Adrian Rivera

Patent Trials and Appeals Board

Jan 24, 2022

2021000988 (P.T.A.B. Jan. 24, 2022)

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. 15/687,138 08/25/2017 Adrian Rivera EZCPT40 4350 49691 7590 01/24/2022 IP Strategies P.O. Box 6446 Asheville, NC 28816 EXAMINER LACHICA, ERICSON M ART UNIT PAPER NUMBER 1792 NOTIFICATION DATE DELIVERY MODE 01/24/2022 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): thomas.champagne@ipstrategiespc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ADRIAN RIVERA Appeal 2021-000988 Application 15/687,138 Technology Center 1700 Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and LILAN REN, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1, 2, 4, 7, 9-12, and 15-25.3 We reverse. 1 We cite to the following documents of record: Specification filed August 25, 2017, as amended (“Spec.”); Final Office Action dated April 7, 2020 (“Final Act.”); Appeal Brief filed August 18, 2020 (“Appeal Br.”), citations to pages 87-92 being to the Claims Appendix; Examiner’s Answer dated September 24, 2020 (“Ans.”); and Reply Brief filed November 23, 2020 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as the inventor, Adrian Rivera. Appeal Br. 2. 3 We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2021-000988 Application 15/687,138 2 CLAIMED SUBJECT MATTER “The present invention relates to home brewed espresso and in particular to an espresso cartridge having contours under a rim of the espresso cartridge for guiding and sealing a cartridge holder and cartridge of an espresso brewing machine.” Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An espresso cartridge, comprising: a cartridge base configured as a container having an opening, wherein the opening is defined by an edge of the cartridge base; and a cartridge lid having a first surface, wherein the first surface of the cartridge lid is attached to the edge of the cartridge base, thereby covering the cartridge base opening; wherein the cartridge lid includes a cartridge lid rim extending beyond the cartridge base edge and forming a periphery of the cartridge lid outside the cartridge base edge; and wherein the cartridge lid rim includes a lip extending away from the first surface of the cartridge lid at an outermost perimeter of the cartridge lid; a sealing contour arranged on the first surface of the cartridge lid, extending away from the first surface; and a centering contour arranged on the first surface of the cartridge lid, extending away from the first surface and configured to contact a raised edge and to align the sealing contour toward the raised edge; wherein the lip, the sealing contour, and the centering contour are the only raised features on the first surface, which is otherwise flat. Appeal 2021-000988 Application 15/687,138 3 Appeal Br. 87. Of the appealed claims, claims 16 and 21 are also independent. See id. at 89-91. REFERENCES Name Reference Date Kamerbeek US 2012/0225168 A1 Sept. 6, 2012 Doglioni Majer US 2016/0039601 A1 Feb. 11, 2016 Talon US 2016/0137402 A1 May 19, 2016 REJECTIONS4 1. Claims 1, 2, 4, 7, 9-12, 15-20, and 24 are rejected under 35 U.S.C. § 112(b) as indefinite. 2. Claims 1, 2, 4, 7, 9, 11, 12, and 15 are rejected under 35 U.S.C. § 103 as unpatentable over Doglioni Majer and Talon. 3. Claims 10 and 16-25 are rejected under 35 U.S.C. § 103 as unpatentable over Doglioni Majer, Talon, and Kamerbeek. OPINION The Examiner rejected claims 1, 2, 4, 7, 9-12, 15-20, and 24 under 35 U.S.C. § 112(b), determining that the recitation, “configured to contact a raised edge” (claims 1 and 16), renders claims 1 and 16 and their dependent claims 2, 4, 7, 9-12, 15, 17-20, and 24 indefinite. Final Act. 8-9. More specifically, the Examiner contends that “[i]t is unclear if the raised edge is a 4 The Examiner has withdrawn the 35 U.S.C. § 112(d) rejections. Ans. 26. Appeal 2021-000988 Application 15/687,138 4 structure that is a part of the espresso cartridge or if the raised edge is a structure that is a part of a different structure.” Id. at 8. The Appellant argues that “‘a raised edge,’ is not positively recited, that is, it is a part of a structure that is not an element of the claimed invention and can be, for example, part of a brewing chamber or any other structure.” Appeal Br. 22, 24. A claim is indefinite under 35 U.S.C. § 112 when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1309 (Fed. Cir. 2014). “[T]he definiteness of the language employed must be analyzed-not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). Applying the above principles of law, we agree with the Appellant that the phrase “configured to contact a raised edge” is not indefinite. The term “raised edge” is used consistently throughout the Specification to refer only to a portion of a brewing chamber. Thus, the ordinary artisan would understand that the raised edge is not part of the espresso cartridge. Further, consistent with its usage in the Specification, we give the term “configured to” its plain and ordinary meaning of “designed to” or “constructed to.” See In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014). For example, Specification paragraph 31 describes how the centering contour is structured such that, upon engagement with a brewing chamber’s raised edge, it aligns the sealing contour in the brewing chamber. Therefore, we agree with the Appellant that the phrase “configured to contact a raised edge and to align the sealing contour toward the raised edge” (claim 1; see Appeal 2021-000988 Application 15/687,138 5 claim 16) defines the claimed centering contour’s structure, and the structural relationship between the centering contour and the sealing contour. See Reply Br. 6. For the above reasons, we do not sustain the rejection of claims 1, 2, 4, 7, 9-12, 15-20, and 24 under 35 U.S.C. § 112(b) as indefinite. The Examiner rejected claims 1, 2, 4, 7, 9, 11, 12, and 15 under 35 U.S.C. § 103 as unpatentable over Doglioni Majer and Talon, and claims 10 and 16-25 under 35 U.S.C. § 103 as unpatentable over Doglioni Majer, Talon, and Kamerbeek. The Appellant argues that the Examiner reversibly erred in finding that the applied prior art discloses or suggests a “centering contour” as recited independent claims 1 and 16, or a “centering means” as recited in claim 21. See, e.g., Appeal Br. 41, 65, 80. The Examiner relied on Doglioni Majer for a teaching of the claimed “centering contour” or “centering means.” See Final Act. 12-13 (discussing claim 1), 19-20 (discussing claim 16), 24-26 (discussing claim 21). Doglioni Majer discloses a capsule 1 having a flange 6 that extends laterally from the capsule’s lateral wall 2. See Doglioni Majer ¶ 54. Doglioni Majer discloses that a projecting element 10 is disposed substantially at flange 6’s end, and a first sealing element 25 projects from flange 6 at a position between the capsule’s lateral wall 2 and projecting element 10. See id. ¶ 90. The Examiner found that the claimed “lip” (claims 1, 16) and “lip means” (claim 21) read on projecting element 10, and the claimed “sealing contour” (claims 1, 16) and “sealing means” (claim 21) read on the first sealing element 25, as depicted in Doglioni Majer Figure 3. Final Act. 12, 19, 25. Relying on Doglioni Majer’s statement that “flange 6 is . . . provided with at least one projecting sealing element 25” (Doglioni Majer ¶ 96 Appeal 2021-000988 Application 15/687,138 6 (emphasis added)), the Examiner found that the ordinary artisan would have modified Doglioni Majer’s flange 6 to include a second sealing element 25 between projecting element 10 (the “lip” or “lip means”) and first sealing element 25 (the “sealing contour” or “sealing means”). Final Act. 12-13, 19- 20, 25. The Examiner found that the ordinary artisan would have made this modification “based upon the dimensions and shape of the receptacle of the brewing device into which the cartridge is inserted in order to ensure an adequate seal between the raised edge of the brewing machine and the rim of the cartridge.” Id. at 13, 20, 25-26. The Examiner found that the claimed “centering contour” (claims 1, 16) and “centering means” (claim 21) read on the second sealing element 25. See id. at 12-13, 20, 25. The Appellant argues that the Examiner relied on improper hindsight reasoning in finding that the ordinary artisan would have modified Doglioni Majer’s flange 6 to include a second sealing element 25, and positioned that second sealing element 25 between first sealing element 25 and projecting element 10. See Appeal Br. 41, 66, 80-81. The Appellant’s arguments are persuasive of reversible error. A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art. In making this evaluation, all facts must be considered. The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Appeal 2021-000988 Application 15/687,138 7 Doglioni Majer discloses that “during the use and due to the insertion of the capsule into the brewing device, the lower edge 52 of the housing contacts the projecting sealing element 25 in order to realize a seal-tight engagement with the capsule.” Doglioni Majer ¶ 96 (emphasis added). The Examiner has not identified evidence that the ordinary artisan would have understood that a second sealing element 25 could be positioned at a location on flange 6 that did not contact the housing’s lower edge 52. Nor has the Examiner explained how a second sealing element 25 could be arranged between first sealing element 25 and projecting element 10 and still contact the housing’s lower edge 52. Further, the Examiner has not identified persuasive evidence to support a finding that a second sealing element 25-without contacting the housing’s lower edge 52-would have ensured an adequate seal between a raised edge and the cartridge rim, or otherwise improved upon the seal-tight engagement between the housing’s lower edge 52 and first sealing element 25. As the Appellant also notes, the Examiner has not explained how the second sealing element 25 (the “centering contour” or “centering means”) is “configured”-i.e., designed or constructed-to align the first sealing element 25 (the “sealing contour” or “sealing means”). See Appeal Br. 42-43, 67, 81; Giannelli, 739 F.3d at 1379 (indicating that “configured to” is typically construed more narrowly than “capable of”); In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (“While a ‘means-plus-function’ limitation may appear to include all means capable of achieving the desired function, the statute requires that it be ‘construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’” (quoting 35 U.S.C. § 112 ¶ 6)).5 Appeal 2021-000988 Application 15/687,138 8 Because the Appellant has persuasively shown that the Examiner’s obviousness determination is based on improper hindsight reasoning, we do not sustain the Section 103 rejections of claims 1, 2, 4, 7, 9-12, and 15-25. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 7, 9-12, 15- 20, 24 112 Indefiniteness 1, 2, 4, 7, 9-12, 15- 20, 24 1, 2, 4, 7, 9, 11, 12, 15 103 Doglioni Majer, Talon 1, 2, 4, 7, 9, 11, 12, 15 10, 16-25 103 Doglioni Majer, Talon, Kamerbeek 10, 16-25 Overall Outcome 1, 2, 4, 7, 9-12, 15- 25 REVERSED 5 We note that the Examiner and the Appellant agree that the claim 21 “centering means” is a means-plus-function limitation. See Final Act. 8; Appeal Br. 81.