Akos Spiegel et al.

Patent Trials and Appeals Board

Oct 24, 2019

14421569 - (D) (P.T.A.B. Oct. 24, 2019)

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.
14/421,569 02/13/2015 Akos Spiegel 3712036-02374 8588
29157 7590 10/24/2019
K&L Gates LLP-Chicago
P.O. Box 1135
Chicago, IL 60690
EXAMINER
NGUYEN, PHUONG T
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
10/24/2019 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AKOS SPIEGEL and NICOLAS JEAN-GUY BEZET
Appeal 2018-008011
Application 14/421,569
Technology Center 3700
Before JAMESON LEE, JONI Y. CHANG, and
JUSTIN T. ARBES, Administrative Patent Judges.

LEE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9.2 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Nestec
S.A. Appeal Br. 2.
2 Appellant also appeals from an alleged rejection of claim 10. App. Br. 14.
However, we find no rejection in the record for claim 10. Final Act. 1.
Therefore, the appeal is recognized only for the rejection of claims 1–9.
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Application 14/421,569

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CLAIMED SUBJECT MATTER
The independent claims are claims 1 and 8. Claims 2–7 each depend
directly from claim 1, and claim 9 depends from claim 8. Claim 1 is
directed to a capsule for containing a food ingredient, suitable for being
inserted in a food preparation machine which mixes the ingredient with fluid
introduced under pressure to produce a food product. Claim 8 is directed to
a beverage preparation system comprising a closed capsule for containing a
food ingredient, and a food preparation machine having a cavity for
functionally inserting the closed capsule and injecting a beverage
preparation fluid under pressure into the capsule. Claims 1 and 8 are
reproduced below:
1. A capsule for containing a food ingredient, suitable
for being inserted in a food preparation machine, the capsule
having a rigid body structure defining a closed compartment
wherein the ingredient is mixed with a fluid introduced under
pressure by the food preparation machine in order to produce a
food product, the rigid body structure comprising body walls
defining an external volume Vcaps and an internal compartment
volume Vcomp, the rigid body structure further comprises at least
one elastic portion having at least one characteristic selected
from the group consisting of a shape, a dimension, and being
made of a material, such that the at least one elastic portion is
elastically deformable and that Vcaps and Vcomp are reversibly
reduced by at least 3% by applying an elastic compression
along at least one dimension of the capsule at the time the
capsule is functionally inserted within the food preparation
machine, the at least one elastic portion allowing the capsule to
flex back to initial volumes Vcaps and Vcomp after extraction,
such that residual pressure within the capsule is reduced.

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8. A beverage preparation system comprising:
a closed capsule with a rigid body structure defining a
closed compartment for containing a food ingredient, the closed
capsule having an external volume Vcaps and Vcomp internal
compartment volume; and
a food preparation machine havng a cavity for
functionally inserting the closed capsule and injecting a
beverage prepation fluid under pressure thereinto, the cavity
having an internal volumeVcav,
the rigid body structure of the capsule comprises at least
one elastic portion having at least one characteristic selected
from the group consisting of a shape, a dimension, and being
made of a material, such that the at least one elastic portion is
elastically deformable and that Vcaps and Vcomp are reversibly
reduced by at least 3% by applying an elastic compression
along at least one dimension of the capsule at the time the
capsule is functionally inserted within the food preparation
machine, the at least one elastic portion allowing the capsule to
flex back to intial volumes Vcaps and Vcomp after extraction, such
that residual pressure within the capsule is reduced.
The specification explains the problem intended to be solved by the invention
as follows:
In all cases, due to residual pressure P which remains
inside the capsule compartment after the capsule has been used,
a jet of liquid “JL” – often referred to as “whale effect” – can
spray out of the capsule top membrane, through the hole
pierced by the machine needle, due to gas that may remain
trapped within the capsule under pressure. Such a whale effect
is represented in figure 1. Altough such a phenomenon occurs
randomly and very infrquently, it is undesirable because hot
liquid splashing out is messy. Moreover, in case said liquid is
water mixed with an ingredient such a leakage of liquid from
the capsule topmembrane is also undesirable for a cleanliness
point of view as it could create some bacteria growth around or
inside the machine, which forces the consumer to spend time
cleaning the machine and its surroundings after usage.
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It is therefore one main objective of the present invention
to provide a solution for beverage preparation system which
prevents the so-called “whale effect” described above.
Spec. 5. Both claims 1 and 8 require an elastic portion in a rigid capsule,
that is reversibly deformable such that the capsule’s volume is reduced by at
least 3% when inserted into a food preparation machine and expands after
extraction to reduce the residual pressure within the capsule.
Figure 3 of the Application is reproduced below:

Figure 3 is a schematic view of a capsule according to the invention. Spec.
7:19–20. Skeleton structure 12 has a weakened zone that forms flexible
bellows portion 14. Id. at 9:22–24. The weakend portion can be achieved
through numerous ways, including by changing the size of the cross section
support as is shown in Figure 3 or by using a softer material which is
co-injected during formation with the rest of structure 12. Id. at 9:24–28.

REFERENCES
Krüger US Pat. Pub. 2011/0142996 A1 June 16, 2011

Mariller US Pat. Pub. 2011/0183055 A1 July 28, 2011

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Application 14/421,569

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REJECTIONS
A. Claims 1–7 stand finally rejected under 35 U.S.C. § 103 as
obvious over Krüger.
B. Claims 8 and 9 stand finally rejected under 35 U.S.C. § 103 as
obvious over Krüger and Mariller.
OPINION
A. The Obviousness Rejection of Claims
1–7 over Krüger under 35 U.S.C. § 103
Krüger discloses a portion capsule for preparing a beverage, which
includes a cavity for accommodating a beverage raw material and a
membrane that closes the cavity. Krüger ¶ 1. Krüger explains that a
disadvantage of preexisting beverage portion capsules is that they have a
comparatively low degree of mechanical stability, and there is a risk that,
when extraction liquid is injected into the capsule, the capsule would buckle
laterally, particularly in a wall region between the membrane and the bottom
region. Id. ¶ 3. Krüger further explains that the advantage of its beverage
portion capsule over preexisting capsules is that the wall region of the base
element of the portion capsule is reinforced by a plurality of channels. Id.
¶ 6. According to Krüger, such a structure gives its beverage portion
capsule a greater degree of mechanical stability and prevents deformation,
particularly lateral buckling. Id.
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Figures 1–3 of Krüger are reproduced below:

Each of Figures 1–3 of Krüger illustrates a separate embodiment of Krüger’s
beverage portion capsule. Krüger ¶ 19.
In the embodiment of Figure 1, portion capsule 1 has substantially
frustoconical base element 2 which surrounds cavity 3. Id. ¶ 24. Cavity 3 is
closed by membrane 4, and base element 2 has flange 7 in the region of
membrane 4. Id. Filter 5 has circumferential sealing lip 18 and divides
cavity 3 into regions 8 and 9. Id. Region 8 accommodates a beverage raw
material such as coffee powder. Id.
Base element 2 has wall region 12 extending between flange 7 and
bottom region 11, and wall region 12 is reinforced by a plurality of channels
15. Id. Channels 15 are formed within wall region 12 in the form of
substantially circumferential grooves facing cavity 3. Id. Base element 2
further comprises circumferential shoulder 16 which is formed in the
intermediate region between wall region 12 and flange 7 and which has a
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diameter larger than that of wall region 12. Id. Bottom region 11 has
greater thickness than wall region 12. Id. The diameter of circumferential
shoulder 16 is fixed. Id.
The embodiment of Figure 2 is substantially the same as the
embodiment of Figure 1. Id. However, it does not have a shoulder, a
sealing lip, or a greater thickness in bottom region 11 as compared to wall
region 12. Id. ¶ 25. Also, the channel grooves in the wall region face away
from cavity 3. Id.
The embodiment of Figure 3 is substantially the same as the
embodiment of Figure 1. Id. ¶ 26. However, it has only two channels in
wall region 12 and filter 5 can snap into one of the channels. Id. Also, the
diameter of circumferential shoulder 16 decreases in the direction of flange
7. Id. ¶ 24.
The dispositive issue in this case centers around the following two
limitations of claim 1:
(1) the capsule has a rigid body structure; and
(2) the rigid body structure comprises an elastic portion
having at least one characteristic selected from the group
consisting of a shape, a dimension, and being made of a
material, such that the at least one elastic portion is elastically
deformable and that Vcaps and Vcomp are reversibly reduced by at
least 3% by applying an elastic compression along at least one
dimension of the capsule at the time the capsule is functionally
inserted within the food preparation machine.
The Examiner finds that Krüger’s capsule has a rigid body having an
elastic portion. Ans. 6. We are unpersuaded, because that determination is
not sufficiently supported by the reasoning and evidence provided by the
Examiner, as we explain below.
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For the rigid body structure required by claim 1, the Examiner relies
on base element 2 in Figure 3 of Krüger. Id. Krüger describes “[t]he base
element 2 comprises, in particular, a soft, semi-rigid or rigid plastics
material which has preferably been deep-drawn.” Krüger ¶ 24. For the
elastic portion, the Examiner again relies on base element 2 in Figure 3 of
Krüger, citing Krüger’s description that base element 2 can be made of soft,
semi-rigid, or rigid material. Id. The problem, however, is that Krüger does
not describe that base element 2 is made of both rigid and soft material such
that overall it is made of rigid material but also includes a softer portion.
The claim requires a rigid structure including an elastic portion. That
requires two different levels of elasticity, with the overall characteristic
being rigid. The Examiner attempts to meet the requirement by first
asserting that Krüger’s base element 2 has a rigid structure because it can be
made of rigid material, and then asserting that Krüger’s base element 2 has a
soft elastic structure because it can be made of soft material. There is no
accounting by the Examiner for two different levels of elasticity as is
required by the claim.
Additionally, the Examiner misreads Krüger’s disclosure about
shoulder 16, in two ways. First, the Examiner asserts that shoulder 16 is
elastically compressed as is shown collectively by Krüger’s Figures 1 and 3.
Final Act. 3–4; Ans. 6. Note that in Figure 1 of Krüger, shoulder 16 is
straight and perpendicular to flange 7, and in Figure 3 of Krüger shoulder 16
is inclined and has a decreasing diameter in the direction of flange 7. The
Examiner’s position is unpersuasive because, as Appellant correctly notes
(App. Br. 7), Figures 1 and 3 of Krüger illustrate separate embodiments and
do not depict the same embodiment in which shoulder 16 is compressed at
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one time and non-compressed at another time. Such a reading by the
Examiner is not supported by the record.
Second, the Examiner further reasons that Krüger’s shoulder 16 has
gaps, which enable creation of elastic compression. Final Act. 14; Ans. 6.
But the finding that shoulder 16 has gaps is not supported by the record.
Krüger does not describe any gap in shoulder 16 and none of Figures 1–3
illustrate any gap in shoulder 16. As for the requirement of at least 3%
reduction in the elastic portion, the Examiner find that the degree of
elasticity is a design choice and that one with ordinary skill in the art would
have known to make the capsule more compact inside the beverage machine.
Id. The reasoning is inadequate, in light of Krüger’s disclosure, described
above, that it is undesirable to have a low level of mechanical stability and a
risk of lateral buckling of the capsule. Also, the Examiner does not point to
any evidence that it is desirable to have the capsule compressed to a smaller
size when it is inside a beverage machine or that the beverage machine used
in association with Krüger’s capsule applies pressure to the capsule to make
it smaller when it is inside the beverage machine.
For the foregoing reasons, the Examiner’s reasoning is unpersuasive.
The rejection of claim 1 as obvious over Krüger cannot be sustained.
Each of claims 2–7 depends from claim 1 and thus incorporates all
limitations of claim 1. For the limitations incorporated from claim 1, the
Examiner relies on the same reasoning as the Examiner provides in the
context of claim 1. Final. Act. 5–7; Ans. 8–9. The deficiencies of the
Examiner’s reasoning with respect to claim 1 carry through to the
Examiner’s analysis with respect to each of claims 2–7. For the same
reasons discussed above regarding why the Examiner’s reasoning in the
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context of claim 1 is deficient and unpersuasive, the Examiner’s reasoning
and analysis with respect to claims 2–7 are also deficient and unpersuasive.
For the foregoing reasons, we do not sustain the rejection of claims 1–
7 as obvious over Krüger.
B. The Obviousness Rejection of
Claims 8 and 9 over Krüger and Mariller
Claim 8 is independent and includes two limitations very much like
the two limitations we discussed above in the context of claim 1.
Specifically, it requires the capsule to have a rigid body structure and it
requires the capsule to have an elastic portion that is deformable due to
compression applied at the time the capsule is inserted into the beverage
machine to cause a 3% reduction in the external volume and compartment
volume of the capsule. For the other limitations of claim 8, specifically
those directed to a beverage machine, the Examiner relies on Mariller. Final
Act. 7–8. For the two limitations at issue, however, the Examiner relies on
the same reasoning presented with respect to the corresponding limitations
in claim 1. Final Act. 8–9; Ans. 11–12. We have discussed that reasoning
above in the content of claim 1 and found it to be unpersuasive. It is equally
unpersuasive here in the context of claim 8. Thus, the rejection of claim 8 as
obvious over Mariller and Krüger cannot be sustained.
Claim 9 depends from claim 8, and thus incorporates all limitations of
claim 8. For the limitations incorporated from claim 8, the Examiner relies
on the same reasoning as the Examiner provides in the context of claim 8.
Final Act. 10; Ans. 13. The deficiencies of the Examiner’s reasoning with
respect to claim 8 carry through to the Examiner’s analysis with respect to
claim 9. For the same reasons discussed above regarding why the
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Examiner’s reasoning in the context of claim 8 is deficient and unpersuasive,
the Examiner’s reasoning and analysis with respect to claim 9 is also
deficient and unpersuasive. Therefore, the rejection of claim 9 as obvious
over Mariller and Krüger cannot be sustained.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–7 103 Krüger 1–7
8, 9 103 Krüger and
Mariller
8, 9

REVERSED