Robert BRUCE

Patent Trials and Appeals Board

Nov 27, 2020

2020003118 (P.T.A.B. Nov. 27, 2020)

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.
16/159,106 10/12/2018 Robert W. BRUCE 002904.00001-CIP 2501
155942 7590 11/27/2020
Saxton & Stump, LLC
280 Granite Run Drive
Suite 300
Lancaster, PA 17601
EXAMINER
PRATT, EHRIN LARMONT
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
11/27/2020 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):
patents@saxtonstump.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT W. BRUCE
Appeal 2020-003118
Application 16/159,106
Technology Center 3600
Before ELENI MANTIS MERCADER, BETH Z. SHAW, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–23. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as the named
inventor, Robert W. Bruce. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a systems, devices, and methods used in
sales promotions for communicating food product slice thicknesses. Spec.
¶ 2. Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for purchasing sliced food products from an
attendant at a store counter, the method comprising:
providing a slice thickness gauge to a customer, the slice
thickness gauge having a plurality of identifying features each
identifying feature corresponding to a thickness of a food product
that may be produced by the attendant, the identifying features
including a numeric value that is an integer devoid of fractions
and decimal values and corresponds to a slice measurement that
can be configured on a slicing machine;
communicating a customer selection to the attendant in the
form of a slip, the slip including identification of the food product
and the numeric value, wherein one or both of the slip and the
slice thickness gauge include a representation of the slice
thickness;
communicating an acceptance of the slip to the customer;
validating the order in response to the identification of the
food product and the numeric thickness value;
communicating invalid orders to the customer;
configuring the slicing machine to slice the food product
to a thickness corresponding to the numeric value;
slicing the food product to the thickness corresponding to
the numeric value;
weighing and packaging the food product;
notifying the customer that the food product is ready for
retrieval.
Appeal Br. 44 (Claims Appendix).
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REJECTIONS
Claims 1–23 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to an abstract idea without significantly more.
Final Act. 2.
Claims 1–7, 10–18, and 20–23 stand rejected under 35 U.S.C. § 103
as unpatentable over the combination of Koke et al. (US 2013/0275236 A1,
published Oct. 17, 2013) (“Koke”), Majcher (US 2015/0086967 A1,
published Mar. 26, 2015), and Allen (US 2011/0314417 A1, published Dec.
22, 2011). Final Act. 6.
Claims 8, 9, and 19 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Koke, Majcher, Allen, and Kanner
(US 4,941,276, issued July 17, 1990). Final Act. 18.
ANALYSIS
Rejection of Claims 1–23 Under 35 U.S.C. § 101
Appellant argues the Examiner’s rejection of claims 1–23 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter is in error. To
the extent Appellant has not advanced separate, substantive arguments for
particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv). Appellant argues claims 1–23 as a group. Appeal Br. 3.
Given our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the § 101
rejection of claims 1–23 based on representative claim 1.
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.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
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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 Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with 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 waterproof 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
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.” Diehr,
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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 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 to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(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 part
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.
(alterations in original) (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 § 101.2 The Manual of

2 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
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Patent Examining Procedure (“MPEP”) now incorporates this revised
guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev.
June 2020).3
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”).4
MPEP § 2106.04(a)) and § 2106.04(d).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application,5 do we then look, under
Step 2B, to whether the claim:

personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1.
3 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
4 “Examiners evaluate integration into a practical application by (a)
identifying whether there are any additional elements recited in the claim
beyond the judicial exception, and (b) evaluating those additional elements
individually and in combination to determine whether the claim as a whole
integrates the exception into a practical application.” MPEP § 2106.04(d)II.
5 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 part one of the Alice framework, 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.6
MPEP § 2106.05(d).
Step 1
Claim 1, as a method claim, falls within the process category of
§ 101. See Office Guidance, 84 Fed. Reg. at 53–54 (citing MPEP
§§ 2106.03, 2106.06).
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determines that the claims recite a series of interactions
that take place between a customer and an attendant (i.e., order fulfillment).
Ans. 6–7. The Examiner further determines that such activity falls within the
sub-groupings of commercial interactions and managing personal behavior
or relationships or interactions between people (including social activities
and following rules or instructions), which are a certain method of
organizing human activity. Ans. 4; Final Act. 3. The Examiner identifies the
following steps as part of the recited abstract idea:
communicating a customer selection to the attendant in
the form of a slip, the slip including identification of the food
product and the numeric value, wherein one or both of the slip
and the slice thickness gauge include a representation of the
slice thickness;
communicating an acceptance of the slip to the customer;

6 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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validating the order in response to the identification of
the food product and the numeric thickness value;
communicating invalid orders to the customer;
slicing the food product to the thickness corresponding to
the numeric value;
weighing and packaging the food product; and
notifying the customer that the food product is ready for
retrieval.
Final Act. 3.
Consistent with Appellant’s description of the claims (See, e.g., Spec.
¶¶ 2–3), we find that the limitations we summarize above describe a series of
interactions that take place between a customer and a store attendant that are
fairly characterized as commercial interactions, and which fall into the
“certain methods of organizing human activity” category of abstract ideas.
See MPEP § 2106.
Appellant argues that the Examiner errs because “[t]he recited section
of the claim includes, inter alia, a customer, an attendant, a slip, a food
product, slicing of the food product, weighing of the food product,
packaging of the food product, which are all tangible items or methods, none
of which are abstract.” Appeal Br. 5. Appellant also argues that “what is
claimed is not nearly as abstract as the disclosure of” the prior art cited by
the Examiner. Id. Appellant further argues that “no transaction related to an
order fulfillment [is] claimed, nor is there financial calculation or exchange
of money present in the claim.” Id. at 7.
We are not persuaded that the Examiner errs in determining that claim
1 recites an abstract idea. We agree with the Examiner that “mere physicality
or tangibility of an additional element or elements is not a relevant
consideration in the eligibility analysis, the physical nature of the items does
not affect the analysis.” Ans. 4. The additional elements are addressed in
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step 2A, prong 2, of the eligibility analysis. We also agree with the
Examiner that the disclosures of Allen and Koke “are of no relevance in
determining whether the subject matter of a claim falls within the certain
methods of organizing human activity grouping.” Id. at 5. Moreover,
Appellant has not identified any requirement, and we know of none, that
claims encompassing “commercial interactions” must recite “a financial
calculation or exchange of money.” See Appeal Br. 7.
We also determine that the steps of:
communicating a customer selection to the attendant in
the form of a slip, the slip including identification of the food
product and the numeric value, wherein one or both of the slip
and the slice thickness gauge include a representation of the
slice thickness;
communicating an acceptance of the slip to the customer;
validating the order in response to the identification of
the food product and the numeric thickness value;
communicating invalid orders to the customer; and
notifying the customer that the food product is ready for
retrieval;
are abstract “mental processes.” Such tasks can be performed by the
human mind or with pen and paper. The 2019 Guidance explains that
“mental processes” include acts that people can perform in their minds
or using pen and paper, even if the claim recites that a generic
computer component performs the acts. See 2019 Guidance, 84 Fed.
Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the
mind.”); see also Intellectual Ventures I LLC v. Symantec Corp., 838
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F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic
computer-implemented steps, there is nothing in the claims
themselves that foreclose them from being performed by a human,
mentally or with pen and paper.”), quoted in 2019 Guidance, 84 Fed.
Reg. at 52 n.14.
Claim 1 does not explicitly recite a computer and does not indicate
what entity performs the actions of “communicating,” “validating,” and
“notifying,” or how such actions are accomplished. Claim 1 recites a “slip”
for communicating a preference to the attendant (see Spec. Figs. 3–5). The
Specification describes that “the method according to the present invention
may include placing the complete order for processing, by a slip 150 or
order form on a piece of paper.” Spec. ¶ 39. Similarly, the Specification
describes that “[t]he communication of the acceptance may be orally, [or]
via a paper confirmation” and “communication of the invalid order may be
orally, [or] via a paper confirmation.” Id. at ¶¶ 41–42. Accordingly, we
determine that claim 1 recites mental process of “communicating,”
“validating,” and “notifying,” as shown above, which are abstract ideas.
Combining abstract ideas (here, “mental processes” and “certain
methods of organizing human activity”) does not render the combination any
less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed.
Cir. 2017) (“Adding one abstract idea (math) to another abstract idea . . .
does not render the claim non-abstract.”); see also FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining the
pending claims were directed to a combination of abstract ideas).
Because we agree with the Examiner that the claim recites an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
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integrated into a practical application, in which case the claim as a whole
would not be “directed to” merely an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
We next determine whether the recited judicial exception is integrated
into a practical application of that exception by: (a) identifying whether
there are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
Revised Guidance at 55 n.24. In claim 1, the Examiner determines that the
additional elements include:
providing a slice thickness gauge to a customer, the slice
thickness gauge having a plurality of identifying features each
identifying feature corresponding to a thickness of a food
product that may be produced by the attendant, the identifying
features including a numeric value that is an integer devoid of
fractions and decimal values and corresponds to a slice
measurement that can be configured on a slicing machine; and
configuring the slicing machine.
Final Act. 3.
To integrate the exception into a practical application, the additional
claim elements must, for example, improve the functioning of a computer or
any other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
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some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)). See 2019 Revised Guidance.
The Examiner determines that none of the additional limitations is
sufficient to amount to significantly more than the judicial exception
because the additional elements “merely add the words ‘apply it’ (or an
equivalent)” and “link the use of the judicial exception to a particular field of
use.” Final Act. 3–4 (citing MPEP §§ 2106.05(f) and 2106.05(h)).
Appellant argues that all of the physical items and physical processes
recited in claim 1 “are well beyond the alleged abstract idea and provide
integration of the judicial exception into a practical application.” Appeal Br.
8–9. Appellant also argues that the additional elements “improve the
technology field of providing sliced food products” by “providing better
reproducibility in the slice thickness, improving the communication between
the customer and the attendant,” and reducing “losses related to ‘sample’
slices.” Id. at 10. Appellant further argues that “the claim has a significant
number of claimed items (e.g., the slice thickness gauge, the slip, the food
product and the slicing machine) that qualify as a ‘particular machine’ on
which the method is performed.” Id. at 11. Appellant also argues that the
“configuring the slicing machine” step of claim 1 “results in a
transformation of the slicing machine from one mode to a mode that
provides the desired product.” Id. at 14. Appellant additionally argues that
the recited step of “slicing the food product” “transforms the food product
from an unsliced product to a sliced product.” Id.
Appellant’s arguments are not persuasive. We are not persuaded that
the additional claim elements improve the functioning of a computer or any
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other technology or technical field. Appellant has not persuasively explained
how providing a slice thickness gauge to a customer and configuring a
slicing machine improve a computer, other technology, or technical field.
We agree with the Examiner that “Appellant’s improvement is in the judicial
exception itself,” and “[w]hile the claim purports to improve how slice
thickness is communicated between a customer and an attendant, this can be
practiced verbally which cannot be recognized as an improvement to
computers or any other technology.” Ans. 9.
Appellant’s “particular machine” argument also fails. See Appeal Br.
10. Appellant argues that “the slice thickness gauge, the slip, the food
product and the slicing machine” comprise a particular machine, but
Appellant does not address the particular additional elements identified by
the Examiner. The thickness gauge is merely provided to a customer and,
thus, is not integral to achieving performance of the method. Similarly, the
slicing machine is merely configured to slice a food product to a certain
thickness. Claim 1 recites no particular type of slicing machine and, from the
plain language of claim 1, does not require that the slicing machine perform
the recited “slicing the food product.” Thus, at best, the slicing machine is
merely an object on which the method operates. See CyberSource v. Retail
Decisions, 654 F.3d 1366, 1370 (Fed. Cir. 2011). Moreover, it is clear that
neither the slice thickness gauge nor the slicing machine can perform the
“providing,” “communicating,” “validating”, “configuring,” “weighing and
packaging,” and “notifying” steps of claim 1.
Appellant’s “particular transformation” argument similarly fails.
“Transformation” of an article means that the article has changed to a
different state or thing. MPEP § 2106.05(c). Changing to a different state or
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thing usually means more than simply using an article or changing the
location of an article. A new or different function or use can be evidence that
an article has been transformed.
Appellant’s arguments fail to persuade us that configuring a slicer to
slice at a certain thickness or slicing a food product results in a
transformation. In this regard, neither the slicer nor the food product is
changed to a different state or thing. The slicer remains a slicer, and the food
product remains a food product. Claim 1 does not include any steps that
effect a transformation or reduction of a particular article to a different state
or thing, unlike Diehr and Benson. See Diehr, 450 U.S. at 184 (“That
respondents’ claims [to a specific rubber molding process] involve the
transformation of an article, in this case raw, uncured synthetic rubber, into a
different state or thing cannot be disputed.”); Benson, 409 U.S. at 70
(“Transformation and reduction of an article ‘to a different state or thing’ is
the clue to the patentability of a process claim that does not include
particular machines. So it is that a patent in the process of ‘manufacturing fat
acids and glycerine from fatty bodies by the action of water at a high
temperature and pressure’ was sustained in Tilghman v. Proctor, 102 U.S.
707, 721 [(1980)].”).
Considering claim 1 as a whole, then, we agree with the Examiner that
Appellant’s invention lacks a technical solution to a technical problem. See
Ans. 15. Claim 1 as a whole merely uses a thickness gauge and a slicer as
tools to perform the abstract idea. Here, the additional limitation(s) do not
integrate the judicial exception into a practical application. More
particularly, the claims do not recite (i) an improvement to the functionality
of a computer or other technology or technical field; (ii) a “particular
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machine” to apply or use the judicial exception; (iii) a particular
transformation of an article to a different thing or state; or (iv) any other
meaningful limitation. See 84 Fed. Reg. at 55. Rather, claim 1 recites an
abstract ideas as identified in Step 2A(i), supra, and none of the limitations
integrates the judicial exception into a practical application.
Therefore, because the abstract idea is not integrated into a practical
application, we conclude that the claim is directed to the judicial exception.
Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016)). We look to see whether there are any “additional features” in the
claims that constitute an “inventive concept,” thereby rendering the claims
eligible for patenting even if they are directed to an abstract idea. Alice, 573
U.S. at 221. Those “additional features” must be more than “well-
understood, routine, conventional activity.” Mayo, 566 U.S. at 79.
Appellant argues only that “such analysis is not required, as the
alleged abstract idea would qualify as eligible subject matter under either
Prong One or Prong Two of Step 2A.” Appeal Br. 21. Appellant does not
direct our attention to anything in the Specification that indicates the slice
thickness gauge or slicer perform anything other than well-understood,
routine, and conventional functions.
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We agree with the Examiner that there are no “additional features” in
the claims that constitute an “inventive concept.” See Final Act. 4–5. The
Specification describes that “[c]utting and slicing machines of types used for
slicing food products are commonly equipped with slice thickness settings.”
Spec. ¶ 4. The Specification also describes that a thickness gauge includes
an integer representation of slice thickness. Id. at ¶ 9.
Because the Specification describes the additional elements in general
terms, without describing the particulars, we conclude the claim limitations
may be broadly but reasonably construed as reciting conventional
components and techniques, particularly in light of Appellant’s’
Specification, as cited above. See Berkheimer Memo7 § III.A.1; Spec. ¶¶ 4,
9.
Because the claims are directed to a judicial exception, without
significantly more, we sustain the Examiner’s § 101 rejection of independent
claim 1 and grouped claims 2–23, not argued separately with particularity.

Rejection of Claims Under 35 U.S.C. § 103
We have reviewed the § 103 rejections in light of Appellant’s
arguments that the Examiner errs. We have considered in this decision only
those arguments Appellant actually raised in the Briefs. Any other

7 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018) (explaining that a specification that describes
additional elements “in a manner that indicates that the additional elements
are sufficiently well-known that the specification does not need to describe
the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
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arguments Appellant could have made, but chose not to make, in the Briefs
are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant’s arguments are not persuasive of error. We agree with and
adopt as our own the Examiner’s findings of facts and conclusions as set
forth in the Answer and in the Action from which this appeal was taken. We
provide the following explanation for emphasis.
Claims 1–7, 10–18, and 20–23
With respect to independent claim 1, Appellant contends the cited
portions of Koke do not teach or suggest a “slice thickness gauge” or
“providing a slice thickness gauge to a customer,” as recited in claim 1.
Appeal Br. 23, 24. Appellant argues that Koke does not teach or suggest a
slice thickness guide that has a plurality of identifying features each
identifying feature corresponding to a thickness of a food product that may
be produced by the attendant, the identifying features including a numeric
value that is an integer devoid of fractions and decimal values and
corresponds to a slice measurement that can be configured on a slicing
machine, as recited in claim 1. Id.
We are not persuaded that the Examiner errs. Appellant attacks Koke
individually, even though the Examiner relies on the combination of Koke,
Majcher, and Allen in rejecting claim 1. The test for obviousness is not
whether the claimed invention is expressly suggested in any one or all of the
references, but whether the claimed subject matter would have been obvious
to those of ordinary skill in the art in light of the combined teachings of
those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
The Examiner finds that Koke teaches an automated kiosk that is
located within the store, or orders can be placed with sales associates located
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in front of the deli counter or in other locations within the store. Final Act. 6
(citing Koke ¶¶ 28–34, 46). The Examiner further finds that Koke teaches
placing orders through the automated kiosk, and that a customer can request
a single food product including its slice thickness, packaging preferences,
etc. Id. at 7 (citing Koke ¶¶ 21, 28–34, 46). The Examiner also finds that
Majcher teaches a slice thickness gauge having identifying features
including a numeric value that is an integer devoid of fractions and decimal
values and corresponds to a slice measurement that can be configured on a
slicing machine. Id. (citing Majcher ¶¶ 2, 3, 6, 8). Appellant’s arguments do
not address the combination of teachings cited by the Examiner.
Appellant’s argument that Koke does not teach or suggest “wherein
one or both of the slip and the thickness gauge include a representation of
the slice thickness” fails for the same reasons. See Appeal Br. 26.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Koke, Majcher, and Allen teaches or
suggests the disputed “slice thickness gauge” limitations, as recited in claim
1.
Appellant next contends that “Koke and Majcher are not properly
combinable.” Appeal Br. 31. Appellant argues that “neither Koke nor
Majcher have even hinted at this combination, and the Examiner fails to
disclose how the visual display of Majcher would be combined with the
kiosk of Koke.” Id. Appellant further argues that “[t]he Examiner fails to
provide any articulated reason for why one would combine the disclosure of
Koke and Majcher.” Id. at 32.
We are not persuaded that the Examiner errs. As the Examiner
explains in the Answer, “[t]he test for obviousness is not whether the
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features of a secondary reference may be bodily incorporated into the
structure of the primary reference,” rather, “the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art.” Ans. 24 (citing In re Keller, 642 F.2d at 425; In re Sneed, 710
F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of
the references be physically combinable to render obvious the invention
under review.”); and In re Nievelt, 482 F.2d 965 (CCPA 1973) (“Combining
the teachings of references does not involve an ability to combine their
specific structures.”)).
We are not persuaded that combining the respective familiar elements
of the cited references in the manner proffered by the Examiner would have
been “uniquely challenging or difficult for one of ordinary skill in the art” at
the time of Appellant’s invention. Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Moreover, the Examiner provides “articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006); see Final Act. 9 (citing Majcher ¶ 9).
Appellant’s similar argument that “Allen is not properly combinable with
Koke and Majcher” (Appeal Br. 35) fails for similar reasons.
Accordingly, we sustain the Examiner’s § 103 rejection of
independent claim 1, as well as the Examiner’s § 103 rejection of dependent
claims 3–7, 10–18, and 20–23, argued as a group with claim 1. Id. at 37.
With regard to dependent claim 2, Appellant argues that “there is no
disclosure in Majcher in paragraphs [0002] or [0003] of a numerical value
corresponding to thousandths of an inch.” Appeal Br. 37. Appellant points to
the description in the Specification that “the correspondence to thousandths
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of an inch includes numbers that are ‘for instance 20, 40, 60, 80, 100 and
120 thousandths of an inch.’” Id. (citing Spec. ¶ 27).
We are not persuaded that the Examiner errs. The Examiner finds that
Majcher teaches a slicer correlation chart with numerical values. Ans. 30
(citing Majcher ¶ 8, which describes Majcher Fig. 6). We note that Figure 6
of Majcher teaches 20 thousandths of an inch (.020), as well as 40, 60, 80,
100 and 120 thousandths of an inch.
For these reasons, we are not persuaded that the Examiner errs in
finding that the combination of Koke, Majcher, and Allen teaches or
suggests the disputed limitation of claim 2.
Accordingly, we sustain the Examiner’s § 103 rejection of claim 2.
Claims 8, 9, and 19
Claim 8 depends from claim 1 and further recites “wherein the
identifying features further include an independent color associated with the
integer thickness number and slice thickness.” Appeal Br. 45. Appellant
argues that Kanner teaches that slices may be decorated to duplicate the
color and texture of the cold cuts replicated on the display, but does not
teach an independent color code associated with the integer thickness
number and slice thickness, as claim 8 requires. Id. at 39.
Claim 9 depends from claim 8 and further recites “wherein the
independent colors correspond to a color rainbow ranging from red
representing the greater thickness to purple representing the lowest
thickness.” Appeal Br. 45. Appellant argues that the Examiner improperly
dismissed the limitation as a “label” that does not add patentability. Id. at 40.
We are not persuaded of Examiner error. The Examiner finds that
Kanner teaches a point of purchase display panel showing five cold cut slice
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simulations that are decorated “to duplicate the color and texture of the cold
cuts replicated on the display.” Final Act. 19 (citing Kanner 2:35–37). The
Examiner determines that any potential difference in the particular
assignment of colors is not to be given patentable weight, in that the colors
are printed matter and nonfunctional descriptive material having no new and
nonobvious relationship to the slice thickness gauge. Final Act. 40–41; see
In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004)). The Examiner finds that the
recited colors are mere labels for the thicknesses shown on a thickness
gauge, and that there is no functional relationship between the two. See Final
Act. 40–41; Ans. 30–31. The Examiner further finds that any differences
between what is taught in Kanner and what is recited in claims 8 and 9 relate
merely to the meaning and information conveyed through the labels (i.e., the
colors), which does not explicitly alter or impact the steps of the method and
does not patentably distinguish the claimed invention from the prior art. Id.
Appellant does not present persuasive argument directed to an alleged
functional relationship between the colors appearing on the color chart and
the thickness gauge. See Reply Br. 16 (“[T]he colors functionally correspond
to certain thicknesses.”) Because the Examiner’s position regarding the
colors appearing on the thickness gauge being nonfunctional descriptive
material, having no new or nonobvious functional relationship to the
substrate, is on solid legal footing, the Examiner’s § 103 rejection of claims
8 and 9 as obvious over the combination of Koke, Majcher, Allen, and
Kanner is sustained.
DECISION
We affirm the Examiner’s decision rejecting claims 1–23.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–23 101 Eligibility 1–23
1–7, 10–18,
20–23
103 Koke, Majcher, Allen 1–7, 10–18,
20–23

8, 9, 19 103 Koke, Majcher, Allen,
Kanner
8, 9, 19
Overall
Outcome:
1–23

TIME PERIOD FOR RESPONSE
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