claim
1 as we have interpreted it according to its broadest reasonable meaning.
The Examiner asserts that the disclosure in the ’667 Application only
describes directing a user to automated food generation machine and that
disclosures “focus[ing] on . . . ‘directing automated generation[] by the
selected automated customized food generation machine’” were added only
in the later-filed application 14/261,729 (“the ’729 Application”). Ans. 8.
We agree that the ’667 Application does not have the same disclosure
of Figures 5 and 9 of the ’828 Application that automated generation is in
response to the generic food request. Likewise, in our review of the ’667
Application, including the citations to it provided by Appellant (e.g., Reply

10 “FIG. 2B illustrates an exemplary screen 200b that may be displayed upon
the user 13 selecting ‘option 1’ of screen 200a of FIG. 2A. As a result of
electing option 1, screen 200b is displayed that shows directions (e.g.,
instructions) for traveling to the corresponding capable machine.” ’667
Appl. ¶ 70.
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Br. 4–5), we did not find disclosure that describes what initiates limitation 8
of “directing automated generation” of the customized food item. However,
as discussed in the Claim Interpretation section above, the claims are not
limited to an embodiment in which automatic generation is in response to
the generic food request.
Ultimately, “[t]o satisfy the written description requirement the
disclosure of the prior application must ‘convey with reasonable clarity to
those skilled in the art that, as of the filing date sought, [the inventor] was in
possession of the invention.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522
F.3d 1299, 1306 (Fed. Cir. 2008). Nevertheless, the disclosure need not
provide in haec verba support. Id. Given our claim construction that element
8 does not require any particular means or trigger for “directing automatic
generation . . . of the . . . customized food items,” we find that the ’667
Application would have conveyed with a reasonable clarity to a skilled
artisan that its inventors were in possession of a method comprising such a
step. One of ordinary skill in the art would have recognized that, when the
user is directed to a machine that is able to “currently generate” (’667 Appl.
¶¶ 68, 131) the requested customized food item, the food item would also be
generated as required by the claim. As discussed above, the ’667 Application
teaches that the reason for the user to select a “fully capable machine” (’667
Appl. ¶ 68) on the screen of Figure 2A and to be directed to it by the screen
of Figure 2C of the ’667 Application is to allow the user to consume a food
item in compliance with user preferences. ’667 Appl. ¶ 48.

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Summary
For the foregoing reasons, we reverse the rejection of claims 202, 301,
232, 233, 237–242, 248–251, and 301–327 under § 103.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
202, 301,
232, 233,
237–242,
248–251,
301–327
103 Kolawa,
Burritobot, Havas,
Spears
202, 301,
232, 233,
237–242,
248–251,
301–327

REVERSED