Ex Parte Koether

Board of Patent Appeals and Interferences

Aug 6, 2010

09946461 (B.P.A.I. Aug. 6, 2010)

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.
09/946,461 09/04/2001 Bernard G. Koether 62774CIP(50264) 6327
21874 7590 08/06/2010
EDWARDS ANGELL PALMER & DODGE LLP
P.O. BOX 55874
BOSTON, MA 02205
EXAMINER
ALVAREZ, RAQUEL
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
08/06/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BERNARD G. KOETHER
___________

Appeal 2009-006246
Application 09/946,461
Technology Center 3600

____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006246
Application 09/946,461

2
STATEMENT OF THE CASE
Bernard G. Koether (Appellant) seeks our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claims 1-20. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE. 2

THE INVENTION
This invention is “a bi-directional communication network which
provides real-time computer-aided diagnostics, asset history, accounting
records, maintenance records and energy management” in the food service
industry. Specification 6:27-31.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system for automatically monitoring the
performance of equipment related manual tasks
involving equipment used in food preparation
comprising:
at least one piece of equipment used in food
preparation, said piece of equipment having a
microprocessor-based controller;
at least one sensor capable of sensing a
parameter related to the manual performance by an

2 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed Apr. 24, 2008) and the Examiner’s Answer (“Answer,” mailed May 7,
2008).

Appeal 2009-006246
Application 09/946,461

3
individual of at least one equipment-related
manual task;
a control computer implementing control
logic operative to automatically monitor the
performance of the at least one equipment-related
manual task; and
a communication network allowing
communication between the control computer and
one or both of the at least one piece of equipment
and the sensor.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Energize your market with Smart House. 56 Professional Builder and
Remodeler 135 (Jan 1992). [Hereinafter, Smart House].
The Examiner took official notice that “it is old and well known at the
time of Applicant’s invention to have used the Internet for data transmission
in order to provide quick and easier access to the information.” Answer 3-4.
The Examiner took official notice that “fryers are old and well known
kitchen appliances used for frying.” Answer 4.
The Examiner took official notice that “it is old and well known in the
computer related arts or the like to use visual displays in order to allow
viewing of the information.” Answer 4.
The Examiner took official notice that “databases are well known in
the computer related arts to contain records of a particular type together with
a collection of operations that facilitate searching, sorting, updating,
recombination and similar activities.” Answer 4-5.
The following rejection is before us for review:
Appeal 2009-006246
Application 09/946,461

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1. Claims 1-20 are rejected under 35 U.S.C. § 103(a) over Smart
House

ISSUE
The issue is whether claims 1-20 are unpatentable under 35 U.S.C.
§ 103(a) over Smart House. Specifically, the issue is whether Smart House
would have led one of ordinary skill in the art to the claims for a system that
monitors the performance of an equipment-related manual task.

ANALYSIS
The Appellant argues that Smart House does not teach the monitoring
of a manual task but instead teaches automating manual tasks (Br. 5-10) and
that,
The Examiner inappropriately extrapolates the teaching
of monitoring the breakout of a fire within the Smart House, to
make obvious, the monitoring of a parameter associated with
manual performance of an appliance related task, because such
task would be necessary to prevent failures, fires and the like at
the equipment.
Br. 5.
In the rejection, the Examiner found that Smart House teaches a piece
of food preparation equipment with a microprocessor-based controller,
sensors, a controller computer, and a communication network. Answer 2-3.
The Examiner then states:
With respect to monitoring of a human task at a specific piece
of equipment. [sic] In Smart House on page 3 it teaches
monitoring if a fire breaks in the house, Smart House is silent as
to if the fire could have been caused by a manual interaction of
an individual with an appliance and therefore it makes sense
Appeal 2009-006246
Application 09/946,461

5
and would have been obvious to monitor human or individual
manual performance of an appliance in order to prevent
failures, fires and the like.
Answer 3.
The Examiner seems to be arguing that it is obvious to substitute the
claimed sensor capable of sensing a parameter related to the manual
performance by an individual of at least one equipment-related manual task
for the fire sensor in Smart House. However, the Examiner has not provided
any evidence that this type of sensor is known.
The legal conclusion of obviousness depends upon a sensor which
detects manual performance of a task. The Examiner’s reasoning for making
the obviousness determination relies solely on the disclosure in Smart House
of a fire sensor. However, Smart House does not indicate that its fire sensors
cover sensors which detect manual performance of a task nor is there any
evidence on record that such a sensor was known to one of ordinary skill in
the art at the time of the invention. Accordingly, a prima facie case of
obviousness has not been established in the first instance.
Thus, we find that the Appellant has overcome the rejection of claim
1, and claims 2-14, dependent thereon, under 35 U.S.C. 103(a) over Smart
House.
Independent claim 15 recites a method of providing and using the
apparatus recited in claim 1. The Examiner applied the same reasoning to
rejecting claim 15 (See Answer 2-3) and the Appellant traverses the rejection
for the same reasons as to traverse the rejection of claim 1 (See Br. 12).
Accordingly, our reasoning in addressing the rejection of claim 1 applies to
claim 15 as well. We find that the Appellant has overcome the rejection of
Appeal 2009-006246
Application 09/946,461

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claim 15, and claims 16-20, dependent thereon, under 35 U.S.C. 103(a) over
Smart House.

DECISION
The decision of the Examiner to reject claims 1-20 is reversed.
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) (2007).

REVERSED

mev

EDWARDS ANGELL PALMER & DODGE LLP
P.O. BOX 55874
BOSTON MA 02205