Ex parte NEUHAUS

Board of Patent Appeals and Interferences

Sep 8, 1997

08040960 (B.P.A.I. Sep. 8, 1997)

Application for patent filed March 31, 1993.
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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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte THOMAS NEUHAUS
____________
Appeal No. 95-3411
Application 08/040,9601
____________
ON BRIEF
____________
Before JERRY SMITH, LEE and TORCZON, Administrative Patent
Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 4-8 under 35 U.S.C. § 112,
second paragraph, as being indefinite and also under 35 U.S.C.
103 under prior art.
References Relied on by the Examiner
Bado et al. U.S. Patent No. 4,703,423 October 27, 1987
(Bado)
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"Well known cook books"
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The Rejections on Appeal
Claims 1-8 stand finally rejected under 35 U.S.C. § 112,
second paragraph as being indefinite for failing to point out and
distinctly claim that subject matter which the appellant regards
as his invention.
Claims 1-8 stand finally rejected under 35 U.S.C. § 103 as
being unpatentable over Bado and well known cook books.
However, only the rejection of claims 4-8 has been appealed
(Br. at 2). Accordingly, only the rejection of claims 4-8 is
before us in this appeal.
The Invention
The invention is directed to a hierarchical, computerized
cooking instruction system whereby a user may branch through
multiple paths to access cultural information, menu category,
ingredients and cooking methods entailed and involved in the
preparation of a variety of dishes to be prepared. In one aspect
of the claimed invention (claim 4), a video memory means is used
which supplies cooking information in animated form. In another
aspect of the invention, an audio memory means is used which
supplies cooking information in audio form (claim 7).
Representative claims 4 and 7, the only independent claims
on appeal, are reproduced below:
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4. A hierarchical, computerized cooking
instruction system whereby a user can branch through
multiple paths to access cultural information, menu
category, ingredients and cooking methods entailed and
involved in the preparation of a variety of dishes to
be prepared, comprising:
processing means having a hierarchical-type
program for accessing cooking information
from at least one memory library;
a display operatively connected to said
processing means, having a screen for
displaying cooking information accessed by
said processing means;
input means operatively connected to said
processing means for instructing said
processing means regarding types of cooking
information to be accessed; and

said at least one memory library comprising a
video library memory means connected to said
processing means, said video library memory
means being accessible by said processing
means to supply cooking information in
animated form.
7. A hierarchical, computerized cooking
instruction system whereby a user can branch through
multiple paths to access cultural information, menu
category, ingredients and cooking methods entailed and
involved in the preparation of a variety of dishes to
be prepared, comprising:
processing means having a hierarchical-type
program for accessing cooking information
from at least one memory library;
A display operatively connected to said
processing means, having a screen for
displaying cooking information accessed by
said processing means;
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at least one speaker operatively connected to
said processing means for providing audio
perception of cooking information accessed by
said processing means;
input means operatively connected to said
processing means for instructing said
processing means regarding types of cooking
information to be accessed; and
said at least one memory library comprising
an audio library memory means connected to
said processing means, said audio library
memory means being accessible by said
processing means to supply cooking
information in audio form.
Opinion
We do not sustain the rejection of claims 4-8 as being
indefinite under 35 U.S.C. § 112, second paragraph.
We also do not sustain the rejection of claims 4-8 under
35 U.S.C. § 103 as being unpatentable over Bado and well known
cookbooks.
The rejection of claims 4-8 under
35 U.S.C. § 112, second paragraph
The test for compliance with 35 U.S.C. § 112, second
paragraph, is:
[W]hether the claim language, when read by a person of
ordinary skill in the art in light of the
specification, describes the subject matter with
sufficient precision that the bounds of the claimed
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subject matter are distinct. In re Merat, 519 F.2d
1390, 1396, 186 USPQ 471, 476 (CCPA 1975).
The purpose of the statutory section is to provide reasonable
notice as to the boundaries of the patent protection involved.
In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208
(CCPA 1970). Only a reasonable degree of certainty is required.
In re Johnson, 558 F.2d 1008, 1016, 194 USPQ 187, 194 (CCPA
1977).
The examiner stated (answer at 3): "In claims 4 and 7, the
use of 'being accessible' is vague and indefinite since it does
not positively point out the operation of the system." However,
the issue raised by the examiner does not concern indefiniteness.
We see nothing vague or indefinite about the term "being
accessible." It may be broad in that it covers any manner of
giving access or being accessed, but it is not indefinite.
Breadth does not equal indefiniteness.
Additionally, the examiner stated (answer at 3-4): "[I]t is
not clear what means provides the recited branching through
multiple paths of information." The "branching" referred to by
the examiner is evidently that recited in a whereby clause in the
preamble of both independent claims 4 and 7. The whereby clause
evidently provides a summary or general overview of the combined
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capabilities of the various structures and means recited in the
body of the claims and puts them in an overall context. It is
not necessary that the claims precisely specify which means is
providing the branching ability. It is apparent that as a
collective unit, the computerized system provides the branching.
That is not a matter of indefiniteness, but breadth.
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For the foregoing reasons, the rejection of claims 4-8 under
35 U.S.C. § 112, second paragraph, as being vague and indefinite
cannot be sustained.
The obviousness
rejection of claims 4-8
Initially, we express the points with which we agree with
the examiner. The examiner correctly stated (answer at 5):
While Bado does not specifically teach searching the
recipes according to ingredient or method of
preparation, as is well known in the art, common cook
books include sections or at least indices arranged
according to a main ingredient (i.e. beef) or a method
of preparation (i.e. grilling). Further, some well
known cook books are directed solely toward recipes
including a particular ingredient (i.e. hamburger) or
using a particular method of cooking (i.e. stir-
frying).
The appellant does not dispute that well known conventional
written or textual cook books have the foregoing features which
the examiner finds to be possessed by them. We are somewhat
troubled by the examiner's not particularly citing any cook books
in support of his rationale based on well known conventional cook
books. However, the appellant's not disputing or challenging the
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examiner's assertions as to what the "well known" cook books show
makes this issue moot as far as this appeal is concerned.
Nevertheless, we do not go as far as assuming that well
known conventional cook books give information in animated or
audio form, without the examiner's citing a particular cook book.
On this record, assuming that would be tantamount to speculation.
The examiner may not, because he or she may doubt that the
invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in
the reference. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
In claim 4, the video memory means supplies cooking
information in animated form. The specification discusses
animation only in the context of video as opposed to audio.
See, for example, page 5, lines 3-6 and page 6, lines 10-12.
Accordingly, consistent with the specification, we construe
"animated" to mean video. In this context, "video" does not have
to include audio signals. Rather, it can be satisfied by non-
still images without sound.
With respect to Bado, the examiner expressly acknowledges
(answer at 5) that Bado does not teach the use of audio or video
(animated) outputs for the cooking information stored in the
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memory means. However, the examiner nevertheless concludes
(answer at 6) that it would have been obvious to one with
ordinary skill in the art to modify Bado to include audio and
video (animated) presentations of the stored cooking information.
We disagree with the examiner, because the conclusion is without
factual support in the record.
Neither Bado nor well known conventional cook "books"
present cooking information in video (animated) or audio form.
The examiner points to nothing in Bado which talks about a desire
to present the information in audio or video (animated) form.
Without identifying a scintilla of evidence in Bado or
conventional cook books for presenting cooking information in
video (animated) or audio form, the examiner concludes that
naturally one with ordinary skill in the art would have known to
do so. The conclusion is unsupported by evidence in the record.
It is of no help for the rejection that the examiner further
stated (answer at 6): "Note the art of record, particularly
Baus, Kaplan, Bohrman and Reed as indication of the knowledge
generally available to those in the art." It is wholly unclear
which portions of any of these reference is the examiner relying
on and for what specific purpose. To say that the references
indicate the general knowledge available to those in the art is
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not very meaningful, when their teachings have not been
specifically discussed and particularly when those references
have not been made a part of the basis of the rejection. All
references on which the examiner relies for making a rejection
should be positively recited in the rejection. In re Hoch, 428
F.2d 1341, 1343 n.3, 166 USPQ2d 406, 407 n.3 (CCPA 1970); Ex
parte Movva, 31 USPQ2d 1027, 1028 n.1 (Bd. Pat. App. & Int.
1993); Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. &
Int. 1988). Here, the rejection on appeal is over Bado and well
known cook books, and does not include Baus, Kaplan, Bohrman or
Reed.
In any event, it should be noted that what is missing from
Bado and well known cook books is the video (animated) or audio
aspect of the claimed invention. Any prior art which discloses
presenting cooking information in video (animated) or audio form
would fit nicely with Bado. But the examiner has not applied
such a reference.
For the foregoing reasons, the rejection of claims 4-8 under
35 U.S.C. § 103 as being unpatentable over Bado and well known
cook books cannot be sustained.
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Conclusion
The rejection of claims 4-8 under 35 U.S.C. § 112, second
paragraph as being indefinite for failing to particularly point
out and distinctly claim that subject matter which the appellant
regards as his invention is reversed.
The rejection of claims 4-8 under 35 U.S.C. § 103 as being
unpatentable over Bado and "well known cookbooks" is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
JAMESON LEE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 95-3411
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Mark Levy
Salzman and Levy
19 Chenango Street
Press Building Suite 606
Binghamton, NY 13901