www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/695,361
`
`03/15/2022
`
`HIROSHI YAHATA
`
`P65860
`
`8800
`
`GREENBLUM & BERNSTEIN,P.L.C.
`1950 ROLAND CLARKE PLACE
`RESTON, VA 20191
`
`TRAN, LIEN THUY
`
`ART UNIT
`
`1793
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/17/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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):
`
`gbpatent @ gbpatent.com
`greenblum.bernsteinplc @ gmail.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`17/695, 361
`Examiner
`LIEN T TRAN
`
`Applicant(s)
`YAHATAetal.
`Art Unit
`1793
`
`AIA (FITF) Status
`Yes
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 6/28/23.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-21 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C) Claim(s)__ is/are allowed.
`Claim(s) 1-21 is/are rejected.
`1) Claim(s)__is/are objectedto.
`Cj} Claim(s)
`are subjectto restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1... Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) ([] Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 06/14/2023.
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230712
`
`

`

`Application/Control Number: 17/695,361
`Art Unit: 1793
`
`Page 2
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined under the first
`
`inventor to file provisions of the AIA.
`
`2.
`
`This office action is in response to amendmentfiled on 6/28/23. Claims 1-8,11-18 are amended
`
`and claims 20-21 are added. Claims 1-21 are pending.
`
`3.
`
`4.
`
`The previous 112 second paragraph rejection is withdrawn due to the amendment.
`
`The obviousness-double patenting rejection is withdrawn due tothefiling of the Terminal
`
`Disclaimer which was approved.
`
`5.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`Claim Rejections - 35 USC § 112
`
`(a) IN GENERAL.—The specification shall contain a written description of the invention, and
`of the manner and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to
`makeand use the same,and shall set forth the best mode contemplated by the inventor or joint
`inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AlA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the manner and
`process of making and using it, in such full, clear, concise, and exact terms as to enable any person
`skilled in the art to which it pertains, or with whichit is most nearly connected, to make and use the
`same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
`
`6.
`
`Claims 1-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first paragraph, as
`
`failing to comply with the enablement requirement. The claim(s) contains subject matter which was not
`
`described in the specification in such a way as to enable oneskilled in the art to which it pertains, or
`
`with which it is most nearly connected, to make and/or use the invention.
`
`Factors for Assessing Enablement(a.k.a. The Wands Factors)
`
`These factors include, but are not limited to:
`
`

`

`Application/Control Number: 17/695,361
`Art Unit: 1793
`
`Page 3
`
`1. Breadth of the claims;
`
`2. Nature of the invention;
`
`3. State of the prior art;
`
`4. Level of one of ordinaryskill;
`
`5. Level of predictability in the art;
`
`6. Amountof direction provided;
`
`7. Existence of working examples; and
`
`8. Quantity of experimentation needed.
`See: MPEP §2164.01(a); In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
`
`The claims are directed to a method for controlling the food printer to produce food having a
`
`certain pattern based on the chewing/swallowing data. The print pattern is changed based on the
`
`number of chewsandafirst print patter. However, the breadth of the claims is too broad. The claims
`
`do not provide anyspecificity to enable one skilled in the art to carry out the method. While the claims
`
`recite to print food based on the chewing/swallowing cycle, there is no specificity to the data and howit
`
`is used to affect the pattern. The chewing and swallowing of food can vary among different people. The
`
`amendment recites “ one user” but the methodis not just restricted to one user only. The sensing of
`
`the data is for one user at a time but the methodis not just for one same person. There is no teaching
`
`of how the sensing is changed to target different populations. For instance, if the one user is a5 years
`
`old, how doesthe sensing differ if the one user is 80 years old. One person can take a long time to chew
`
`the same food as opposedto another individual. There is no disclosure to take into consideration such
`
`factor. The instant specification does not define any formulation of food.
`
`It is not know which
`
`population is targeted as chewing/swallowing differs among people and how the data is used to make
`
`the second food. There is no disclosure of correlation between the data and the food printed. For
`
`instance,if the number of chewsis 20, how does that number translate to printing the food versus a
`
`

`

`Application/Control Number: 17/695,361
`Art Unit: 1793
`
`Page 4
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`chewing numbers of 19 or 16 or 15, etc.. The specification does not disclose how a predetermined
`
`number of chewsis determined. What factors are involved in the determination of the predetermined
`
`number of chews. For instance, claim 5 recites the size of the chunks. But, there is no teaching of how
`
`the size is determined. What factors are involved in the determination of the size. The nature of the
`
`invention is too variable and unpredictable. The chewing and swallowing pattern are unlikely to be
`
`consistent from different populations and habit. For instance, the specification discloses the
`
`acceleration sensor is attached to chopstick, fork or spoon and detects the beginning of the swallow
`
`cycle from the time the utensil is picked up to the time it is lower. However, picking up and lowering the
`
`utensil does not necessarily mean the foodis put in the mouth and swallow as a person can very well
`
`picking up and lowering the utensil without eating a food. For instance, a child can play at meal time by
`
`playing with the utensil and not actually eating the food which will make the data collected to be
`
`inaccurate to form the second food. The instant specification does not have any teaching to account to
`
`variation in such instance. There is no baseline of pattern or mass or volume established for the first
`
`food and how such pattern, or mass or volume should be varied based on the swallowing/chewing
`
`cycle. There is no working example set forth in the disclosure. There is no direction provided. The field
`
`of printing of food is relatively new. The printing of food in relation to swallowing/chewing cycle is not
`
`prevalent in the art. Thus, undue experimentation would be required to form the food meeting a
`
`required pattern based on the data as the specification provides no direction of how to use the data to
`
`form the food. What pattern or volume or size or mass are required? How should the pattern, volume,
`
`size or mass be changed based on the data? The specification discloses the second hardness can be
`
`changed suchas increasing or decreasing the number of holes. However, the specification does not
`
`disclose the cause of the holes and how the holes can be increased or decreased and how much of an
`
`increase or decrease is needed. There is no disclosure of any formulation for the food.
`
`It is unclear
`
`what the food is made of. Thereis no disclosure of ingredients or any composition. The specification
`
`

`

`Application/Control Number: 17/695,361
`Art Unit: 1793
`
`Page 5
`
`discloses the hardnesscan be adjusted by controlling or specifying the temperature. However,it is a
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`general disclosure without any specific teaching. The specification generally discloses a computer
`
`programmingto print the food. But, there is no teaching of how the data inputted is used to form the
`
`food. There is not a single example in the specification to demonstrate how the method is carried out.
`
`Based on the broadnessand generalization of the method,it is not enabling to one skilled in the art.
`
`7.
`
`35 U.S.C. 101 reads as follows:
`
`Claim Rejections - 35 USC § 101
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
`matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the
`conditions and requirementsofthis title.
`
`The claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) a
`
`method of forming a second printed food having a pattern based on the chewing/swallowing
`
`information from a sensing device. This judicial exception is not integrated into a practical application
`
`because the method only provides broad general steps without any specificity to actually carryout the
`
`method. The claim(s) does/do not include additional elements that are sufficient to amountto
`
`significantly more than the judicial exception because.
`
`The claims are directed to a method for controlling the food printer to produce food having a
`
`certain pattern based on the chewing/swallowing data. However, the breadth of the claims is too
`
`broad. The claims do not provide any specificity to carry out the method. While the claims recite to
`
`print food based on the chewing/swallowing cycle, there is no specificity to the data.
`
`It is not know
`
`which population is targeted as chewing/swallowing differs among people and how the datais used to
`
`make the second food. There is no disclosure of correlation between the data and the food printed. For
`
`instance,if the number of chew is 20, how does that numbertranslate to printing the food versus a
`
`number of chews 19 or 16 or 15, etc.. There is variation and unpredictability that can affect the
`
`

`

`Application/Control Number: 17/695,361
`Art Unit: 1793
`
`Page 6
`
`outcome. The claimed method doesnotdisclose all the variables. The chewing and swallowing pattern
`
`are unlikely to be consistent from different populations. For instance, the specification discloses the
`
`acceleration sensor is attached to chopstick, fork or spoon and detects the beginning of the swallow
`
`cycle from the time the utensil is picked up to the time it is lower. However, picking up and lowering the
`
`utensil does not necessarily mean the foodis put in the mouth and swallow as a person can very well
`
`picking up and lowering the utensil without eating a food. For instance, a child can play at meal time by
`
`playing with the utensil and not actually eating the food which will make the data collected to be
`
`inaccurate to form the second food. The instant specification does not have any teaching to accountfor
`
`variation in such instance. There is no baseline of pattern established for the first food and how such
`
`pattern should be varied based on the swallowing/chewing cycle. There is no working example set forth
`
`in the disclosure. There is no direction provided in the specification. What pattern is acceptable? How
`
`should the pattern be varied based on the data? How can the pattern be changed? The specification
`
`discloses the second hardness can be changed suchas increasing or decreasing the number of holes.
`
`However, the specification does not disclose the cause of the holes and how the holes can be increased
`
`or decreased and how muchof an increase or decrease is needed. There is no disclosure of any
`
`formulation for the food.
`
`It is unclear what the food is made of. There is no disclosure of ingredients or
`
`any composition. The specification generally discloses a computer programmingto print the food. But,
`
`there is no teaching of how the data inputted is used to form the food. There is not a single example in
`
`the specification to demonstrate how the method is carried out.
`
`Claim Rejections - 35 USC § 103
`
`8.
`
`Claim(s) 1-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hardee(
`
`2018/0116272) in view of Conor ( 2020/0152312)
`
`For claims 1,2, Hardee discloses a method for printing a food material by a processor. The
`
`method comprises the steps of receiving a request to 3D print a food item, receiving information
`
`

`

`Application/Control Number: 17/695,361
`Art Unit: 1793
`
`Page 7
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`associated with a consumer for the food item and printing the requested food item based on the
`
`information associated with the consumer of the food item. The information received from the
`
`consumer is used to modify the food item being printed. The information received is transmitted to the
`
`food printer via network to print the food item according to the information received. Sensor can be
`
`included to device layer. The 3D printing of food item is customized based on information associated
`
`with the consumers of the food items. The information can be based on health, medical history, dietary
`
`restriction etc.. (see paragraphs 0004,0012,0014,0015,0046,0050,0054,0055,0060,0061,0064)
`
`Hardee does not disclose sensing the chew/swallowing to determine the swallow cycle to make
`
`printed food with a determined pattern asin claims 1,2, the sensing parametersas in claims 3-15, the
`
`food as in claims 16-18 , the baking as in claim 19 , the gelled food of claim 20 and the holes feature as in
`
`claim 21.
`
`Connor discloses systems for nutritional monitoring and management. Connor discloses
`
`different sensors to monitor food in nutrition monitoring. The sensors include camera on eyewear,
`
`earwear, ring etc, spectroscopic sensor, wearable biometric sensor including EMG, smart utensil which
`
`collects fata concerning food item consumed by a person etc.. The food utensil can tract the number of
`
`times that a utensil is put down or weigh each bite or mouthful. Smart utensil can use motion senor to
`
`measurethe lifting and lowering of the utensil. The nutritional monitoring can include a device whichis
`
`worn on or around a person neck. The smart collar can have a microphone which monitors sounds
`
`associated with eating such as chewing, swallowing. ( see paragraphs
`
`0022,0023,0027,0029,0031,0050,0144)
`
`Hardee discloses the printing of the food is customized based on the information received.
`
`Thus, it would have been obvious to one skilled in the art to input information to obtain different
`
`pattern or food depending on the sensory attribute and food types desired. The information inputted
`
`can vary depending on consumer preference.
`
`It would have been an obvious matter of choice to input
`
`

`

`Application/Control Number: 17/695,361
`Art Unit: 1793
`
`Page 8
`
`different data based on a previous consuming food when such sensoryattribute is desired to be
`
`changed. Hardeediscloses various sensor devices can be used in connection with the system.
`
`It would
`
`have been obvious to one skilled in the art to use the sensing devices taught in Connor to measure
`
`various parameters on eating and to customize the food printed based on the eating preference
`
`measured. Applicant is combining known concept with expected result.
`
`It would have been obvious to
`
`form food having various different layers, different hardness, different size so as to occupy different
`
`volume as an obvious matter of preference. The hole in food can vary depending on the type of food. It
`
`would have been obvious to increase or decrease the holes depending on the textural feel desired. The
`
`hole can beindicative of the porous nature of the food.
`
`It would have been obvious to print a food of
`
`less or more porous to obtain a desirable texture. Hardee discloses different types of food can be
`
`printed.
`
`It would have been obvious to print gelled food as an obvious matter of preference.
`
`It would
`
`also have been obvious to control the temperature in baking. This parameter would have been readily
`
`apparentto one skilled in the art.
`
`Response to Arguments
`
`9.
`
`Applicant's argumentsfiled 6/28/23 have been fully considered but they are not persuasive.
`
`In the response, applicant argues the claims are amended to recite one user and the
`
`chewing/swallowing information of one user is related to a motion of the one user including chewing
`
`and swallowingthe first printed food. This argument is not persuasive. The amendment does not
`
`overcome the 112 first paragraph rejection. The amendmentrecites “ one user” but the method is not
`
`just restricted to one user only . The sensing of the data is for one user at a time but the method is not
`
`just for one same person. There is no teaching of how the sensing is changed to target different
`
`populations. For instance, if the one user is a 5 years old, how doesthe sensingdiffer if the one user is
`
`80 years old. There is no teaching of correlation between the chewing/swallowing of first printed food
`
`and the hardness of the second printed food. There is no teaching of how to makethefirst food; how
`
`

`

`Application/Control Number: 17/695,361
`Art Unit: 1793
`
`Page 9
`
`hard doesit have to be. Whatis the baseline for hardnessof the first printed food. What are the
`
`formulations for the first printed food and second printed food. Applicant argues that the claims not
`
`require such correlation. However, without the teaching of the correlation, how does one skilled in the
`
`art make the food. For instance, how hard does one makethe first food.
`
`If the chewing/swallowingis
`
`18 times, how hard is the second food need to be. How does one know when sufficient hardness is
`
`reached? If the chewing/swallowingis 19, or 20, or 21 etc.., how is hardness adjusted. Applicant states
`
`the claims are amendedto clarify that when the number of chewis greater than the target number of
`
`chews, the hardness of the second printed food is increased. But, there is no teaching of what this
`
`target number is and what hardnessis sufficient. How much of an increaseis sufficient? The
`
`specification discloses general steps without any specific disclosure for one skilled in the art to carry out
`
`the method. There are no examples. Nothing is disclosed on ingredients or formulations for the food.
`
`Applicant argues the specification describes that the food material is made of gelled food material or
`
`paste. But, there is no teaching of what formulations to use to make gelled food or pasta.
`
`It is not
`
`known what will constitute gelled food. The specification does not give any example.
`
`With respect to the 101 rejection, the claims are not directed to abstract idea. The examiner
`
`respectfully disagrees. The claims are directed to a method whichgive general outline of steps without
`
`any limitation of the specificity of the method steps. Thus, the claimed methodis an abstract idea.
`
`With respect to the 103, applicant argues that Hardee cannot be reasonably interpreted to
`
`disclose or render obvious the chewing/swallowing information to determine a number of chews. This
`
`argument is not persuasive. Hardee teaches method to print food items based on inputting information
`
`associated with a consumer. The requested food item is 3D printed based on the information associated
`
`with the consumer of the food item. The consumer can customize the selection based on their personal
`
`preferences, dietary , restriction etc.. This disclosure clearly suggests that different information can be
`
`inputted to make the food. The information can be based on dietary restrictions, health, medical history
`
`

`

`Application/Control Number: 17/695,361
`Art Unit: 1793
`
`Page 10
`
`et.. The type of information inputted can vary. For instance, a person having a medical condition of
`
`dysphagia will want to measure and input swallowing and chewing foods to thereby altering the
`
`hardnessof the food to allow for easier swallowing and chewing.
`
`It would also have been obvious to
`
`measure the swallowing and chewing of food to determine the textural attribute of the food and to
`
`change suchtextural feel based on the measurement depending on the texture desired. With respect to
`
`the Connor reference, applicant argues that Connor does not cure the deficiencies of Hardee. The
`
`Connor reference is only relied upon for the teaching of different sensors. Hardee discloses various
`
`sensor devices can be used in connection with the system.
`
`It would have been obvious to one skilled in
`
`the art to use the sensing devices taught in Conor to measure various parameters on eating and to
`
`customize the food printed based on the eating preference measured. Applicant is combining known
`
`conceptwith expected result.
`
`Conclusion
`
`10.
`
`THIS ACTION IS MADEFINAL. Applicant is reminded of the extension of time policy as set forth
`
`in 37 CFR 1.136(a).
`
`A shortenedstatutory period for reply to this final action is set to expire THREE MONTHS from
`
`the mailing date of this action.
`
`In the eventa first reply is filed within TWO MONTHS ofthe mailing date
`
`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
`
`shortened statutory period, then the shortened statutory period will expire on the date the advisory
`
`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing
`
`date of the advisory action.
`
`In no event, however, will the statutory period for reply expire later than
`
`SIX MONTHS from the mailing date of this final action.
`
`

`

`Application/Control Number: 17/695,361
`Art Unit: 1793
`
`Page 11
`
`11.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to LIEN THUY TRAN whosetelephone number is (571)272-1408. The examiner can
`
`normally be reached Monday-Thursday.
`
`Examiner interviewsare available via telephone, in-person, and video conferencing using a
`
`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
`
`the USPTO Automated Interview Request(AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Emily Le can be reached on 571-272-0903. The fax phone number for the organization wherethis
`
`application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained from
`
`Patent Center. Unpublished application information in Patent Center is available to registered users. To
`
`file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit
`
`https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
`
`https://www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For additional
`
`questions, contact the Electronic Business Center (EBC) at 866-217-9197(toll-free). If you would like
`
`assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)or
`
`571-272-1000.
`
`July 12, 2023
`/LIEN T TRAN/
`Primary Examiner, Art Unit 1793
`
`