Illinois Tool Works Inc.

Patent Trials and Appeals Board

Nov 25, 2020

2019005937 (P.T.A.B. Nov. 25, 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.
14/362,928 06/05/2014 Richard W. Cartwright 38141/09078/61077-US-3 2797
148433 7590 11/25/2020
Burr Forman LLP
dba Burr Forman McNair
Bank of America Plaza
101 South Tryon Street, Suite 2610
Charlotte, NC 28280
EXAMINER
BARGEON, BRITTANY E
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
11/25/2020 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):
mcnairip@mcnair.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD W. CARTWRIGHT,
DAMON C. CHILDERS, and ERIC A. SOLLER
Appeal 2019-005937
Application 14/362,9281
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–6, 8, 10–16, 18, and 21. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appeal 2019-005938 (Application 14/362,937) is related to this appeal.
This appeal and its related appeal are directed to substantially similar
underlying inventions.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Illinois
Tool Works, Inc. Appeal Br. 1.
Appeal 2019-005937
Application 14/362,928
2
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
receiving, from a third party participant device associated
with a third party participant, a registration request at a content
manager to join a community including asset operators, wherein
each of the asset operators operate one or more food preparation
assets, and wherein the third party participant, the content
manager, and the asset operators are each different;
registering the third party participant as a community
member via the content manager;
providing the third party participant with access to a
communication network, via the content manager, for sharing
information related to the one or more food preparation assets;
receiving asset related activity data for a selected one of
the one or more food preparation assets at the content manager,
wherein the asset related activity data includes run hours for the
selected one of the one or more food preparation assets;
providing the third party participant device with the asset
related activity data via the content manager;
establishing communications between the selected one of
the one or more food preparation assets and the third party
participant device via the content manager based on the asset
related activity data; and
communicating and displaying an alert on the third party
participant device via the content manager to indicate
maintenance is due for the selected one of the one or more food
preparation assets in response to the run hours of the selected
one of the one or more food preparation assets meeting or
exceeding a defined preventive maintenance run hours standard.
Appeal 2019-005937
Application 14/362,928
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kudo US 2004/0099144 A1 May 27, 2004
Glielmo US 2010/0258643 A1 Oct. 14, 2010
Monteforte US 2010/0262449 A1 Oct. 14, 2010

REJECTION3
Claims 1–6, 8, 10–16, 18, and 21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Monteforte, Glielmo, and Kudo. Ans. 4–10.
OPINION
Claim 1 recites, inter alia, “wherein each of the asset operators
operate one or more food preparation assets.” The Examiner finds the claim
language “one or more food preparation assets” is non-functional descriptive
material because the fact that the asset operators operate food preparation
assets as opposed to other assets does not affect how the claimed method
works, and thus, the aforementioned claim language does not distinguish
claim 1 over the prior art. See Ans. 3, 10–11. Notwithstanding this finding,
the Examiner further finds Glielmo’s food refrigerator teaches the claimed
“one or more food preparation assets.” See Ans. 5 (citing Glielmo ¶¶ 45,
50–54).
Appellant argues the aforementioned claim language is functional,
and should be given patentable weight, because the aforementioned
language specifies the asset being operated. See Appeal Br. 8–9. This

3 In the Examiner’s Answer, the Examiner withdrew the rejection of claims
1–6, 8, 10–16, and 21 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter. Ans. 10.
Appeal 2019-005937
Application 14/362,928
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argument is not persuasive. Even assuming arguendo that Appellant’s
argument is correct, the Examiner did treat the aforementioned claim
language as having patentable weight by finding that Glielmo teaches or
suggests the aforementioned language. See Ans. 5 (citing Glielmo ¶¶ 45,
50–54). Thus, Appellant’s argument does not establish reversible error by
the Examiner.
Claim 1 further recites, inter alia,
communicating and displaying an alert on the third party
participant device via the content manager to indicate
maintenance is due for the selected one of the one or more food
preparation assets in response to the run hours of the selected
one of the one or more food preparation assets meeting or
exceeding a defined preventive maintenance run hours standard.
The Examiner finds Glielmo discloses a radio-frequency identification
(“RFID”) reader on a food refrigerator that monitors a state of the food
refrigerator, including a number of hours of activity of a compressor unit
inside the refrigerator, and communicates this state to a remote server via a
communication device. See Ans. 5–6 (citing Glielmo ¶¶ 50–54, 57, 62–67,
105, 127, 129, 130); see also Ans. 11 (citing Glielmo ¶ 26–28, 50–54, 57).
The Examiner further finds Kudo discloses an information terminal device
that includes a display alert, and further discloses tracking a use history of a
microwave oven that represents a number of times that the microwave oven
has been used, and displaying a service message on the information terminal
device when the use history satisfies a maintenance condition. See Ans. 6–7
(citing Kudo ¶¶ 19, 101, 103, 124, 156, Fig. 23); see also Ans. 11–12 (citing
Kudo ¶¶ 101, 124, 156).
Appellant argues Glielmo and Kudo fail to teach or suggest the
aforementioned limitation of claim 1. See Appeal Br. 10; see also Reply
Appeal 2019-005937
Application 14/362,928
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Br. 3. More specifically, Appellant argues Glielmo only discloses an owner
directly monitoring and controlling a food refrigerator from a remote
location, and Glielmo fails to disclose communicating and displaying an
alert on a third party participant device when a defined preventive
maintenance standard is exceeded. See Appeal Br. 9; see also Reply Br. 3.
Appellant further argues Kudo merely discloses recording the use history of
a microwave oven in order to transmit a message regarding the
recommended maintenance of the device to the operator of the microwave
oven, rather than to a third party participant, and Kudo fails to disclose
communicating and displaying an alert to a third party participant (e.g., a
manufacturer or a distributor) to indicate maintenance is due. See Appeal
Br. 9–10; see also Reply Br. 3.
We are not persuaded by this argument because the argument only
addresses the references individually rather than the combination of
references. One cannot show non-obviousness by attacking references
individually when the rejection is based on a combination of references. See
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re
Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner relied upon Glielmo
for teaching communicating an alert to a remote server via a communication
device regarding a number of hours of activity of a compressor unit inside a
food refrigerator, and further relied upon Kudo for teaching communicating
with, and displaying an alert on, a separate information terminal device to
indicate maintenance is due for a microwave oven based on the number of
times the microwave oven has been used. See Ans. 5–7, 11–12. Thus, as
found by the Examiner, it is the combination of Glielmo and Kudo that
teaches or suggests the aforementioned limitation of claim 1. Appellant’s
argument fails to address the combination of Glielmo and Kudo. Further,
Appeal 2019-005937
Application 14/362,928
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with respect to Appellant’s argument regarding Glielmo, Appellant fails to
sufficiently explain why Glielmo’s remote server does not teach or suggest
the claimed “third party participant device.”
Appellant further argues in its Reply Brief that the Examiner did not
provide a sufficient rationale as to why one of ordinary skill in the art would
combine the cited prior art references, as the Examiner merely alleged Kudo
teaches the motivation to combine the references. See Reply Br. 4. We do
not agree with Appellant’s contention. The Examiner found that the
motivation to combine Glielmo and Kudo with Monteforte is found within
Glielmo and Kudo itself, as both Glielmo and Kudo disclose the benefits in
the maintenance of food preparation assets based on monitored data. See
Final Act. 6–7; see also Glielmo ¶¶ 125–130 (describing benefits in
maintenance and use of food refrigerators); Kudo ¶ 157 (describing that a
service message displayed within an information terminal device allows the
maintenance of a microwave oven to quickly be done). Appellant’s
contention does not show error in these findings.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1. The Examiner rejects independent claims 11 and 21 on the same
basis as claim 1, and therefore we also sustain the Examiner’s rejection of
claims 11 and 21. We also sustain the rejection of dependent claims 2–6, 8,
10, 12–16, and 18, as they are not separately argued by Appellant.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 8, 10–
16, 18, 21
103(a) Monteforte,
Glielmo, Kudo
1–6, 8, 10–
16, 18, 21

Appeal 2019-005937
Application 14/362,928
7

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