DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(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 make and 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-AIA 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 which it 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.
Claims 1-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Written description is a requirement of the inventor to demonstrate possession of the full scope of the claimed subject matter, such that a person of ordinary skill could readily envisage the invention. It requires demonstration of more than an idea – rather it is the requirement that the idea has been reduced to practice—in a fixed form that is ready for patenting. Here, applicant appears to have an idea for an automatic coffee machine, but has not demonstrated possession of the elements of the claim—specifically, the applicant does not show “a coffee machine” apart from a black box labeled “fully automated coffee machine” (figure 2).
Similarly, the use of “robot” arm is disclosed only as an idea—and not as an actually reduced to practice device—as shown in original figure 2 of the application, the term “robot arm” appears describing “action commands” but is not shown as a physical thing over which it is fair to conclude applicant has demonstrated possession.
This lack of appropriate disclosure consistent with the claim scope is apparent in applicant page 10 line 18+, “includes, but is not limited to, robotic arms. latte machines, capping machines, fresh milk adding devices. ice making devices, sugar drop devices, coffee machines, air conditioners, cup drop machines, refrigerated cabinets, etc., so as to realize the functions of the corresponding processing device.” This level of disclosure is clearly showing that applicant did not invent, nor does applicant have possession of the claim elements “a coffee machine, a robotic arm, a capping device, a fresh milk adding device and an ice making device, wherein the coffee machine system is designed to make different types of coffee drinks….” These are the elements which are needed to be disclosed in order for them to be an invention—if applicant did not invent any of these components, and the only invention resides in the pure combination of old known elements, then this subject matter is not drawn to an invention—it is possibly a new device, but it has not been disclosed as in applicants’ possession—in accordance with the written description requirement.
Claims 1-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 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 one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Applicant has disclosed elements in only the broadest functional terms and does not depict them in a manner which shows they could be made and used consistent with the disclosure: specifically, applicant does not define or explain the use of a “capping device” and a “fresh milk” device which are not understood to have been in applicant’s possession, and were not disclosed such that the device as claimed could be made and used consistent with the disclosure—The Wands factors have been anaylzed and it is not apparent that the claimed limitations noted above could be implemented without undue experimentation, since the capping technique or the milk provision can be potentially accomplished in infinite manners, but none of which have been given any specific guidance to the applicant. In light of balancing the facts of the case against each factor, the conclusion is that the claims are not enabled. There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims; (here the terms “capping device” and ‘milk…” are wildly broad and not disclosed beyond the concept itself). This factor weighs for a finding of lack of enablement (rejection).
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(B) The nature of the invention; (here it is a device made of subdevices, several of which are not shown by applicant to be in their possession). This factor weighs for a finding of lack of enablement (rejection).
(C) The state of the prior art; Here, while ‘capping’ is a known concept, the particular implementation envisioned by applicant is not disclosed in any meaningful way. The art does show capping and milk delivery, so this factor weighs against a finding of lack of enablement.
(D) The level of one of ordinary skill; Here, the level is high, and those of ordinary skill are not automatons, therefore they could reasonably integrate different devices. This factor weighs against a finding of lack of enablement (non-rejection).
(E) The level of predictability in the art; Here the device appears to be mechanical with routine control elements broadly recited, which are predictable within bounds. Therefore this factor weighs against a finding of lack of enablement (non-rejection).
(F) The amount of direction provided by the inventor; here the direction is none—broad categories of devices are implicated and required without their disclosure or explanation. This factor weighs for a finding of lack of enablement (rejection).
(G) The existence of working examples; Here the diagrams shown and broad assertions of possible elements to combine in the disclosure as filed does not indicate any working example. This factor weighs for a finding of lack of enablement (rejection).
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. This is a large amount of undue experimentation—since the specifics of many of the elements in a combination claim are not disclosed with particularity, and thus increasingly complicated selections and judgement would be implicated to make selections, which is akin to asking the public to go and invent it themselves—rather than disclose an invention ready for implementation. This factor weighs for a finding of lack of enablement (rejection).
Therefore, overall the analysis of the Wands factors determines that the claims lack enablement as submitted and are rejected under 112(a) on that basis.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jennings (US 2007/0106422) in view of Ficken US 4,594,838, and Arskey US 6,019,032.
As noted above, applicant has asserted possession and patentability of old known components (not specifically disclosed: “coffee machine, a robotic arm, a capping device, a fresh milk adding device and an ice making device” being devices that are not depicted or explained in any technical manner in the application), and has essentially said—and I use a computer to control the operation, but I will not show any particular computer, or explain any particular program, all programs sufficient to operate an assembly of old machine elements is suitable and selectable.
In that context, we evaluate what control capability and what devices were known at the time of the invention.
It has been held that the combination of elements known in the prior art to be used in accordance with their known functions is unpatentable as a matter of law absent a showing that the combination has results which are unexpectedly advantageous over the prior art. Please see Sakraida v. Ag Pro, Inc. U.S. Supreme Court No. 75-110 425 US 273, 189 USPQ 449 (1976), Which states “patent[s] for combination that only unites old elements with no change in their respective functions withdraws what is already known into field of its monopoly and diminishes resources available to skillful men” and [a] patent [which] simply arranges old elements with each performing the same function it had been known to perform, although perhaps producing a more striking result than in previous combinations…are not patentable under standards appropriate for a combination patent”; also see Anderson’s Black Rock, Inc. v. Pavement Salvage Co., Inc. U.S. Supreme Court 396 US 57, 163 USPQ 673 (1969) which states “while the combination of old elements performed a useful function, it added nothing to the nature and quality of the radiant-heat burner already patented”. Similarly here, applicant has done nothing more than arrange old elements – used according to their known functions.
Regarding claim 21, Jennings discloses An automatic coffee machine apparatus ([0035] : “coffee” inter alia), including
a coffee machine system including a coffee machine, ([0035])
a robotic arm, (robot 20, [0045], see figure 2A for example, arm 26 with effector 23, among other disclosed aspects)
Jennings does not disclose a capping device, (though applicant’s disclosure of a capping device consists solely of the phrase “capping device” and the “capping device” is not shown).
The use of capping devices to cap cups is known in the art, as shown in Ficken US 4,594,838, discussed at column 2 lines 17-31, where a cap is automatedly placed on a cup to be vended to a consumer sealing the cup after the beverage is prepared.
Jennings does not explicitly disclose a fresh milk adding device; however, the requirement to produce “latte” ([0035]) and cappuccino ([0036]) both require some kind of milk—though presumably it could be non-fresh milk.
In any event, the clear indication in Jennings is that addition of milk is so routine as to need no explanation whatsoever for a person of ordinary skill to implement. It is presumably (though not certainly) clear that applicant feels the same way--- also having provided no technological underpinning to the claimed “milk” device, the expectation being that its incorporation into any assemblage is routine to those of ordinary skill.
In the releted art, we see, e.g. Arskey US 6,019,032, the routine application of fresh milk in an automated coffee beverage preparation system. See 42 figure 1 (milk tank) and discussion at column 1 line 5-10: “This invention relates generally to espresso coffee making and more particularly to a system and method for providing and serving, fully automatically, such coffee beverages as cafe latte, cappuccino, and the like, from roasted whole beans and fresh, cold milk.”
Since Jennings discusses making cappuccino and latte beverages (inter alia) it would have been obvious to provide the necessary input to those beverages, as “fresh, cold milk” disclosed in Arskey, and the associated pump and lines for providing it in a suitable fashion to the coffee production steps of Jennings.
Jennings discloses an ice making device, (80 [0019], and [0049]):
[0049] Robotic beverage server 10 may also include an ice dispenser 80. Ice dispenser 80 may be any conventional or yet-to-be developed ice dispensing machine as known to one of ordinary skill in the art. Generally, ice dispenser 80 may include a storage receptacle (not shown) that holds the ice until it is dispensed and a dispensing apparatus (not shown) that, upon its activation, dispenses the ice from the storage receptacle into a beverage container. In an alternative embodiment, the ice dispenser 80 may include an ice making device (not shown) as known to one of ordinary skill in the art.
Jennings discloses wherein the coffee machine system is designed to make different types of coffee drinks, (As noted in [0035] “coffee…latte and/or espresso”)
Jennings discloses wherein the coffee machine system includes a plurality of steps performed by at least one of the coffee machine, robotic arm, capping device, fresh milk adding device and ice making device to make the types of coffee drinks, (Jennings discloses, for example, the ‘step’ of making and serving cappuccino, which is a ‘step’ as claimed, therefore this limitation is disclosed in Jennings).
Jennings discloses wherein the making of each of the types of coffee drinks includes a group of at least one of the plurality of steps (the step of ‘making’ or ‘serving’ or moving a cup, and at least the different beverages with/without ice—cappuccino, “coffee’ and “espresso” all disclosed, for instance, all shown in Jennings, noted above);
The clause “and a control module including a control protocol corresponding to each of the steps, wherein when the control module receives an input to make one of the types of coffee drinks, the control module selects a group of the steps that are used to make the one of the types of coffee drinks, selects the control protocols corresponding respectively to the steps of the group, and transmits the selected control protocols to the coffee machine, robotic arm, capping device, fresh milk adding device and ice making device to perform the group of steps to make the one of the types of coffee drinks.” Is believed to be claiming—when a user chooses a drink from a device menu—the machine is able to execute different steps to make the selected coffee. This is of course a routine manner of controlling coffee makers—as shown in e.g. the “controller” 50 of Jennings, and further, [0037], in relevant part, discussing the control: “controller 50 is configured (e.g., programmed) to automatically operate one or more of dispensing guns 42 to dispense any beverage or mixture of beverages available from the sixty-four (64) beverages contained within the plurality of beverage storage receptacles (e.g., 120, 122, 124) based upon a received beverage order entered into user selection interface 95.” See also [0030]:
[0030] User selection interface 95 may be configured to display or list the available beverages or mixture of beverages that robotic beverage server 10 is capable of dispensing. Such user selection interface may be connected to controller 50 and/or a computer via hard-wired or wireless connections and may send signals to controller 50 based upon user input (via touch screen). For example, a server may enter a consumer beverage order by touching an icon representing the specific beverage desired by the consumer on touch screen 95. Controller 50 (and/or the computer) may receive the order and is programmed to respond to such order by sending control signals to robot 20 and/or the other beverage server components (e.g., beverage dispenser 40) to begin dispensing the ordered beverage.
The Supreme Court in KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. _____(2007) affirmed both Sakraida and Anderson’s requirement that to be patentable a combination needed to provide some synergistic effect. See Slip op. at 13 lines 3-19. Using known elements for their known functions is as a matter of law not patentable, since it removes resources available to skillful men, contrary to U.S. Const., Art. I §8, cl.8. which provides patent monopolies to promote the progress of useful arts. See Slip op. KSR at 24 lines 5-7.
Each of the elements ‘control’ or ‘steps’, robot arms, and milk dispensers, and capping devices are known as seen in the cited prior art (above); their combination is unpatentable absent a showing that one of ordinary skill would be unable to effect their combination, or their combination provides unexpectedly good results (more than a duplicated effect).
Regarding claim 2, As best understood, the disclosure of control, shown in Jennings, utilizes ‘steps’ or sets of steps, since beverages are produced in order—essentially, according to Jennings, the device would ‘know’ whether to put a cap on a cup before or after filling it with ice or coffee of some type. The control shown in Jennings renders obvious the selection of the order of steps, as would have been understood to those of ordinary skill. Which renders obvious “group of the one or more steps to make to the one of the types of coffee drinks includes the sequence of the steps to make the one of the types of coffee drinks, and wherein the control module transmits the selected control protocols in the same sequence of the steps to the coffee machine, robotic arm, capping device, fresh milk adding device and ice making device to make the one of the types of coffee drinks.” As this limitation, as best understood, is saying the control device or scheme of programming knows which order to do things in—which is prima facie obvious in light of Jennings—no person of ordinary skill would fail to program an automated drink robot to not do things in the right order—and the right order may be determined from recipes. For example, if the beverage selection was to a drink with ice, it would be obvious to place ice first and then pour beverage over the ice—so the ice does not splash in the reverse order. The choice of order of instructions is therefore prima facie obvious.
Regarding claims 3 and 4, again—the automaticity of Jennings implicates that the programming will specify some duration for each step and or receive signals signaling completion of steps, so that the steps are at least sequential, and are achieved in a satisfactory result of the beverages being produced, thus “a transmission time, and wherein the control module transmits each of the selected control protocols after the transmission time for the previous protocol has expired.” is prima facie obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN M MICHALSKI whose telephone number is (571)272-6752. The examiner can normally be reached Typically M-F 6a-3:30p East Coast Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Eiseman can be reached on (571) 270-3818. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SEAN M. MICHALSKI
Primary Examiner
Art Unit 3724
/SEAN M MICHALSKI/Primary Examiner, Art Unit 3724
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