Ex Parte Nielsen

Patent Trial and Appeal Board

Jan 23, 2017

10599602 (P.T.A.B. Jan. 23, 2017)

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.
10/599,602 11/09/2006 Ulrich Carlin Nielsen SCANl-41253 1498
116 7590 01/25/2017
PFARNF fr GORDON T T P
EXAMINER
1801 EAST 9TH STREET LEE, LAURA MICHELLE
SUITE 1200
CLEVELAND, OH 44114-3108 ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
01/25/2017 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):
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ULRICH CARLIN NIELSEN
Appeal 2015-004666
Application 10/599,602
Technology Center 3700
Before CHARLES N. GREENHUT, LISA M. GUIJT, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Non-final Rejection of claims 55—69. Claims 1—54 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-004666
Application 10/599,602
ILLUSTRATIVE CLAIM
Appellant’s claimed invention relates to a method for cutting food
items into pieces having predetermined dimensions. Appellant’s invention
includes a first cutting device and a plurality of second cutting devices.
Reply Br. 4. According to Appellant, at the first cutting device, food items
are measured and “a complete cutting profile is created to determine the
entire cutting sequence for all cutting devices,” including a first cutting
profile to be performed by the first cutting device and a second cutting
profile to be performed at a second cutting device. Reply Br. 4 (citing Spec.
4,11. 13—15). The second cutting profile that is determined by the first
cutting device is referred to in Appellant’s claims as the “first second cutting
profile.” Reply Br. 5.
After the first cutting device cuts the food items into strips according
to the first cutting profile, the strips of food are transported to a second
cutting device. “[A]t the second cutting device ... a new measurement is
taken (to adjust for any changes due to shifting or other cause), and a cutting
profile for that device is prepared (i.e., the second second cutting profile).'”
Reply Br. 6.
Claim 64, reproduced below, is illustrative of the claimed subject
matter:
64. A method for portion cutting a food item into pieces
having predetermined dimensions, comprising the steps of:
using a first measuring device for performing a first
measuring step of measuring a shape, structure, and/or
dimension of the food item;
using a result of said first measuring step for automatically
determining a cutting sequence for cutting said food item into
pieces having said predetermined dimensions, said cutting
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sequence including a first cutting profile for first cutting said
food item into a plurality of strips, and also including a first
second cutting profile for cutting each one of said strips into
pieces having said predetermined dimensions;
automatically cutting said food item into said strips at a
first cutting device according to said first cutting profile;
transporting said strips toward a plurality of second cutting
devices, wherein each one of said strips is further transported to
a selected one of the plurality of second cutting devices;
for each one of the strips, using a further measuring device
located at the second cutting device for which the strip was
selected for performing a second measuring step of measuring a
shape, structure, and/or dimension of each one of the strips;
for each one of said strips, using a result of said second
measuring step for automatically determining a second second
cutting profile for cutting each one of said strips into pieces
having said predetermined dimensions, wherein said second
second cutting profile is different than said first second cutting
profile; and
automatically cutting said strips into pieces having said
predetermined dimensions using the selected second cutting
devices.
THE REJECTIONS
Claims 55—69 stand rejected under 35U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement, and under 35
U.S.C. § 112, second paragraph, as being indefinite.
Claims 55—69 also stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Rudy et al. (US 4,875,254; Oct. 24, 1989) and Kim
et al. (US 2003/0145699 Al; Aug. 7, 2003).
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ANALYSIS
I. The Obviousness Rejection
Having considered the Examiner’s obviousness rejection of claims
55—69 under § 103(a) in light of each of Appellant’s arguments and the
evidence of record, we disagree with Appellant and agree with the
Examiner. We adopt as our own the Examiner’s findings, conclusions, and
reasons, and we address certain of Appellant’s arguments below primarily
for emphasis.
A. Independent Claims 55,1 6L and 64
Appellant first argues the cited prior art fails to teach or suggest a
“plurality of second cutting devices” and related limitations as recited in
claims 55—69. App. Br. 24—25. Appellant argues “Rudy teaches only two
cutters, both of which are located at a single second cutting station . . . [and]
attached to the same support carriage.” App. Br. 25. According to
Appellant, the claimed cutting devices “when read in light of the
[Specification and in view of FIG. 1, comprise more than a mere plurality
of individual cutters mounted on the same support carriage.” App. Br. 25.
We disagree with Appellant. As cited by the Examiner, Rudy
discloses an apparatus having conveyor belts to move food pieces from a
first measuring device and a first cutter at an “infeed end” past additional
measuring devices and additional cutters at an “outfeed end.” See Rudy
1 Appellant’s Reply Brief states that the section titles of Appellant’s Appeal
Brief erroneously reference only independent claims 61 and 64 and that
Appellant’s arguments apply to independent claim 55. Reply Br. 13. We
consider Appellant’s arguments to be applicable to claim 55 and its
dependent claims.
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Application 10/599,602
Figs. 1—4, col. 2,11. 34-42 (describing the relationship of the infeed end
depicted in Figures 1 and 2 and the outfeed end depicted in Figures 3 and 4),
col. 4,11. 26—31 (describing camera 72 at the infeed end), col. 5,11. 41—68
(describing a cutter at the infeed end), col. 6,1. 55—col. 7,1. 65 (describing
the second scanning system and cutters at the outfeed end). Contrary to
Appellant’s arguments, neither the claim language nor Appellant’s
Specification defines the recited “plurality of second cutting devices” to
require related structures such as multiple support carriages or other
structures in a way that would exclude the plurality of cutting devices at the
outfeed end taught by Rudy.
In addition, contrary to Appellant’s arguments that Rudy fails to teach
“transporting” food items or strips from the first cutting device to the second
cutting device (see App. Br. 26—27; Reply Br. 10-11), Rudy teaches food
pieces “progress forward” on a series of conveyor belts from the first cutter
to the second scanning system and second cutters (Rudy col. 7,1. 46-col. 8,
1. 9). See also Rudy, Abstract (“Food products ... are cut to predetermined
portion sizes ... by moving the food products on a conveyor, scanning them
as they move through a shadow line with a camera capable of providing a
programmed computer with dimensional data, and utilizing the computer to
control the operation of a plurality of high pressure water jet cutters”).
Contrary to Appellant’s arguments (App. Br. 26), neither the claim language
nor any evidence in Appellant’s Specification requires interpreting the
transporting limitation to require “some distance” that would distinguish
Rudy’s disclosures.
Further, contrary to Appellant’s arguments that Rudy does not teach
transporting food portions to “a selected one of the plurality of second
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cutting devices” (App. Br. 27; see also App. Br. 27—29; Reply Br. 10-13),
Rudy teaches or suggests that limitation with its description of a flexible
ribbon and plow that guide food pieces to different positions on the
conveyor belts (Rudy col. 7,11. 46—65). See Non-final Act. 10 (“Rudy’s
flexible ribbon ‘selects’ the leftmost profile portion to continue to the
leftmost cutting blade and the rightmost profile to continue to the rightmost
cutting blade”); accord Rudy col. 7,11. 25—65 (“Since the longitudinal pieces
may be of different size, weight and shape, it is desirable to further process
each piece independently of the other. Accordingly, the two longitudinal
pieces are caused to be separated laterally [by flexible ribbon 138 and plow
member 140] for subsequent individual processing.”). Reading the claim
language in view of Appellant’s Specification, which does not further define
or limit the claim language, we agree with the Examiner that Rudy’s
teachings regarding a ribbon and plow that separate and guide food pieces to
different positions on a conveyor belt, and therefore to different measuring
devices and cutters at the outfeed end of Rudy’s apparatus, falls within a
broad but reasonable interpretation of the disputed limitation. Cf. Spec. 7
(“transfer means such as conveyors with deflector means can be placed
where the transfer and therewith the placing of the strip in the one or more of
the further cutting devices is possibly controlled by the portion-cutting
arrangement’s computer means”).
Appellant additionally argues the cited art fails to teach or suggest the
claimed “first second cutting profile.” App. Br. 29—35. According to
Appellant, “[although Kim arguably teaches the concept of initially
planning the entire cutting path of the food item” (App. Br. 32), “the first
cutting profile of Kim describes nothing more than a cutting path for initial
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and subsequent cuts of an entire, single food item as it solitarily progresses
along a conveyor belt” (App. Br. 33). Appellant argues, “[ujnlike Kim, the
instant application claims ‘a first second cutting profile for cutting each one
of said strips into pieces.’” App. Br. 33. Stated differently, Appellant argues
“Kim fails to disclose cutting a plurality of pieces from the single original
food item that are subsequently and independently cut using a second cutting
profile.” App. Br. 33.
We disagree with Appellant. First, Appellant’s arguments attack Kim
individually without substantively addressing the combined teachings of
Rudy and Kim. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references”). Further,
contrary to Appellant’s arguments that Kim only determines a manner in
which to cut a single food item (App. Br. 32—34), we agree with the
Examiner that Kim describes cutting a plurality of food pieces from a single
original food item (see Ans. 15—16 (citing Kim Fig. 11,1 67); Kim Fig. 11,
1134 (“FIG. 11 shows a from elevation view of a plurality of portions to be
cut from a foodstuff. . . .”), 67). Moreover, as cited by the Examiner, Rudy
teaches cutting an original food item and separating the cut pieces for
subsequent cutting (see, e.g., Rudy, Abstract (“utilizing the computer to
control the operation of a plurality of high pressure water jet cutters to cut
the food products to reduced sizes as dictated by the computer program”)),
and Appellant’s arguments do not substantively rebut the Examiner’s
findings regarding the combined teaching of the prior art.
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Accordingly, having considered each of Appellant’s arguments
relating to independent claims 55, 61, and 64, we disagree with Appellant
and sustain the Examiner’s rejection of claims 55, 61, and 64.
B. Dependent claims 59, 60, 62, 63, 65, 66, 68, and 69
Appellant argues “Rudy fails to teach cutting a food item into pieces
having predetermined dimensions and predetermined weight,” as recited in
claims 59, 60, 62, 63, 65, 66, 68, and 69. App. Br. 35—39. Specifically,
Appellant acknowledges that Rudy teaches cutting food potions to a
predetermined weight, but Appellant argues Rudy’s additional disclosures of
cutting food portions into a predetermined “size,” “shape,” or “volume” is
not equivalent to cutting food portions to a predetermined dimension, as
claimed. App. Br. 35—39.
We disagree with Appellant. Among other disclosures, Rudy teaches
“the cutting of food products to any desired profile shape, independently of
weight or while maintaining a predetermined weight.” Rudy col. 1,11. 62—
65. We agree with the Examiner that a person of ordinary skill would have
understood Rudy’s disclosures of a predetermined shape and size combined
with a predetermined weight to teach or at least suggest “predetermined
dimensions,” as claimed. See Ans. 14.
Accordingly, having considered each of Appellant’s arguments
relating to dependent claims 59, 60, 62, 63, 65, 66, 68, and 69, we disagree
with Appellant and sustain the Examiner’s rejection of dependent claims 59,
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60, 62, 63, 65, 66, 68, and 69, as well as dependent claims 56—58 and 67,
which Appellant did not separately argue.
II. The Written Description and Indefiniteness Rejections
Each of claims 55—69 recites a “first second cutting profile” and
“second second cutting profile.” See Ans. 9—13. The Examiner finds
Appellant’s Specification does not provide written description support for an
interpretation of the claims in which the first second cutting profile and the
second second cutting profile are different because, based on the
Specification, “there is one profile that is either being verified or altered, not
another second, second cutting profile being generated.” Ans. 10.
Similarly, the Examiner concludes each claim is indefinite because “[t]here
is no understanding as to why the first second cutting profile is created and
what happened to it when the second second cutting profile is used to cut the
strips into pieces.” Ans. 11.
Appellant argues the methods of claims 55—69 require that a first
measuring device creates two profiles (i) a first cutting profile, and (ii) a first
second cutting profile, and a second measuring device creates a third profile,
(iii) a second second cutting profile. Reply Br. 3—9. Appellant explains that
the second second cutting profile serves to account for any shifting of a food
piece that may have occurred while transporting it from the first cutting
device to the second cutting device. Further, Appellant explains that the
claimed methods require that “[i]t is the second second cutting profile that is
actually used for cutting the strips at the second cutting device, because it
compensates for any changes in the strips” (Reply Br. 9), and there is no
requirement that the first second cutting profile be used. Reply Br. 6—8.
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As Appellant acknowledges, the claimed methods are limited to
instances in which only the second second cutting profile is used (and the
first second cutting profile is unused). We disagree with the Examiner that
drafting the claims in such a manner renders the claims indefinite or lacking
in written-description support. Appellant acknowledges that the claimed
methods do not include instances in which the first second cutting profile
and the second second cutting profile are the same, but Appellant argues,
and we agree, “[t]he fact that the claim does not consider a situation where
the profiles may be identical is merely the Appellant implementing his right
to choose which embodiments of the invention to claim, which steps to
protect.” Reply Br. 8.
Accordingly, we do not sustain the written description or
indefmiteness rejections of claims 55—69.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
55—69 under 35 U.S.C. § 103(a). We reverse the Examiner’s rejections of
claims 55—69 under 35 U.S.C. § 112, first paragraph and second paragraph.
No time period for taking any subsequent action in connection with
this appeal maybe extended. 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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