Conopco, Inc., d/b/a UNILEVER

Patent Trials and Appeals Board

Nov 19, 2021

2021003849 (P.T.A.B. Nov. 19, 2021)

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.
14/408,638 12/17/2014 David Murray Cross F3646USw 190058-0334 1985
136886 7590 11/19/2021
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
AXTELL, ASHLEY
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
11/19/2021 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID MURRAY CROSS, MICHAEL PATON,
ALISTAIR DAVID SMITH, DANIEL THOMAS TOON,
and DANIEL MARK WALTER
__________

Appeal 2021-003849
Application 14/408,638
Technology Center 1700
____________

Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
JENNIFER R. GUPTA, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 the final rejection of claims
1, 5, 8, 9, 16–19, and 21–28. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b). Oral arguments were heard in this appeal on November
2, 2021.2

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 Conopco
Inc., D/B/A Unilever. (Appeal Br. 2).
2 A written transcript of the Oral hearing will be entered into the record
when the transcript is made available.
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We AFFIRM.
Appellant’s invention is directed to a capsule having a coding system
which allows recognition of the capsule by a beverage making machine
(Spec. 1:4–6; Claim 1).
Claim 1 is illustrative:

1. A capsule for a beverage production machine, the
capsule comprising:
a body part;
an orientation member integrally formed with the body
part;
a substance enclosed within the capsule; and
a lid part comprising:
a first side comprising a portion coupled to the body part;
a second side opposite the first side; and
a metallic foil incorporated in at least one of the first side
or the second side, the metallic foil comprising a plurality of
identifiers extending through at least the second side, each
of the identifiers comprising a code pattern, the code patterns
each consisting of an arrangement of discontinuities;
wherein the body part and the lid part cooperate to seal
the substance within the capsule;
wherein the second side of the lid part is exposed such
that at least two of the identifiers can be read simultaneously;
wherein the orientation member directs alignment of the
capsule such that the capsule is aligned within the beverage
production machine in any one of n fixed rotational
orientations;
wherein n is one of 2, 3, 4, 5, and 6; and
wherein the identifiers are arranged with rotational
symmetry so as to enable detection of the capsule in any of the
fixed rotational orientations.

Appellant appeals the following rejections:
1. Claim 18 is rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
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2. Claims 1, 5, 8, 16, and 17 are rejected under 35 U.S.C. § 103 as
unpatentable over Boyd (US 2002/0048621 A1, published Apr.
25, 2002) in view of Kollep (US 2013/0108752 A1, published
May 2, 2013) as evidenced by Halliday (US 2003/0033938 A1,
published Feb. 20, 2003) and Jarisch (WO 2011/141532 A1,
published Nov. 17, 2011) in further view of Knepler (US
6,465,035 B1, issued Oct. 15, 2002) and Lazaris (US
2002/0148356 A1, published Oct. 17, 2002).
3. Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over
Boyd in view of Kollep, Halliday, Jarisch, Knepler, Lazaris,
and Boussemart (US 2011/0030732 A1, published Feb. 10,
2011).
4. Claims 23–25 are rejected under 35 U.S.C. § 103 as
unpatentable over Boyd in view of Kollep, Halliday, Jarisch,
Knepler, Lazaris, and Koeling (US 2008/0148958 A1,
published Jun. 26, 2008).
5. Claims 18, 19, 21, 22, and 28 are rejected under 35 U.S.C.
§ 103 as unpatentable over Boyd in view of Kollep, Halliday,
Jarisch, Knepler, Koeling, and Henck (EP 1 247 480 A1, published
Oct. 9, 2002).
6. Claims 26 and 27 are rejected under 35 U.S.C. § 103 as
unpatentable over Boyd in view of Kollep, Halliday, Jarisch,
Knepler, Koeling, Henck, and Lazaris.

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FINDINGS OF FACT & ANALYSIS
We review the appealed rejection for reversible error based on the
arguments and evidence presented by Appellant. 37 C.F.R.
§ 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (explaining that even if the Examiner had failed to make a prima
facie case, “it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”).

35 U.S.C. § 112(a) Rejection
The Examiner finds claim 18 recites an impermeable body, which
lacks written descriptive support (Final Act. 2). The Examiner finds the
Specification does not disclose that the body is specifically impermeable and
does not specify the material used in making the capsule body (Final Act. 2).
Appellant argues that the mere absence of the term impermeable from
the Specification is not sufficient to justify the written description rejection
(Appeal Br. 22). Appellant argues the Specification at page 3 describes the
“infusible beverage ingredient” has a moisture content of less than 30 wt.%
preferably 20 wt% and most preferably from 0.1 to 10 wt.% (Appeal Br. 23).
Appellant argues the Specification discloses that the body part 2 defines a
compartment that encloses a beverage ingredient (Appeal Br. 23). Appellant
contends that a person skilled in the art would understand that the body of
capsule could not enclose such an infusible beverage ingredient unless the
body was impermeable (Appeal Br. 23). Appellant contends that the body
of the capsule is necessarily impermeable to be able to contain the beverage
ingredient against the force of gravity in the brew cycle (Appeal Br. 23–24).
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Appellant argues that Figure 1a illustrates the body 2 has a solid cross
section and thus is impermeable (Appeal Br. 24).
The Examiner finds the Specification at page 12 discloses that the lid
on the body part can have perforations (Ans. 10). The Examiner finds that
because the lid can have perforations, Appellant’s argument that the
beverage ingredient is sealed in the capsule does not mean that the body part
is impermeable (Ans. 10). The Examiner finds that the moisture content of
the beverage ingredient is also not indicative that the body part is
impermeable (Ans. 10). The Examiner finds that Appellant’s reliance on
Figure 1a is insufficient because the written description does not describe the
body or material that forms the body as impermeable (Ans. 11).
The preponderance of the evidence favors the Examiner’s lack of
written description finding. Appellant’s reliance on the moisture content of
the beverage ingredient does not necessarily require that the beverage
material is placed in an impermeable body part. The Examiner correctly
finds that Appellant discloses embodiments where the lid includes
perforations, which would not result in a sealed or impermeable capsule
(Ans. 10). Figure 1a may show a solid cross-section of the body part 2, but
the figure does not show that the body part is solid across the entire body
(i.e., there is no bottom plan view of the body part 2). As found by the
Examiner, there is no written description indicating that body part 2 is
impermeable (Ans. 11). Therefore, it is unclear if the cross-section shown in
Figure 1a is completely solid across the entire surface or merely solid over
the cross section portion shown in Figure 1a. The Examiner has provided
sufficient reasoning to establish that a person having ordinary skill in the art
would not have recognized that the inventor was in possession of the
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invention as claimed in view of the Specification disclosure. Hyatt v.
Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007).
On this record, we affirm the Examiner’s § 112(a) written description
rejection of claim 18.

Rejections (2) to (4): Boyd in view of Kollep, Halliday, Jarisch, Knepler,
and Lazaris

Appellant argues the subject matter of claim 1 only (Appeal Br. 8–
20). Appellant’s arguments regarding the claims dependent on claim 1 rely
on arguments made regarding claim 1 (Appeal Br. 21, 28–29). All claims
subject to Rejection (2) stand or fall with claim 1 and we have considered
Appellant’s arguments to claim 1 to the extent applicable to the separate
rejections of claims 9 and 23–25.
The Examiner’s findings and conclusions regarding Boyd, Kollep,
Halliday, Jarisch, Knepler, and Lazaris are located on pages 3 to 9 of the
Final Action. Appellant’s arguments focus on the combination of Boyd and
Knepler (Appeal Br. 8–20). Accordingly, the focus of this decision is on
arguments against these two references.
Appellant argues that Boyd’s packet does not seal the coffee in the
packet (Appeal Br. 10). Appellant contends that Boyd’s packet is permeable
to water and thus cannot seal the substance within the capsule (Appeal Br.
10). Appellant contends that Boyd’s packet is only sealed at the outer
periphery via gasket 18 (Appeal Br. 11).
Appellant’s argument is not persuasive because the phrase “cooperate
to seal” as recited in claim 1 is not defined or described in the Specification.
The Examiner finds that Appellant describes an embodiment in which the
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capsule has a body part 2 with a lid 3 having perforations 8 therein (Ans. 3).
The Examiner correctly finds that claim 1 is not limited to a capsule where
the lid and body part are impermeable (Ans. 3). The Examiner finds that
Boyd teaches that the filter material prevents the coffee grounds from
leaving the packet and thus seals the coffee grounds in the packet (Ans. 5).
We agree. There is no requirement in claim 1 that “cooperate to seal” means
the capsule is impermeable as argued by Appellant. Rather, Boyd’s teaching
in paragraph 25, that the filter packet restricts flow of the coffee grounds
there through is sufficient to meet the claim requirement that the body and
lid cooperate to seal the coffee grounds therein.
Appellant argues there is no motive to modify Boyd’s packet using
Knepler’s brew funnel (Appeal Br. 12). Appellant argues that Knepler has
nothing to do with capsules and instead is directed to a wireless grinder-
brewer interface (Appeal Br. 12). Appellant contends claim 1 is limited to
capsules (Appeal Br. 14). Appellant argues that the selector 38 on Knepler’s
brew funnel 20 has nothing to do with the coffee that is utilized by the brew
funnel to brew the coffee (Appeal Br. 13). Appellant contends that Knepler
is non-analogous art because it is in a separate field of endeavor from
Appellant and is not reasonably pertinent to Appellant’s problem (i.e.,
reading a capsule in any orientation and/or situation wherein the
environment around the capsule is not clean) (Appeal Br. 15–16). Appellant
contends Knepler is directed to brew funnels and the problem addressed by
Knepler is addressing the confusion of setting the coffee grinder and maker
while avoiding the use of wires to convey that information (Appeal Br. 15).
Appellant argues the combination is based on hindsight and would require a
substantial reconstruction of Boyd’s conventional packet structure (Appeal
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Br. 17). Appellant contends Boyd’s use of a conventional packet structure
teaches away from using magnets as identifiers as taught by Knepler
(Appeal Br. 17).
To be considered analogous art to a claimed invention, the prior art
must be either from the same field of endeavor even if that prior art
addresses a different problem or reasonably pertinent to applicant’s problem.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The Supreme Court
instructs that the scope of analogous is to be construed broadly. See, Wyers
v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme
Court’s decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398
(2007), directs us to construe the scope of analogous art broadly, stating that
“familiar items may have obvious uses beyond their primary purposes, and a
person of ordinary skill often will be able to fit the teachings of multiple
patents together like pieces of a puzzle.” Id. at 402”). In the mechanical
arts, a broad spectrum of prior art must be explored and it is reasonable to
permit inquiry into other areas where one of ordinary skill in the art would
be aware that similar problems exist. Stevenson v. Int’l Trade Comm., 612
F.2d 546, 550 (CCPA 1979).
Knepler is directed to a coffee brew funnel having a selector, which
indicates the desired batch size and type of coffee, and communicates with
sensors on a coffee grinder and coffee brewer (col. 1, ll. 55–63). The
selector comprises a pair of magnets associated with the selector indication
of the type of coffee and desired batch size (col. 3, ll. 3–6). The sensors 44a,
44b, and 44c are on the coffee grinder or coffee brewer and communicate
with the magnets on the funnel selector (col. 3, ll. 36–40). The information
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regarding coffee batch size and type are stored in the funnel and travel with
it to the coffee grinder and brewer, respectively (col. 4, ll. 36–52).
Similarly, Appellant’s capsule includes an identifier that permits the
capsule to be recognized when the identifier is read by a coil in the beverage
machine (Spec. 8:11–16). The identifier may convey information about
capsule type (i.e., beverage variety, cleaning capsule) (Spec. 8: 23–25). The
capsule identification by the machine reading the identifier controls at least
one parameter of the beverage production machine (i.e., temperature,
pressure, volume, and/or flow rate of a brewing liquid) (Spec. 10: 4–7).
As shown above, Appellant’s use of the identifier on a capsule
containing a beverage ingredient such as coffee to identify the capsule
contents and control the brewing process thereof includes the same
functionalities as Knepler’s brew funnel with pre-setting of the selector to
identify coffee type and batch size to a grinder and brew machine. Based on
these similarities, we find that Knepler is in the same field of endeavor as
Appellant’s claimed invention.
Additionally, we agree with the Examiner’s finding that Knepler is
reasonably pertinent to Appellant’s problem (Ans. 5–6). Specifically, the
Examiner finds that Appellant is concerned with reliably communicating
information using sensors and material sensed by the sensors to control a
beverage brewing operation (Ans. 5). Appellant argues several problems
were solved by the invention one of which is identifying a capsule in a
beverage production machine (Appeal Br. 16). Knepler is directed to
identifying the type of coffee and batch size to be brewed in a brewing
funnel. Knepler’s funnel contains the coffee (beverage ingredient) as does
Appellant’s capsule, and communicates with the brewer regarding type
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coffee (e.g., decaf or regular) and batch size. We agree with the Examiner
that Knepler is also reasonably pertinent to Appellant’s problem of
communicating the identity of a beverage ingredient in beverage making
machine. Knepler is analogous art.
Contrary to Appellant’s argument that there is no motive to modify
Boyd’s packet using Knepler’s brew funnel, we find the teachings of
Knepler regarding using the magnets as identifiers on a coffee brew funnel
to communicate coffee type and batch size would have suggested to one of
ordinary skill in the art their use as part of Boyd’s capsule identification
system.3 The Examiner reasonably finds that Knepler’s teaching regarding
using the magnet/sensor combination to communicate coffee type and batch
size in controlling the brew operation would have provided a reason to
provide similar type of communication in Boyd’s capsule with its identifier
(Final Act. 7).
We are unpersuaded that Boyd’s disclosure of a conventional packet
structure teaches away from using Knepler’s magnets as identifiers. Boyd
teaches that the packet 10 is of “somewhat conventional construction” (¶
25). Boyd’s use of a filter material of conventional construction does not
suggest that the line of development flowing from Boyd’s disclosure is
unlikely to produce the result sought by Appellant. In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994). Boyd’s use of conventional filter packet
construction does not indicate that using Knepler’s magnets or other
identifiers would be detrimental or should be avoided. To the contrary,

3 This is consistent with the prior art identified in the Specification, WO
2011/000723 and WO 2011/000724, that describes beverage capsules
comprising magnetic identifiers (Spec. 1, ll. 20–30).
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Boyd teaches using identifiers on the packet to convey information about the
brewing operation in accordance with the packet content or user’s tastes (¶
23).
In light of the findings noted above, we find the Examiner’s rejection
is based on the teachings of the references, specifically Knepler and Boyd as
argued by Appellant, and not impermissible hindsight. Although some
reconstruction of Boyd’s packet may be necessary to use Knepler’s magnets
as identifiers, Appellant has not shown that the modification of Boyd to use
Knepler’s magnets would have been beyond the ordinary skill in the art.
Appellant argues that Boyd does not teach using a plurality of
identifiers that are all the same type (Appeal Br. 18–19). The Examiner
correctly finds that claim 1 does not require that the plurality of identifiers
are all the same type (Ans. 8). Nevertheless, Boyd does teach that the
identifier may be notches that are localized or span the entire packet
perimeter (¶ 29). We are not persuaded by Appellant’s argument.
On this record, we affirm the Examiner’s § 103 rejection of claims 1,
5, 8, 16, and 17 over Boyd, Kollep, Halliday, Jarisch, Knepler, and Lazaris.
We also affirm, for the same reasons, the § 103 rejections of claims 23–25
over Boyd, Kollep, Halliday, Jarisch, Knepler, Lazaris, and Koeling, and
claim 9 over Boyd, Kollep, Halliday, Jarisch, Knepler, Lazaris, and
Boussemart.

Rejections (5) and (6): § 103 Boyd, Kollep, Halliday, Jarisch, Knepler,
Koeling, Henck

Appellant argues the subject matter of independent claim 18 only
(Appeal Br. 26–27). All claims subject to Rejection (5) stand or fall with
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claim 18 and we have considered Appellant’s arguments to claim 18 to the
extent applicable to the separate rejection of claims 26 and 27.
The Examiner’s findings and conclusions regarding claim 18 are
located on pages 12 to 17 of the Final Action.
Appellant makes the same arguments regarding the combination of
Knepler’s teachings with Boyd (Appeal Br. 26). Those arguments are
unpersuasive for the same reasons discussed above in the context of
Rejection (2).
Appellant argues that it would not have been obvious to modify Boyd
to seal the coffee in an impermeable packet (Appeal Br. 26). Appellant
contends that modifying Boyd’s flow through filter packet to make it
impermeable would have required a substantial reconstruction and redesign
of Boyd’s filter portions and changed Boyd’s principle of operation (Appeal
Br. 27).
Appellant’s arguments are not persuasive because the Examiner
proposes modifying Boyd’s packet in light of Henck’s teachings a packet
may be either permeable or impermeable (Final Act. 16). The Examiner
finds that Henck teaches using an impermeable structure would prevent
exposure of the ingredients to air until beverage preparation (Final Act. 17).
Henck further teaches that if an impermeable packet is used, the packet is
pierced using conically shaped structures to permit the brewing operation
(¶¶ 16; Fig. 6). Accordingly, the benefit of having protection from air does
not change the ability of the device to filter the brewed coffee. Rather, use
of an impermeable packet involves using a piercing device to initiate the
brewing as taught by Henck. Boyd’s principle of operation (i.e., filtering to
brew coffee) would not change.
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On this record, we affirm the § 103 rejection of claims 18, 19, 21, 22,
and 28 over Boyd, Kollep, Halliday, Jarisch, Knepler, Koeling, and Henck.
We also affirm the § 103 rejection of claims 26 and 27 over Boyd, Kollep,
Halliday, Jarisch, Knepler, Koeling, Henck, and Lazaris.

DECISION

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
18 112(a) Written
Description
18
1, 5, 8, 16, 17 103 Boyd, Kollep,
Halliday, Jarisch,
Knepler, Lazaris
1, 5, 8,
16, 17

9 103 Boyd, Kollep,
Halliday, Jarisch,
Knepler, Lazaris,
Boussemart
9
23–25 103 Boyd, Kollep,
Halliday, Jarisch,
Knepler, Lazaris,
Koeling
23–25
18, 19, 21, 22, 28 103 Boyd, Kollep,
Halliday, Jarisch,
Knepler, Koeling,
Henck
18, 19,
21, 22,
28

26, 27 103 Boyd, Kollep,
Halliday, Jarisch,
Knepler, Koeling,
Henck, Lazaris
26, 27
Summary 1, 5, 8, 9,
16–19,
21–28

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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).
ORDER
AFFIRMED