Ex parte DEL GIORNO

Board of Patent Appeals and Interferences

Sep 2, 1998

08088136 (B.P.A.I. Sep. 2, 1998)

Application for patent filed July 7, 1993.1
Claim 19 was amended subsequent to the final rejection.2
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOSEPH DEL GIORNO
__________
Appeal No. 96-3157
Application 08/088,1361
__________
ON BRIEF
__________
Before HAIRSTON, McQUADE and NASE, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 2, 6, 8 to 12 and 19 to 21. Claims 32
Appeal No. 96-3157
Application 08/088,136
2
to 5, 7 and 13 to 18 have been withdrawn from consideration
under
37 CFR § 1.142(b) as being drawn to a nonelected invention.
We REVERSE.
Appeal No. 96-3157 Page 3
Application 08/088,136
BACKGROUND
The appellant's invention relates to a method of making
individualized restaurant menus. An understanding of the
invention can be derived from a reading of exemplary claim 1,
which appears on pages 1-2 of the appendix to the appellant's
brief.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Madsen et al. (Madsen) 4,954,954 Sept. 4, 1990
Claims 1, 2, 6, 8 to 12 and 19 to 21 stand rejected under
35 U.S.C. § 101 as being directed to non-statutory subject
matter.
Claims 1, 2, 6, 8 to 12 and 19 to 21 stand rejected under
35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the
subject matter which the appellant regards as the invention.
Claims 20 and 21 stand rejected under 35 U.S.C. § 112,
Appeal No. 96-3157 Page 4
Application 08/088,136
fourth paragraph, as being of improper dependent form for
failing to further limit the subject matter of a previous
claim.
Claims 1, 2, 6, 8 to 12 and 19 to 21 stand rejected under
35 U.S.C. § 103 as being unpatentable over Madsen.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 24, mailed January 29, 1996) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 22, filed December 18, 1995) and reply brief
(Paper No. 25, filed March 29, 1996) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art reference, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
Appeal No. 96-3157 Page 5
Application 08/088,136
determinations which follow.
Initially we note that the entry of the appellant's
amendment after final relates to a petitionable matter and not
to an appealable matter. See Manual of Patent Examining
Procedure
Appeal No. 96-3157 Page 6
Application 08/088,136
(MPEP) §§ 1002 and 1201. Accordingly, we will not review the
issue raised by the appellant on pages 5 and 21-22 of the
brief.
The non-statutory subject matter issue
We will not sustain the examiner's rejection of claims 1,
2, 6, 8 to 12 and 19 to 21 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Section 101 of title 35, United States Code, provides:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of
this title.
The Supreme Court has held that Congress chose the
expansive language of 35 U.S.C. § 101 so as to include
"anything under the sun that is made by man." Diamond v.
Chakrabarty, 447 U.S. 303, 308-09 (1980).
This perspective has been embraced by the Federal
Circuit:
The plain and unambiguous meaning of 101 is that any new
and useful process, machine, manufacture, or composition
Appeal No. 96-3157 Page 7
Application 08/088,136
of matter, or any new and useful improvement thereof, may
be patented if it meets the requirements for
patentability set forth in Title 35, such as those found
in ' 102, 103, and 112. The use of the expansive term
"any" in 101 represents Congress's intent not to place
any restrictions on the subject matter for which a patent
may be obtained beyond those specifically recited in 101
and the other parts of Title 35. . . . Thus, it is
improper to read into 101 limitations as to the subject
matter that may be patented where the legislative history
does not indicate that Congress clearly intended such
limitations. [In re Alappat, 33 F.3d 1526, 1542, 31
USPQ2d 1545, 1556 (Fed. Cir. 1994) (in banc)]
As cast, 35 U.S.C. § 101 defines four categories of
inventions that Congress deemed to be the appropriate subject
matter of a patent; namely, processes, machines, manufactures
and compositions of matter. The latter three categories
define "things" while the first category defines "actions"
(i.e., inventions that consist of a series of steps or acts to
be performed). See 35 U.S.C. § 100(b) ("The term 'process'
means process, art, or method, and includes a new use of a
known process, machine, manufacture, composition of matter, or
material.").
The Supreme Court has identified three categories of
subject matter that are unpatentable, namely "laws of nature,
natural phenomena, and abstract ideas." Diamond v. Diehr, 450
Appeal No. 96-3157 Page 8
Application 08/088,136
U.S. 175, 185 (1981). Ideas are not abstract if they are
reduced to a practical application. State St. Bank & Trust v.
Signature Fin. Group, Appeal No. 96-11327 at 10 (Fed. Cir.
1998).
In this case, the claims under appeal are clearly drawn
to a process and thus constitute statutory subject matter
under
35 U.S.C. § 101. In addition, we note that, contrary to the
opinion of the examiner, the claims under appeal constitute a
practical application of making an individualized restaurant
menu for a customer desirous of avoiding ingestion of selected
ingredients. Lastly, we note that there is no business method
exception to 35 U.S.C. § 101. See State St. Bank & Trust v.
Signature Fin. Group, supra, at 14-18.
For the reasons set forth above, the decision of the
examiner to reject claims 1, 2, 6, 8 to 12 and 19 to 21 under
35 U.S.C. § 101 is reversed.
The indefiniteness issue
We will not sustain the examiner's rejection of claims 1,
Appeal No. 96-3157 Page 9
Application 08/088,136
2, 6, 8 to 12 and 19 to 21 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the
appellant regards as the invention.
Claims are considered to be definite, as required by the
second paragraph of 35 U.S.C. § 112, when they define the
metes and bounds of a claimed invention with a reasonable
degree of precision and particularity. See In re Venezia, 530
F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
Appeal No. 96-3157 Page 10
Application 08/088,136
The examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is whether the claims meet the
threshold requirements of clarity and precision, not whether
more suitable language or modes of expression are available.
Some latitude in the manner of expression and the aptness of
terms is permitted even though the claim language is not as
precise as the examiner might desire. If the scope of the
invention sought to be patented cannot be determined from the
language of the claims with a reasonable degree of certainty,
a rejection of the claims under 35 U.S.C. § 112, second
paragraph, is appropriate.
Furthermore, appellants may use functional language,
alternative expressions, negative limitations, or any style of
expression or format of claim which makes clear the boundaries
of the subject matter for which protection is sought. As
noted by the Court in In re Swinehart, 439 F.2d 210, 160 USPQ
226 (CCPA 1971), a claim may not be rejected solely because of
the type of language used to define the subject matter for
which patent protection is sought.
Appeal No. 96-3157 Page 11
Application 08/088,136
With this as background, it is clear to us that we cannot
sustain the examiner's bases for this rejection (answer, pp.
8-9). In that regard, we regard the appellant's use of the
phrase "perceptible to the customer" to define the metes and
bounds of a claimed invention with a reasonable degree of
precision and particularity. As to the examiner's question as
to how presenting a menu to the customer (presumably the menu
prepared by the claimed method) would safeguard the customer
against ingestion of selected ingredients, we refer the
examiner to the appellant's specification. In this regard, we
note that the claims under appeal use the term safeguard, not
the term prevent.
For the reasons set forth above, the decision of the
examiner to reject claims 1, 2, 6, 8 to 12 and 19 to 21 under
35 U.S.C. § 112, second paragraph, is reversed.
The improper dependent claim issue
We will not sustain the examiner's rejection of claims 20
and 21 under 35 U.S.C. § 112, fourth paragraph, as being of
improper dependent form for failing to further limit the
subject matter of a previous claim.
Appeal No. 96-3157 Page 12
Application 08/088,136
The fourth paragraph of section 112 of title 35, United
States Code, provides:
Subject to the following paragraph, a claim in dependent
form shall contain a reference to a claim previously set
forth and then specify a further limitation of the
subject matter claimed. A claim in dependent form shall
be construed to incorporate by reference all the
limitations of the claim to which it refers.
The examiner determined (answer, p. 10) that dependent
claims 20 and 21 were directed to preparing and delivering the
meal to the customer and fail to define any further method
steps for making an individual restaurant menu.
We agree with the appellant that claims 20 and 21 are
proper dependent claims under the fourth paragraph of 35
U.S.C. § 112. We consider a claim that incorporates by
reference all of the subject matter of another claim, that is,
the claim is not broader in any respect, to be in compliance
with the fourth paragraph of 35 U.S.C. § 112. See Ex parte
Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Int. 1992) and Ex
parte Moelands, 3 USPQ2d 1474 ((Bd. Pat. App. & Int. 1987).
Thus, there is nothing per se wrong with adding processing
steps as in claim 20 or defining the output device as a
Appeal No. 96-3157 Page 13
Application 08/088,136
We note that claim 21 inadvertently sets forth3
"Apparatus according to Claim 1" instead of "Method according
to Claim 1." The appellant should amend claim 21 in due
course.
printer as claim 21 . Accordingly, dependent claims 20 and 213
which recite further limitations of the subject matter claimed
in their respective independent claims are in compliance with
the fourth paragraph of 35 U.S.C. § 112.
Appeal No. 96-3157 Page 14
Application 08/088,136
For the reasons set forth above, the decision of the
examiner to reject claims 20 and 21 under 35 U.S.C. § 112,
fourth paragraph, is reversed.
The obviousness issue
We will not sustain the examiner's rejection of claims 1,
2, 6, 8 to 12 and 19 to 21 under 35 U.S.C. § 103.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 9 F.2d 1013, 1016, 173 USPQ
560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
Appeal No. 96-3157 Page 15
Application 08/088,136
to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based
on
§ 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
With this as background, we analyze the prior art applied
by the examiner in the rejection of the claims on appeal.
Madsen discloses an apparatus for generating a balanced
calorically limited menu. Madsen's invention relates to a
method and apparatus for preparing a series of daily menus
that include foods having preselected characteristics. The
menus are prepared from a list containing numerous food items,
the caloric content of each item, which food group each item
Appeal No. 96-3157 Page 16
Application 08/088,136
resides, and the applicability of each item for a particular
meal. The
daily menus are created from the items in the list in a manner
such that each meal in each menu only includes items which are
applicable to that meal, each meal has items from each of a
preselected number of food groups, and each meal has a
predetermined caloric content. After the menus are formed,
selected items in the menus can be replaced, with each
replacement item being applicable for the particular meal,
being in the same food group, and having the same caloric
content as the item that is replaced. The apparatus is an
electronic digital computer which is programmed to
automatically generate the menus for a particular gender and
desired weight loss of the user, and then provide replacement
items for particular items in the menu which satisfy the
foregoing characteristics at the request of the user.
The examiner determined (answer, p. 11) that
it would have been obvious to one of ordinary skill in
the art at the time of the invention to modify Madsen et
al's method by inquiring the customer and selecting
certain desired recipes not containing the avoided
ingredients instead of selecting certain desired food
items as in Madsen et al since selecting certain desired
food items the user is avoiding certain undesired or
Appeal No. 96-3157 Page 17
Application 08/088,136
unwanted food items and is effectively avoiding certain
ingredients contained therein.
We agree with the appellant (brief, pp. 18-21) that
Madsen does not suggest the claimed invention. In that
regard, it is our view that the examiner's determination of
obviousness set forth above is a classic case of impermissible
hindsight since there is no factual evidence in the rejection
as to why one would have made the proposed modifications to
Madsen. In addition, we note that Madsen contains no
suggestion of loading the names of all ingredients used by the
restaurant into a database in a computer or inquiring of the
customer which ingredients the customer wishes to avoid.
For the reasons set forth above, the decision of the
examiner to reject claims 1, 2, 6, 8 to 12 and 19 to 21 under
35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 2, 6, 8 to 12 and 19 to 21 under 35 U.S.C. §§ 101,
103 and 112, second paragraph, is reversed; and the decision
of the examiner to reject claims 20 and 21 under 35 U.S.C. §
Appeal No. 96-3157 Page 18
Application 08/088,136
112, fourth paragraph, is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JVN/gjh
Appeal No. 96-3157 Page 19
Application 08/088,136
Christopher B. Garvey
Nolte, Nolte and Hunter
350 Jericho Turnpike
Jericho, NY 11753
APPEAL NO. 96-3157 - JUDGE NASE
APPLICATION NO. 08/088,136
APJ NASE
APJ McQUADE
APJ HAIRSTON
DECISION: REVERSED

Prepared By: Gloria Henderson
DRAFT TYPED: 01 Sep 98
FINAL TYPED: