Attorney Docket No. P65860
`
`U.S. Pat. Appl. No. 17/695,361
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Inventor(s)
`
`: Hiroshi YAHATAetal.
`
`Art Unit
`
`: 1793
`
`Appl. No.
`
`: 17/695,361
`
`Examiner
`
`: Lien Thuy Tran
`
`Filed
`
`: March 15, 2022
`
`Conf. No.
`
`: 8800
`
`For
`
`: METHOD FOR CONTROLLING FOOD PRINTER
`
`APPEAL BRIEF UNDER37 C.F.R. § 41.37
`
`Commissioner for Patents
`U.S. Patent and Trademark Office
`Mail Stop Appeal Brief - Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Commissioner:
`
`This appeal is from thefinal rejections of claims 1-21, as set forth in the Final Office
`
`Action dated July 17, 2023.
`
`A Notice of Appeal was filed on November17, 2023, together with a request for a
`
`one-month Extension of Time. Thus, the period for filing an appeal brief is set to expire
`
`on January 17, 2024.
`
`Accordingly, no additional fees are believed to be due with thefiling of this Appeal
`
`Brief. The requisite fee for filing the Notice of Appeal under 37 C.F.R. §41.20(b)(1) was
`
`submitted on November 17, 2023. However, if for any reason any necessary fee is not
`
`associated with this file or the submitted fee is inadequate, the Commissioneris authorized
`
`to charge any fee for the Appeal Brief and/or any necessary extension of time fees to
`
`Deposit Account No. 19-0089.
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`TABLE OF CONTENTS
`
`Real Party In Interest ......00000000occcccc cece eee e tte e eect ttt ee eee tbtnteeeettitieeesenttieeees 3
`Related Appeals, Interferences, and Trials .......0..00000cccccccce cee eeceteeeeeeenetteeees 4
`Status Of Claims... cece cece eee ce ects eeeeteeeesteteeesesseeessseeestsseesteeetsseeetteaes 5
`Summary of Claimed Subject Matter 0000000000000 ccc cece eee e ett eeetereeeeees 6
`Grounds of Rejection to be Reviewed on Appeal........0..0.0cccc cece ccccetteeeeees 10
`ATQUMENE20...EEE EEE CED EE tee eee eet ttttiettteteebeeeettties 11
`Prosecution History and Basis for Appeal ........0.000000cccccccccccesceeetteteeeetetteeees 11
`Overview of Claimed Subject Matter and Nature and Deficiencies
`Of RefectiOns 2.2...ee eee eee nee ect tte et btbdtttetttttenttteeeeeeenes 12
`Overview of Claimed Subject Matter 0.000000. cece cee eeeetteeeenes 12
`Overview of Nature and Deficiencies of Rejections............00000ccee eee 13
`Independent Claims 1 and 2 of the Present Application... 14
`Independent Claim 2 oo... ccc cece eee c cet e eect bnteeeeettteteeeecttteeeenteies 14
`Independent Claim 1 oo... ccc cece ccc e eee ctnteeeectbseteeeectttteeeeniies 15
`Claims 1-21 are Not Rendered ODVI0US ...0...00..00 occe etc et eteeettteeteees 16
`Overview of the Relevant Legal Principles.....0..0.0.000cccccccc ccc cceteeeeteeeeees 16
`The Rejection of Claims 1-21 under 35 U.S.C. § 103 is Impropert................... 17
`The Rejection of Claims 1-21 under 35 U.S.C. § 103 is Requested
`to be Reversed... icc ccc c eee cece eeetceeeteeeeeteeeetsseeeetisseenisseestsseesteeenteeees 21
`Claims 1-21 do Not Fail to Comply with the Written Description
`Requirement 00.00.0000 ccc eee eee eee e nn tee eb cotta dete cbtiteeentieeeenitteieeees 21
`Overview of the Relevant Legal Principles.....0..0.0.000cccccccc ccc cceteeeeteeeeees 21
`The Rejection of Claims 1-21 under 35 U.S.C.
`§ 112(a) is
`TMproper ooo... cece ec cece cece cece eeeeeeeeeeeeeeeeeeeeeeeeeeeeeeeeeeeeeeeeeeeeeeeeseeeseeeeeees 22
`The Rejection of Claims 1-21 under 35 U.S.C.
`§ 112(a) is
`Requested to be Reversed ..........0...ccccccccccccce cece cect ee eetenteeeceseeeectstttteeenteies 28
`Claims 1-21 are directed to Patent-Eligible SubjectMatter... 29
`Overview of the Relevant Legal Principles.....0..0.0.000cccccccc ccc cceteeeeteeeeees 29
`The Rejection of Claims 1-21 under 35 U.S.C. § 101 is Improper................... 31
`The Rejection of Claims 1-21 under 35 U.S.C. § 101 is Requested
`to be Reversed... icc ccc c eee cece eeetceeeteeeeeteeeetsseeeetisseenisseestsseesteeenteeees 34
`Conclusion... cece cece cece ee ete eeeteeeeteeeescseesestseeestseeeesseeetsseetsseeenseeeenees 35
`Claims Appendix 0.0.0.0... cece cece cece cent cette ete e bbb bbsteecctttitteestiteeetiies 36
`
`Il.
`
`II.
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`IV.
`
`VI.
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`w>
`
`VIL.
`
`Vil.
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`L
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`REAL PARTY IN INTEREST
`
`The real party in interest is Panasonic Intellectual Property Management Co., Ltd.,
`
`as evidenced by an assignment recorded on July 25, 2022 at reel 060611, frame 0256.
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`IL.
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`RELATED APPEALS, INTERFERENCES, AND TRIALS
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`Appellant is not aware of any prior or pending appeals, judicial proceedings,
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`interferences, or trials before the Board which involve an application or patent owned by
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`the appellant or assignee, are known to appellant, the appellant’s legal representative, or
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`assignee; and may be related to, directly affect, or be directly affected by or have a bearing
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`on the Board’s decision in the pending appeal.
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`it.
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`STATUS OF CLAIMS
`
`Claims 1-21 are pending in the present application with claims 1 and 2 being in
`
`independentform.
`
`Claims 1-21 are rejected and are subject to this appeal.
`
`The rejected claims subject to this appeal (7.e., claims 1-21) are included in the
`
`Claims Appendix.
`
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`IV.
`
`SUMMARY OF CLAIMED SUBJECT MATTER
`
`The following description is made with respect to the independent claims and
`
`includes references to particular parts of the specification of the present application. As
`
`such, the following is merely exemplary and is not a surrender of other aspects of the
`
`present disclosure that are also enabled by the present specification as well as those that
`
`are directed to equivalent structures within the scope of the claims.
`
`The citations made herein are with respect to the specification filed on March 15,
`
`2022 (hereinafter “Specification”). For convenience, the citations are made with respect
`
`to paragraph and page/line numbers.
`
`Independent Claim 1
`
`Independent claim 1 is directed to a method for controlling a food printer in a food-
`
`material providing system, with the food printer being a food printer that creates a first
`
`printed food, and with the first printed food being created by the food printer by using a
`
`first print pattern.
`
`(Specification at FIG. 3; FIG. 4; §[0005] on page 1, line 23 to page 2,
`
`line 3; J9[0013]-[0016] on page 3, line 21 to page 4, line 24).
`
`The method is configured to be implemented by a computer in the food-material
`
`providing system. (Specification at [0055] on page 10, lines 15-20).
`
`The method acquires sensing data related to chewing/swallowing information of
`
`one user via a network from a sensing device associated with the one user. (Specification
`
`at FIG 1 at 200 and 500; FIG. 3 at S7 and S16; [0060]-[0061] on page 11, lines 17-32;
`
`40063] on page 12, lines 7-12; and §[0065]-[0070] on page 12,line 19 to page 14, line
`
`17). The chewing/swallowing information of the one useris related to a motion of the one
`
`user including chewing and swallowingthefirst printed food by the one user when the one
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`user eats the first printed food. (Specification at [0005] on page 1, line 23 to page 2, line
`
`3; and §[0016] on page4, lines 17-24).
`
`The method determines based on the chewing/swallowing information of the one
`
`user, a number of chews made by the one user in eating the first printed food.
`
`(Specification at FIG. 2; FIG. 3 at S9 and S18; FIG. 4 at $102; F{[0016]-[0018] on page 4,
`
`line 17 to page 5, line 1; {][0040]-[0046] on page 8, line 10 to page 9, line 1; [0073] on
`
`page 14, line 31 to page 15, line 13; 4[0078] on page 16, line 13 to page 17, line 2; and
`
`q[0079]-[0084] on page 17, line 3 to page 18, line 24).
`
`The method also determines, based onat least the first print pattern and the number
`
`of chews, a second print pattern used for a second printed food whichis created for the one
`
`user by the food printer.
`
`(Specification at FIG. 4 at $105 and $106; ¥ [0016] on page 4,
`
`lines 17-24; §[0073] on page 14, line 31 to page 15, line 13; and [0123]-[0133] on page
`
`27, line 6 to page 30, line 6). The second printed food is harder than the first printed food
`
`when the numberof chews made bythe oneuseris less than a target number of chewsfor
`
`the one user.
`
`(Specification at FIG. 4 at $105; §[0019] on page 4, lines 23-26; and
`
`q{[0087]-[0089] on page 19, line 15 to page 20, line 11). Thefirst print pattern includes
`
`first three-dimensional geometry data representing the first printed food, and the second
`
`print pattern includes second three-dimensional geometry data representing the second
`
`printed food. (Specification at §[0073] on page 14, line 31 to page 15, line 13; 4[0090] on
`
`page 20, lines 12-16; and 970123 ]-[0133] on page 27, line 6 to page 30,line 6).
`
`The method even further transmits print control information to the food printer via
`
`the network.
`
`(Specification at FIG.
`
`1 at 400 and 500; FIG. 3 at S5 and $14; and 4[0094]
`
`on page 21, lines 10-16). The print control information is used for causing the food printer
`
`to create the second printed food for the one user using the determined secondprintpattern.
`
`(Specification at FIG. 3 at S6 and S15; §[0093] on page 21, lines 7-9; and 4][0123]-[0133]
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`on page 27, line 6 to page 30,line 6).
`
`Independent Claim 2
`
`Independent claim 2 is directed to a method for controlling a food printer in a food-
`
`material providing system, with the food printer creating a first printed food. (Specification
`
`at FIG. 3; FIG. 4; J§[0015]-[0017] on page 4,lines 6-31). Thefirst printed food is created
`
`by the food printer by using a first print pattern. (Specification at {§[0123]-[0133] on page
`
`27, line 6 to page 30, line 6). The method is configured to be implemented by a computer
`
`in the food-material providing system. (Specification at §[0055] on page 10, lines 15-20).
`
`The method acquires sensing data related to chewing/swallowing information of
`
`one user via a network from a sensing device associated with the one user.
`
`(Specification
`
`at FIG 1 at 200 and 500; FIG. 3 at S7 and S16; J§[0060]-[0061] on page 11, lines 17-32;
`
`[0063] on page 12, lines 7-12; and 4][0065]-[0070] on page 12, line 19 to page 14, line
`
`17). The chewing/swallowing information of the one user represents a number of chews
`
`made by the oneuserin eating thefirst printed food. (Specification at FIG. 2; FIG. 3 at S9
`
`and S18; FIG. 4 at $102; 4§[0016]-[0018] on page 4, line 17 to page 5, line 1; 4[0040]-
`
`[0046] on page 8,line 10 to page 9, line 1; [0073] on page 14, line 31 to page 15, line 13;
`
`[0078] on page 16, line 13 to page 17, line 2; and J{[0079]-[0084] on page 17, line 3 to
`
`page 18, line 24).
`
`The method determines, based onat least the first print pattern and the number of
`
`chews, a secondprint pattern used for a second printed food which is created for the one
`
`user by the food printer.
`
`(Specification at FIG. 4 at $105 and $106; §[0016] on page 4,
`
`lines 17-24; §[0073] on page 14, line 31 to page 15, line 13; and 4[0123]-[0133] on page
`
`27, line 6 to page 30, line 6). The second printed food is harder than the first printed food
`
`when the number of chews bythe oneuseris less than a target numberof chewsfor the
`
`(Specification at FIG. 4 at $105; 4[0019] on page4, lines 23-26; and §{/[0087]-
`one user.
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`[0089] on page 19, line 15 to page 20, line 11). Thefirst print pattern includesfirst three-
`
`dimensional geometry data representing the first printed food, and the second print pattern
`
`includes second three-dimensional geometry data representing the second printed food.
`
`(Specification at [0073] on page 14, line 31 to page 15, line 13; [0090] on page 20,lines
`
`12-16; and §§[0123]-[0133] on page 27,line 6 to page 30, line 6).
`
`The method even further transmits print control information to the food printer via
`
`the network.
`
`(Specification at FIG.
`
`1 at 400 and 500; FIG. 3 at S5 and S14; and 40094]
`
`on page 21, lines 10-16). The print control information is used for causing the food printer
`
`to create the second printed food for the one user using the determined secondprintpattern.
`
`(Specification at FIG. 3 at S6 and S15; §[0093] on page 21, lines 7-9; and 44][0123]-[0133]
`
`on page 27, line 6 to page 30,line 6).
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`V.
`
`GROUNDS OF REJECTION TO BE REVIEWED ON APPEAL
`
`Whether claims 1-21 (ie., all examined claims) are rejected under 35 U.S.C. §
`
`112(a) as failing to comply with the enablement requirement.
`
`Whether claims 1-21 (7.e., all examined claims) are rejected under 35 U.S.C. § 101
`
`as being directed to non-statutory subject matter.
`
`Whether claims 1-21 (7.e., all examined claims) are rejected under 35 U.S.C. § 103
`
`as being unpatentable over U.S. Pat. Appl. Pub. No. 2018/0116272 to Hardeeet al.
`
`(hereinafter “HARDEE”) in view of U.S. Pat. Appl. Pub. No. 2020/0152312 to Connor
`
`(hereinafter “CONNOR’).
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`VI.
`
`ARGUMENT
`
`In the following sections, Appellant initially sets forth a brief history of the
`
`prosecution history of the present application, followed by the manner of arguing the
`
`deficiencies of the rejections, and thereafter the deficiencies of the rejections themselves.
`
`A,
`
`Prosecution History and Basis for Appeal
`
`A first non-final Office Action was mailed on March 28, 2023.
`
`In response, a
`
`telephone interview was conducted on June 20, 2023, during which Examiner Tran
`
`indicated that the level of specificity required by heris not set forth in the specification of
`
`the present application as filed, and that no amendments/efforts by Appellant would be
`
`sufficient to overcome any of the rejections of record.
`
`Instead, Examiner Tran suggested
`
`that Appellant file a continuation-in-part to add the details and working examples she
`
`desired.
`
`Notwithstanding the Examiner’s suggestion, Appellant attempted to amend the
`
`claims as required by Examiner Tran. Appellant’s attempt, however, was not productive,
`
`and the instant Final Office Action was mailed maintaining the original rejections.
`
`Appellant filed a Pre-Appeal Brief Request for Review in related U.S. Pat Appl.
`
`No. 17/695,392 on September 11, 2023, as a further, albeit unsuccessful, attempt to
`
`advance prosecution.
`
`As a result, the present application finds itself in front of the Board for lack of
`
`alternative options. The claims have been twicerejected, and thus, the basis for this appeal
`
`is appropriate.
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`B.
`
`Overview of Claimed Subject Matter and Nature and Deficiencies of
`Rejections
`
`1.
`
`Overview of Claimed Subject Matter
`
`The independent claims of the present application are directed to methods for
`
`controlling a food printer in a food-material providing system, with the food printer
`
`creating a first printed food. The first printed food is created by the food printer by using
`
`a first print pattern, and with the methods being configured to be implemented by a
`
`computer in the food-material providing system.
`
`According to the independentclaims, sensing data related to chewing/swallowing
`
`information of one user is acquired via a network from a sensing device associated with
`
`the one user. The chewing/swallowing information of the one user: is related to a motion
`
`of the one user including chewing and swallowingthefirst printed food when the one user
`
`eats the first printed food, from which a number of chews made by the one user may be
`
`determined; or represents a numberof chews madebythe oneuserin eating the first printed
`
`food.
`
`Based on at least the first print pattern (which includes first three-dimensional
`
`geometry data representing thefirst printed food) and the numberof chews, a secondprint
`
`pattern (which includes second three-dimensional geometry data) for a second printed
`
`food, whichis to be created for the one user by the food printer, is determined. The second
`
`printed food is harder than the first printed food when the number of chews made bythe
`
`one useris less than a target number of chewsfor the one user.
`
`Print control information 1s transmitted to the food printer via the network, with the
`
`print control information being used for causing the food printer to create the second
`
`printed food for the one user using the determined secondprint pattern.
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`In view of the above,
`
`irrespective of any of the Examiner’s beltefs/requests
`
`regarding patentability and information in support thereof, the above-mentioned features
`
`are submittedto surely comprise patent-cligible subject matter and be enabled, as the patent
`
`statutes intend.
`
`That is, the claimed features are certainly enabled, especially when considered in
`
`viewof the specification of the present application. Indeed, a skilled artisan could certainly
`
`print a first printed food, determine or acquire a number of chews by one user in eating
`
`suchfirst printed food, and create a second(e.g., harder) printed food for the one user based
`
`on such number of chews. Appellant respectfully submits that an artisan skilled in the
`
`relevant field could certainly make and use such claimed inventions.
`
`Moreover, the claimed features are not abstract. That is, printing a first printed
`
`food, determining or acquiring a number of chewsof a user in eating such first printed
`
`food, and printing a second (e.g., harder) printed food are surely not a Mathematical
`
`Concept, Certain Methods of Organizing Human Activity (such as fundamental economic
`
`principles or practices, commercial or legal interactions, or managing personal behavior
`
`or relationships or interactions between people), or Mental Processes.
`
`Moreover, as will be discussed in the following sections, the claimed features are
`
`clearly not rendered obvious by the applied documents. The Examiner instead appears to
`
`envelop the claims in assertions of being too broad, and thus, being non-enabled and not
`
`directed to patent-eligible subject matter, rather than conducting a proper examination.
`
`2.
`
`Overview of Nature and Deficiencies of Rejections
`
`The Final Office Action sets forth three rejections of claims 1-21 of the present
`
`application. Each rejection, however, is general in nature and doesnot specifically address
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`the elements of each of the claims. That is, the rejections essentially reject all claims for
`
`being too broad, or based on a summary conclusion of obviousness, without considering
`
`the features of each claim specifically.
`
`Indeed, the features of most dependent claims do
`
`not even appear to have been considered once during the Final Office Action.
`
`In this regard, although only persuasive authority, “an examiner must provide clear
`
`explanations of all actions taken.” (Manual of Patent Examining Procedure at § 707.07(9).
`
`In the instant matter, as will be highlighted in the following sections,
`
`the
`
`Examiner’s reasons for rejecting each of claims 1-21 under each of the three rejectionsis
`
`unclear (aside from the general conclusion that the claims are “too broad”). This alone is
`
`grounds for reversal of a// rejections, as Appellant is unable to specifically address the
`
`grounds of the rejection of each clair. Nevertheless, in the following sections, Appellant
`
`will set forth the deficiencies of the rejections as best possible, in viewof the grounds of
`
`the rejections as explained in the Final Office Action.
`
`C.
`
`Independent Claims 1 and 2 of the Present Application
`
`1.
`
`Independent Claim 2
`
`As discussed in Section IV of this paper and generally repeated here for
`
`convenience, independent claim 2 of the present application is directed to a method for
`
`controlling a food printer of a food-material providing system, with the food printer
`
`creating a first printed food. Thefirst printed food is created by the food printer by using
`
`a first print pattern, and the method is configured to be implemented by a computerin the
`
`food-material providing system.
`
`The method acquires sensing data related to chewing/swallowing information of
`
`one user via a network from a sensing device associated with the one user.
`
`The
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`chewing/swallowing information of the one user represents a number of chews made by
`
`the one userin eating thefirst printed food.
`
`The method further determines, based on at least the first print pattern and the
`
`number of chews, a second print pattern used for a second printed food which is created
`
`for the one user by the food printer. The second printed foodis harderthanthe first printed
`
`food when the numberof chewsby the one useris less than a target number of chews for
`
`the one user. The first print pattern includes first three-dimensional geometry data
`
`representing the first printed food, and the second print pattern includes second three-
`
`dimensional geometry data representing the second printed food.
`
`The method transmits print control information to the food printer via the network,
`
`with the print control information being used for causing the food printer to create the
`
`second printed food for the one user using the determined secondprint pattern.
`
`2.
`
`Independent Claim 1
`
`Also as discussed in Section IV of this paper, independent claim 1 of the present
`
`application is directed to a further method for controlling a food printer of a food-material
`
`providing system as independent claim 2, except wherein the chewing/swallowing
`
`information of the one useris related to a motion of the one user including chewing and
`
`swallowing the first printed food by the one user when the one usereats the first printed
`
`food.
`
`In this regard, the method of claim 1 further determines the number of chews made
`
`by the one user in eating the first printed food, based on the chewing/swallowing
`
`information of the one user.
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`D.
`
`Claims 1-21 are Not Rendered Obvious
`
`1.
`
`Overview of the Relevant Legal Principles
`
`The U.S. Supreme Court hasstated that, “[s]ection 103 forbids issuance of a patent
`
`when‘the differences between the subject matter sought to be patented andthepriorart are
`
`such that the subject matter as a whole would have been obviousat the time the invention
`
`was made to a person having ordinary skill in the art to which said subject matter pertains.’”
`
`(KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)).
`
`In this regard, the question of obviousnessis resolved on the basis of underlying
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`factual findings. (Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
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`U.S. at 406-07). While the determination of obviousness is ultimately a legal conclusion,
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`if the underlying factual findings are erroneous, then a legal conclusion of obviousness
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`based upon erroneous underlying factual findings is in error and cannotbe sustained.
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`In order to establish a prima facie case of obviousness, it must be established that
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`all of the claimed elements are knownin the prior art, and that the skilled artisan could
`
`have combined the elements as claimed by known methods with no change in their
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`respective functions.
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`(KSR, 550 US. at 416). “[R]ejections on obviousness cannot be
`
`sustained by mere conclusory statements; instead, there must be somearticulated reasoning
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`with some rational underpinning to support the legal conclusion of obviousness.’” (KSR,
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`550 U.S. at 418). Moreover, the examinerbearsthe initial burden of factually supporting
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`any primafacie case of obviousness.
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`(See, e.g., Jnre Rinehart, 531 F.2d 1048, 189 USPQ
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`143 (CCPA 1976)).
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`2.
`
`The Rejection of Claims 1-21 under 35 U.S.C. § 103 is Improper
`
`Claims 1-21 (7.e., all examined claims) are rejected under 35 U.S.C. § 103 as being
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`unpatentable over U.S. Pat. Appl. Pub. No. 2018/0116272 to Hardeeet al. (hereinafter
`
`“HARDEBE”) in view of U.S. Pat. Appl. Pub. No. 2020/0152312 to Connor (hereinafter
`
`“CONNOR’”). The grounds of the rejection of Independent Claims 1 and 2 are set forth on
`
`pages 6-8 of the Final Office Action. No groundsof rejection of dependent claims 3-21 are
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`set forth.
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`As will be discussed in the following sections, the grounds of the rejection are
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`improperfor: failing to establish (or evenassert) that all of the claimed elements are known
`
`in the prior art; and being based on mere conclusory statements without articulated
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`reasoning with underlying support.
`
`a)
`
`The Rejection of Independent Claim 2 is Improper
`
`HARDEEdiscloses embodiments for 3D printing a food item by a processor. (See,
`
`e.g., HARDEEat Abstract). Specifically, the embodiments get a request for 3D printing
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`of the food item based on information associated with a consumer, and 3D print the food
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`item.
`
`(See, e.g., HARDEEat [0004] and Final Office Action at page 6, lines 15-23). The
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`information associated with the consumer may include, for example, dietary restrictions
`
`and/or preferences
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`(e.g., based on health/medical history), preferred ingredient
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`characteristics, item price limits, etc.
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`(See, e.g., HARDEEat §[0061]).
`
`The Examiner, however, explicitly acknowledges that HARDEEdoesnot disclose
`
`any chewing/swallowing information that represents a number of chews madeby one user
`
`in eating a first printed food.
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`(Final Office Action at page 7,
`
`lines 8-11). Thus,
`
`it
`
`necessarily follows that HARDEEalso fails to disclose (or render obvious) the second
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`printed food that is harder thanthe first printed food when the numberof chewsis less than
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`a target numberof chews, andthe features relating thereto.
`
`CONNORdiscloses a system for nutritional monitoring and management which
`
`includes a camera, a spectroscopic sensor, a fiducial component, a wearable biometric
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`sensor, a smart utensil or dish, a passive feedback mechanism which provides a person with
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`information concerning food item types and/or quantities, and an active stimulus
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`mechanism which modifies the person's food-related physiological processes.
`
`(See, e.g.,
`
`CONNORatAbstract). In this regard, as noted in the Final Office Action, the smart utensil
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`can track a numberof times the utensil is lifted or lowered, and/or can weigh each bite or
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`mouthful.
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`(See Final Office Action at page 7, lines 5-12 and CONNORat§[0029]).
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`In the rejection of independentclaim 2, in view of the above teachings of HARDEE
`
`and CONNOR,the Examinerasserts that it would have been a mere matter of design choice
`
`to input “different data” into the embodiments of HARDEEbased on prior consumption,
`
`apparently in view of the sensing devices of CONNOR.
`
`(Final Office Action at page 7,
`
`lines 15-20).
`
`First, the rejection of independent claim 2 does not even mention, nor contemplate,
`
`any chewing/swallowing information of a user that represents a numberof chews made by
`
`the user in eating a first printed food. Indeed, the rejection does not even mention “number
`
`of chews,” nor is any rationale provided by which such feature is asserted to be rendered
`
`obvious. The mereassertion of “different data” being “an obvious matter of design choice”
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`completely and entirely fails to satisfy the Examiner’s burden of supporting an obviousness
`
`rejection.
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`Indeed,
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`the rejection includes no articulated reasoning with any rational
`
`underpinning to support the legal conclusion.
`
`(See Final Office Action at page 7, line 21
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`{P65860 06005493.DOCX}
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`to page 8, line 13).
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`Instead, the conclusion appears to be based on Examiner speculation
`
`(and the Examiner’s bias for the claims being too broad).
`
`Second, even assuming, arguendo,that the skilled artisan would modify HARDEE
`
`to input “different data” for 3D printing of the food item in HARDEEasasserted, any
`
`resultant combination would not determine a second printed food to be harder thana first
`
`hardness(ofa first printed food) when a numberof chewsis less than a target number of
`
`chews. Again, the rejection and the applied documents are completely silent about any
`
`numberof chews. Thatis, the rejection does not even assert that such feature is rendered
`
`obvious, nor even appear to contemplate such feature. While the rejection references the
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`food utensil of CONNOR which can track a numberof times of being put down, such
`
`feature is completely unrelated to and cannot arrive at a number of chewsin eating food.
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`(See Final Office Action at page 7, lines 12-20). Thus, even if the skilled artisan modified
`
`the embodiments of HARDEEto input “different data” in view of the smart utensil of
`
`CONNOR,
`
`the asserted combination fails to arrive at
`
`the “number of chews” of
`
`independent claim 2 and the features flowing therefrom. While the Examiner summarily
`
`concludes that
`
`the Appellant
`
`is combining known concepts, nothing in the record
`
`establishes that such features are knownin the prior art.
`
`(See Final Office Action at page
`
`7, line 21 to page 8, line 13).
`
`Accordingly, since the asserted combination both lacks underlying support andfails
`
`to establish that all of the claimed elements are known in the prior art, the rejection is
`
`improperandfails to establish a primafacie case of obviousness.
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`Thus, the rejection of independent claim 2 is in error and requested to be reversed.
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`{P65860 06005493.DOCX}
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`b)
`
`The Rejection of Independent Claim 1 is Improper
`
`Independent claim 1 is rejected based on a samerationale as independentclaim 2.
`
`(See Final Office Action at pages 6-8).
`
`Independent claim 1 recites similar features as
`
`independent claim 2, except wherein the chewing/swallowing information of the one user
`
`is related to a motion of the one user including chewing and swallowingthefirst printed
`
`food by the one user when the oneusereats the first printed food, whereupon the method
`
`of claim 1 determines the number of chews madebythe oneuserin eating thefirst printed
`
`food, based on the chewing/swallowing information of the oneuser.
`
`The groundsof the rejection of independent claims 1 and 2 are again completely
`
`silent about any “number of chews.”
`
`Assuch, the arguments as set forth above with respect to independentclaim 2 are
`
`equally applicable to independent claim 1, and thus, the rejection of this claim is also in
`
`error and requested to be reversed.
`
`c)
`
`The Rejection of Claims 3-21 are Improper
`
`Claims 3-21 are each directly or indirectly dependent from independentclaim 1,
`
`which is improperly rejected as being rendered obvious by HARDEE in view CONNOR
`
`for the reasons discussed supra. As such, the arguments as set forth above with respect to
`
`claim 1 are equally applicable to claims 3-21, and thus, the rejection of these claims is also
`
`in error and requested to be reversed.
`
`Moreover, the Final Office Action does not set forth any rationale for the rejections
`
`of claims 3-21. At most, the Final Office Action acknowledgesthat the features of claims
`
`3-21 are not disclosed by HARDEE.
`
`(Final Office Action at page 7,
`
`lines 8-11).
`
`Conclusions of obviousness must be supported by somearticulated reasoning with some
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`{P65860 06005493.DOCX}
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`Attorney Docket No. P65860
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`U.S. Pat. Appl. No. 17/695,361
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`rational underpinning, and the examiner bears the initial burden of factually supporting
`
`any prima facie case of obviousness.
`
`In the instant matter, there is no reasoning (with or
`
`without rational underpinning), and the Examinerhas not provided any support to satisfy
`
`the initial burden. Thus, the rejection of claims 3-21 is further in error and requested to be
`
`reversed.
`
`3.
`
`The Rejection of Claims 1-21 under 35 U.S.C. § 103 is Requested to be
`Reversed
`
`Forthese reasons, the rejection of claims 1-21 as being unpatentable over HARDEE
`
`in view of CONNORis in error and requested to be reversed.
`
`E.
`
`Claims 1-21 do Not Fail to Comply with the Written Description Requirement
`
`1.
`
`Overview of the Relevant Legal Principles
`
`35 U.S.C 112(a) requires that the specification include: (1) a written descripti