RATIONAL AKTIENGESELLSCHAFT

Patent Trials and Appeals Board

May 24, 2021

2020003952 (P.T.A.B. May. 24, 2021)

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.
14/893,426 11/23/2015 Michael FINK PRINZ R1920 4670
27667 7590 05/24/2021
HAYES SOLOWAY P.C.
4640 E. Skyline Drive
TUCSON, AZ 85718
EXAMINER
LEFF, STEVEN N
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
05/24/2021 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):
admin@hayes-soloway.com
dlandau@hayes-soloway.com
nsoloway@hayes-soloway.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL FINK and GERD FUNK
Appeal 2020-003952
Application 14/893,426
Technology Center 1700
Before JEFFREY B. ROBERTSON, LILAN REN, and
SHELDON M. McGEE, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–3, 5, 7, 8, 10, 11, 13, 15, 16, 18, and
19. See Appeal Br. 4, 8. We have jurisdiction under 35 U.S.C. § 6(b).

1 This Decision includes citations to the following documents:
Specification filed November 23, 2015 (“Spec.”); Final Office Action
mailed September 26, 2019 (“Final Act.”); Appeal Brief filed January 31,
2020 (“Appeal Br.”); Examiner’s Answer mailed March 3, 2020 (“Ans.”),
and Reply Brief filed May 4, 2020 (“Reply Br.”).
2 We use the term “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Rational
Aktiengesellschaft. Appeal Br. 2.
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We affirm, but designate our affirmance as a new ground of rejection
for the reasons expressed herein.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to a cooking method and
cooking device. Spec. 1, ll. 2–9. Claim 1, reproduced below, is illustrative
of the claimed subject matter (Appeal Br., Claims Appendix 18):
1. A method of cooking food in a cooking device, said
method comprising the steps of:
(a) positioning the food in a cooking chamber of the
cooking device;
(b) selecting a specific cooking process from a multitude
of predefined automated cooking processes stored in a control
unit of the cooking device and/or manually selecting parameters
for a manual cooking process to begin the selected cooking
process at a start time;
(c) manually intervening during the selected cooking
process by altering the selected cooking process to an alternative
selected cooking process either by manually selecting alternative
parameters for a manual cooking process or by selecting an
alternative predefined automated cooking process;
(d) beginning the alternative selected cooking process; and
(e) continuously logging at least one significant cooking
process parameter in a memory of the control unit from the start
of the cooking process to the beginning of the alternative selected
cooking process, whereupon when there is a manual intervention
during the selected cooking process wherein there is a change
from an automated cooking process to a manual process, the
control unit checks, based on the logged parameters and
predefined automated cooking process, whether desired
properties of the food cooked to completion can be obtained, and
wherein a suggestion for alternative properties of the food
cooked to completion is made to the operator if the desired
properties cannot be obtained, wherein the significant cooking
process parameter is selected from the group consisting of an
energy input into the food to be cooked, a profile of the core
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temperature, a cooking chamber temperature, a fan speed and an
humidity within the cooking chamber.

Claim 10 is also independent and recites a cooking device for
cooking food. Id. at 19–20.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Bales et al. (“Bales”) US 6,486,453 B1 November 26, 2002

REJECTIONS
1. Claims 10 and 11 are rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
Final Act. 2.3
2. Claims 10 and 11 are rejected under 35 U.S.C. § 112(b), as
being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as
the invention. Final Act. 3.4

3 The rejection indicates only that claims 10 and 11 are rejected. However,
claims 13, 15, 16, and 19 also depend either directly or indirectly from claim
10, and thus it appears that the rejection would also apply to claims 13, 15,
16, and 19.
4 Similar to Rejection 1, Rejection 2 indicates only that claims 10 and 11 are
rejected. However, claims 13, 15, 16, and 19 also depend either directly or
indirectly from claim 10, and thus it appears that the rejection would also
apply to claims 13, 15, 16, and 19.
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3. Claims 1–3, 5, 7, 8, 10, 11, 13, 15, 16, 18, and 19 are rejected
under 35 U.S.C. § 101 as being directed to a judicial exception
without significantly more. Final Act. 3–7.
4. Claims 1–3, 5, 7, 8, 10, 11, 13, 15, 16, 18, and 19 are rejected
under 35 U.S.C. § 102(a)(l) as being anticipated by Bales.
Final Act. 7–10.

OPINION
Rejections 1 and 2
Appellant does not contest the Examiner’s rejections of claims 10 and
11 under 35 U.S.C. §§ 112(a) and (b), but rather indicates the error will be
addressed upon completion of this Appeal. Appeal Br. 9.
Accordingly, we summarily affirm Rejections 1 and 2.

Rejection 3
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
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that framework, we first determine what concept the claim is “directed to.”
See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
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to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.5

5 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public
comments, the Office issued further guidance on October 17, 2019,
clarifying the 2019 Revised Guidance. USPTO, October 2019 Update:
Subject Matter Eligibility (the “October 2019 Update”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 2019 Revised Guidance, 84 Fed. Reg. at 51; see also
October 2019 Update at 1.
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The Manual of Patent Examining Procedure (“MPEP”) now
incorporates this revised guidance and subsequent updates at § 2106 (9th ed.
Rev. 10.2019, rev. June 2020).6
Under MPEP § 2106, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (“Step 2A, Prong Two”).7
MPEP § 2106.04(a), (d).
Only if a claim (1) recites a judicial exception and
(2) does not integrate that exception into a practical
application,8 do we then look, under Step 2B, to whether the
claim:

6 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
7 “Examiners evaluate integration into a practical application by:
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.” MPEP § 2106.04(d)(II).
8 This corresponds to Alice part one where it is determined whether the
claim is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim
is “not directed to an abstract idea under step one of the Alice analysis, we
do not need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1339 (Fed. Cir. 2016).
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(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional activity” in the
field; or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.9
MPEP § 2106.05(d).
DISCUSSION
The Examiner’s Rejection
In rejecting claim 1, the Examiner determined the claim is directed to
mental processes without significantly more. Final Act. 3–7. The Examiner
found the claim covers performance of the limitation in the mind but for the
recitation of generic computer components and “thus it is still in the mental
processes grouping unless the claim limitation cannot practically be
performed in the mind.” Id. at 4. The Examiner found claim 1 “merely
encompass[es] the abstract ideas of comparing new and stored information
and to identify options and/or using categories to organize, store, and display
information such as is known with paper cook books and numerical times
and temperature observation, evaluation, judgement, and opinion.” Ans. 13.
The Examiner determined the judicial exception is not integrated into
a practical application because claim 1 uses computers in their conventional
way, i.e., as a tool, to perform an abstract idea. Final Act. 4–5. The
Examiner determined the energy, temperature observation, fan speed, or

9 This corresponds to Alice part two where it is determined whether the
claim “contains an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221.
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humidity evaluation can be obtained from user observation and as such can
be considered data gathering, which is extra-solution activity. Id. at 5. The
Examiner also determined that the claimed control unit is used in its
conventional way, and that the user ultimately is not required to choose any
suggestion for alternative properties, such that the cooking device does not
change cooking conditions, but merely provides known information. Id. at
5–6.
The Examiner determined also that a control unit in a cooking device
is considered to be well-understood, routine, and conventional. Final Act. 5,
citing Bales.
Accordingly, the Examiner determined that when viewed as a whole,
the combination of claim elements do not provide meaningful limitations to
transform the abstract idea into a practical application that amount to
significantly more than the abstract idea itself. Final Act. 6.
Appellant’s Arguments
Appellant argues the claims are not directed to mathematical concepts,
methods of organizing human behavior, or mental processes, but that if the
Examiner is correct that the claims recite a judicial exception, the claims
recite additional elements to provide a practical application. Appeal Br. 13–
14. In particular, Appellant argues the claims represent an advancement in
computer technology, because the claimed invention requires a cooking
device with a control unit that stores automated cooking processes, and has
inherent logical processes that control cooking processes within the cooking
device. Id. at 15–16. Thus, Appellant contends the claims are directed to
overcoming a problem in cooking devices, where flexibility is needed to
ensure that food products are cooked to the desired parameters and allow
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adjustment to specific cooking processes. Id. at 16. Appellant contends the
claims provide technological improvements to cooking devices. Id. at 16–
17; Reply Br. 10–11, citing Spec. 3, l. 25 – 4, l. 16.

ANALYSIS
We focus on independent claim 1, and address independent claim 10
to the extent necessary below, as the Examiner’s rejection and Appellant’s
arguments with respect thereto are similar. See Final Act. 6–7; Reply Br. 12.
Claim 1
For the reasons discussed below, we are not persuaded the Examiner
erred in determining the claimed subject matter to be patent ineligible as
directed to a judicial exception without reciting significantly more.
Initially, we find under Step 1 of the Guidance, that claim 1 is directed
to a method including positioning food in a cooking chamber of a cooking
device, selecting a specific coming process from a multitude of predefined
automated cooking processes stored in a control unit of the cooking device
and/or manually selecting parameters for a manual cooking process, and
manually intervening during the selected cooking process by altering the
selected cooking process to an alternative selected cooking process.
Accordingly, claim 1 falls within one of the four statutory categories of
invention. Therefore, we turn next to Step 2A(1) of the Revised Guidance.
The Judicial Exception
Under Step 2A(1) we find that claim 1 recites a judicial exception in
the form of a mental process. Specifically, claim 1 recites in step (e):
the control unit checks, based on the logical parameters and
predefined automated cooking process, whether desired
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properties of the food cooked to completion can be obtained, and
wherein a suggestion for alternative properties of the food
cooked to completion is made to the operator if the desired
properties cannot be obtained.
This conditional step (the step does not have to be performed if, for
example, a predefined automated cooking process is not selected in step (b)
or if the alternative selected cooking process is an alternative predefined
automated cooking process in step (c)), although recited as performed by the
control unit, could also be performed in the human mind by checking the
continuously logged significant cooking parameter and determining whether
the manual process would produce the desired properties of the food cooked
to completion could be obtained. The human mind could also perform the
steps of suggesting alternative properties of the food cooked to completion if
the desired properties cannot be obtained, such as changing the desired
internal temperature of the cooked food product.
Thus, we agree with the Examiner that claim 1 recites a mental
process. However, the mere fact that the claim recites a mental process does
not automatically render the claim patent ineligible. As a result, we now
turn to Step 2A(2) of the Revised Guidance to determine whether the claims
integrate the judicial exception into a practical application.

Integration into a Practical Application
In Step 2A(2) of the Revised Guidance, we evaluate whether there are
additional elements recited in the claim that integrate the mental process into
a practical application.
In this case, claim 1 recites “positioning the food in a cooking
chamber of the cooking device,” “selecting a specific cooking process,”
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“manually intervening during the selected cooking process,” and
“continuously logging at least one significant cooking process parameter in
the memory of a control unit from the start of the cooking process to the
beginning of the alternative selected cooking process.” Considering the
claim as a whole, we determine that these limitations merely add pre-
solution activity or generic computer activity to gather data and display
results of the judicial exception, which amount to no more than insignificant
extra-solution activities, and are, therefore, insufficient to integrate the
judicial exception into a practical application.
Although Appellant argues the method provides a specific
improvement over prior methods for cooking food using a cooking device
(see Spec. 2, ll. 10–24), the checking done by the control unit and suggestion
for alternative properties of the food cooked to completion made to the
operator if the desired food properties cannot be obtained, is merely the
result of the mental process, such that nothing is further required to be done
with the information according to claim 1.
Further, as discussed above, the step of the control unit checking to
determine whether the desired properties of the food cooked to completion
can be obtained is a conditional limitation that is only performed in
situations when there is a change from an automated cooking process to a
manual process, which weighs against Appellant’s position that the step is
sufficiently integrated into a practical application.
We are also not persuaded by Appellant’s contention that the claims
amount to an advancement in computer technology.10 Appeal Br. 14–15,

10 Appellant references Ex parte Smith (Appeal No. 2018-000064 issued
March 19, 2019) as mandating that the Examiner’s rejection be reversed.
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citing Enfish. We are of the view that rather than improving computer-
related technology in the form of computer functionality, the process uses
existing computer technology as a tool to perform the mental processes as
explained above. Indeed, the Specification does not describe specific
algorithms or computer structure that is necessary to perform the method
beyond general references to control units and memory. See generally Spec.
1–11.
For these reasons, claim 1 fails to integrate the judicial exception into
a practical application.
The Inventive Concept
To determine whether claim 1 provides an inventive concept, we
consider whether claim 1 adds a specific limitation beyond the mental
processes that is not well-understood, routine, or conventional in the field, or
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the mental
process. 2019 Revised Guidance, 84 Fed. Reg. at 56.
In this regard, the Examiner found that Bales provides evidence that the
additional steps recited in claim 1 are well-understood, routine, and
conventional activity. Final Act. 5. We agree with this assessment. Bales
discloses cooking appliances have controllers that receive input from operator

Appeal Br. 16–17; Reply Br. 9. We initially observe that contrary to
Appellant’s statements, this decision is not designated as “precedential,” but
rather is designated as “informative.” In any case, Appellant appears to rely
on this decision for the general proposition that claims that are limited to a
practical application and provide a technological improvement over the art
are patent-eligible, a proposition with which we do not necessarily disagree.
However, as explained infra, we are of the view that the instant claims do
not sufficiently meet these requirements.
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input controls and signals from temperature sensors. Bales, col. 4, ll. 4–16.
Bales discloses cooking appliances that allow for automated and manual
programming for cooking procedures, and to be able to switch automated and
manual procedures during cooking. Id. at col. 4, l. 37 – col. 7, l. 3.
Further, we agree with Appellant that claim 1 is similar to Example 45
of the October 2019 Update. See Reply Br. 11. That is, we are of the view
that claim 1 of the present Application is similar to Claim 1 of Example 45,
in which the claimed controller determined only the percentage of
polyurethane cured in a mold. October 2019 Update App. 1, 20. According
to the October 2019 Update, claim 1 of Example 45 is ineligible as not
amounting to significantly more than the judicial exception. Id. at 21–23.
Thus, as a whole, we are of the view that claim 1 is directed to an
abstract idea, and is therefore not patent eligible.

Claim 10
Claim 10 is also independent, and recites a cooking device for
cooking food. Appeal Br. 19–20, Claims App. Claim 10 recites similar
limitations as discussed above for claim 1, and in particular recites a control
unit:
wherein when there is a manual intervention from an automated
cooking process to a manual cooking process, the control unit
checks, based on the significant cooking process parameters
stored in the memory, whether the desired properties of the food
cooked to completion can be obtained and wherein a suggestion
for alternative properties of the food cooked to completion is
made to the operator if the desired properties cannot be obtained.
Id.
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The Examiner determined the cooking device recited in claim 10 is
generic and encompasses several types of different cooking devices such
that the generic cooking device is merely a device on which the method
operates. Final Act. 6.
Thus, for similar reasons as discussed above with respect to claim 1,
in particular, claim 10 does not require any further structure or action once a
suggestion is made, we determine claim 10 is directed to an abstract idea.
As a result, we affirm the Examiner’s rejection that claim 10 is not patent
eligible.

Rejection 4
Appellant does not present separate arguments with respect to the
claims subject to this rejection. See Appeal Br. 9–12. We select claims 1
and 10 as representative for disposition of this rejection. 37 C.F.R.
§ 41.37(c)(1)(iv)(2019).

The Examiner’s Rejection
In rejecting claim 1 as anticipated by Bales, the Examiner found Bales
discloses a method of cooking food in a cooking device. Final Act. 7–10.
The Examiner found Bales discloses selecting a specific cooking process
from automated cooking processes stored in a control unit or manually
selecting parameters for a manual selecting process. Id. at 7, citing Bales,
col. 5, ll. 9–10; 15–16, 39–45. The Examiner found Bales discloses
manually intervening during the selected cooking process by altering the
selected cooking process to an alternative selected cooking process, and
beginning the alternative cooking process. Id., citing Bales, col. 5, ll. 60–68,
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col. 6, ll. 40–66. The Examiner found Bales discloses continuously logging
at least one significant cooking process parameter (temperature, pre-
calculated percentages being executed; desired temperature; time of active
heating) in a memory of a control unit from the start of the cooking process
to the beginning of the alternative selected cooking process. Id. at 8, citing
Bales, col. 4, ll. 7–9, 63–66, col. 5, ll. 49–62, col. 7, l. 31, col. 8, ll. 42, 60–
62. The Examiner found Bales discloses the significant cooking process
parameter includes energy input into the food to be cooked or a cooking
chamber temperature. Id. at 9, citing Bales, col. 4, ll. 63–65, col. 7, l. 31.
The Examiner also found that when the door to the cooking device is
opened during a selected cooking process (a manual intervention), a control
unit checks whether desired properties of the food cooked to completion can
be obtained and suggests alternative properties of the food cooked to
completion if the desired properties cannot be obtained. Final Act. 8, citing
Bales, col. 4, ll. 63–65, col. 5, ll. 56–61; col. 6, ll. 8–11. The Examiner
found upon a change from an automated cooking process to a manual
cooking process, a notice is displayed to the operator of times where only
times recommended are listed. Id. at 9, citing Bales, col. 8, ll. 42–44, 53–57.

Appellant’s Arguments
Appellant argues that Bales does not disclose that the cooking device
checks whether the desired properties of the food cooked to completion can
be obtained using significant cooking process parameters stored in the
memory, but rather, it is the operator who checks whether the desired
properties of the food cooked to completion can be obtained. Appeal Br. 10.
Appellant contends the cooking device does not offer alternative properties
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of the food cooked to completion if the desired properties cannot be
achieved. Id. Appellant argues the optional adjustment of the cooking
process is part of the automatic cooking process, and the act of opening the
door of the cooking device cannot be considered a manual intervention as
recited in claim 1. Id. at 10–12.

Issue
Did the Examiner err in finding Bales discloses a method of cooking a
food as recited in claim 1 and a cooking device as recited in claim 10?

Discussion
Claim 1
At the outset, and as discussed above, claim 1 recites a method that
includes steps that are recited as conditional depending on the selection of
certain possibilities in other steps. Specifically, claim 1, in step (b), recites
the specific cooking process selected may be a manual cooking process and
step (e) recites that the control unit checks whether desired food properties
of the food cooked to completion can be obtained only in situations where
the manual intervention involves a change from an automated cooking
process to a manual process. As such, in situations where the initial selected
specific cooking process in step (b) is a manual cooking process, which is
altered during the manual intervening step (c) to an alternative cooking
process that includes manually selecting parameters for a manual cooking
process or a predefined automated cooking process, the part of step (e)
where the control unit checks whether the desired properties of the food
cooked to completion can be obtained is not triggered. This portion of step
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(e) is also not triggered in situations where the initial selected specific
cooking process in step (b) is an automated process and the manual
intervention in step (c) is another predefined automated cooking process.
As a result, under the broadest reasonable interpretation of the claim,
Bales need not disclose the portion of step (e) where the control unit checks
whether the desired properties of the food cooked to completion can be
obtained in the scenarios discussed above where the manual intervention
does not involve a change from an automated cooking process to a manual
process in order to anticipate claim 1. See Ex parte Schulhauser, Appeal
No. 2013-007847, 2016 WL 6277792, at *4–5 (PTAB April 28, 2016)
(precedential) (explaining that in situations where method claims encompass
steps that need not be performed, evidence that the prior art discloses such
steps need not be presented).
Bales discloses selecting an automated cooking process (“My
Recipes” col. 6, l. 55 – col. 7, l. 3; Fig. 4, 100) or manually selecting
parameters for a manual cooking process (“Turbo Cook” option, allowing
the user to enter desired cooking temperatures and operating time, col. 5, ll.
1–48, Fig. 4) and then manually intervening by selecting an alternative
predefined automated cooking process (“Adjust Cook” options, col. 5, l. 49
– col. 6, l. 11, col. 6, ll. 35–54). Bales discloses that the controller operates
the hot air convection and microwave sources in pre-calculated percentages
depending on the type of food being cooked and the desired temperature.
Bales, col. 4, ll. 63–67. Bales discloses a cooking appliance having an
operating sequence where at some point during the operating sequence, such
as when 80% of the cooking time has been reached, the CPU will indicate to
a user through a display that the food in the oven should be checked. Id. at
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col. 5, ll. 49–53. Should the user open the door of the cooking appliance to
check the food, Bales discloses the display would then change to and
“Adjust Cook” selection screen having sub-selections “Cook Less,” “Cook
and Brown Less,” “Brown Less,” and “Continue.” Id. at col. 5, ll. 60–63.
Bales discloses these options allow the user to adjust the cooking of the food
product in situations where the food product is internally done but requires
further browning, the food product is internally and externally almost done,
the food product is browned to a desired level but not internally done, or to
make no adjustments. Id. at col. 5, l. 63 – col. 6, l. 11. Bales also discloses
other options that may be available to the user including “Cook and Brown
More,” “Cook More,” and “Brown More.” Id. at col. 6, ll. 35–54. Thus,
Bales discloses the desired properties of the food include the degree of
browning (see claim 18).
In addition, Bales discloses continuously logging at least one
significant cooking process parameter (cooking chamber temperature) in a
control unit from the start of the cooking process to the beginning of the
alternative selected cooking process (Bales, col. 4, ll. 7–10), which in view
of the selected cooking process and a predefined automated cooking process
as the alternative selected cooking process discussed above, is all that is
required to meet step (e) in claim 1.
Accordingly, the method disclosed in Bales, where the user opens the
door of the cooking appliance after a certain percentage of the cooking time
of an initially selected automated or manual cooking process, and activates
one of the automated cooking options in the “Adjust Cook” sub-menu
causing a manual intervention of the initially selected cooking process
satisfies the required steps of claim 1.
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20
Although, as discussed above, the Examiner found that Bales
discloses the controller checks whether desired properties of the food cooked
to completion can be obtained, we find no such corresponding teaching in
Bales. That is, as argued by Appellant, Bales relies on the operator of the
cooking appliance to make a determination as to whether the desired
properties of the food cooked to completion can be obtained. See also Reply
Br. 5–6. As discussed above, Bales discloses “Adjust Cook” options that are
available to the operator, but Bales does not appear to teach such menus
would be different or altered based on any determination made by the
controller utilizing logged parameters and predefined cooking processes, as
to whether the desired food properties of the food cooked to completion can
be obtained as recited in claim 1.
In this regard, the Examiner’s reliance on the “recommended cook
time” in Bales (col. 8, l. 54) for the proposition that Bales discloses
providing a suggestion for alternative properties of the food cooked to
completion after checking and determining the desired properties of the food
cannot be obtained is not supported by Bales. Bales discloses that this
“recommended cook time” is a result of the initial selection of the “Turbo
Cook” option, and the “degree of doneness” selected by the user. Bales, col.
8, ll. 36–57. We do not see where Bales discloses such a process in
conjunction with the “Adjust Cook” option, corresponding to the manual
intervention recited in claim 1, where the control unit would check the
logged parameters from the start of the cooking process to the beginning of
the alternative selected cooking process to determine whether desired food
properties of the food cooked to completion can be obtained in situations
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where the manual intervention involves a change from an automated
cooking process to a manual process.
Thus, although we affirm the Examiner’s rejection of claim 1 (and
claim 18), we do so under a different rationale than given by the Examiner.
As a result we designate our affirmance as a new ground of rejection.
Regarding claims 2, 3, 5, 7, and 8, because those claims are also
directed to conditions that need not be performed, such claims stand rejected
as well.

Claim 10
Claim 10 recites a cooking device for cooking food, where the control
unit includes “a memory adapted to” perform the steps discussed above with
respect to claim 1.
In contrast to claim 1, claim 10 is directed to an apparatus, including a
control unit, where the control unit is capable of checking based on the
logged parameters and predefined automated cooking process, whether
desired properties of the food cooked to completion can be obtained, and
wherein a suggestion for alternative properties of the food cooked to
completion is made to the operator if the desired properties cannot be
obtained. In contrast to claim 1, the apparatus must contain structure for
performing the function should the condition occur. See Schulhauser, 2016
WL 6277792 at *7.
As discussed above, Bales does not disclose the control unit checking
capability should there be a change from an automated cooking process to a
manual cooking process as recited in claim 10. Accordingly, we reverse the
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22
Examiner’s rejection of claim 10 and claims 11, 13, 15, 16, and 19,
dependent therefrom.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
10, 11 112(a) Written
Description
10, 11
10, 11 112(b) Indefiniteness 10, 11
1–3, 5, 7,
8, 10, 11,
13, 15,
16, 18, 19
101 Eligibility 1–3, 5, 7,
8, 10, 11,
13, 15,
16, 18, 19

1–3, 5, 7,
8, 10, 11,
13, 15,
16, 18, 19
102(a)(1) Bales 1–3, 5, 7,
8, 18
10, 11,
13, 15,
16, 19
1–3, 5, 7,
8, 18
Overall
Outcome
1–3, 5, 7,
8, 10, 11,
13, 15,
16, 18, 19
1–3, 5, 7,
8, 18
TIME PERIOD FOR RESPONSE
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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).

AFFIRMED; 37 C.F.R. § 41.50(b)