DEUBER, Louis

Patent Trials and Appeals Board

Sep 30, 2019

15104426 - (D) (P.T.A.B. Sep. 30, 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.
15/104,426 06/14/2016 Louis DEUBER FRG-41203 1046
40854 7590 09/30/2019
RANKIN, HILL & CLARK LLP
38210 GLENN AVENUE
WILLOUGHBY, OH 44094-7808
EXAMINER
LACHICA, ERICSON M
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
40854@rankinhill.com
spaw@rankinhill.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte LOUIS DEUBER
____________

Appeal 2019-001312
Application 15/104,426
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, MONTÉ T. SQUIRE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 requests our review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–11. We have jurisdiction over the appeal under 35
U.S.C. § 6(b).

1 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 QBO COFFEE GMBH.
Appeal Br. 3.
Appeal 2019-001312
Application 15/104,426

2
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth
below:
1. A portion capsule that is filled with an extraction material, for creating
a brewed product, comprising:
- a main body with a bottom region, a peripheral side wall, and a peripheral
collar, the peripheral side wall converging into the collar; and
- a cover, which is fastened on the collar;
- wherein the main body and the cover enclose the extraction material;
- wherein the main body in a region of the collar has an essentially rectangular
cross section;
- wherein the cover forms an outward arch, so that a capsule volume is greater
than if a flat cover was attached to the main body;
- wherein a peripheral surface facing the cover side is formed, said surface
extending from an outer edge of the collar up to a base of the arch;
- and wherein the base of the arch is offset inwards in comparison to a
transition between the side wall and the collar.

The Examiner relies on the following prior art reference as evidence of
unpatentability:

Deuber US2012/0090475 A1 Apr. 19, 2012

Appeal 2019-001312
Application 15/104,426

3
THE REJECTION
1. Claims 1–11 are rejected under 35 U.S.C. §103 as being unpatentable over
Deuber.

ANALYSIS
Upon consideration of the evidence and each of the respective positions set
forth in the record, we find that the preponderance of evidence supports the
Examiner’s fact-finding and reasoning set forth in the record. We thus affirm the
Examiner’s decision to reject claims 1–11 for the reasons provided by the Examiner
in the record, and add the following primarily for emphasis.
At issue is whether Deuber suggests the claimed subject matter, particularly
with respect to the element of “the base of the arch is offset inwards in comparison
to a transition between the side wall and the collar.” Appellant’s Figure 3
(reproduced below) shows this offset as “v”, and also shows base 12, collar 4, and
transition region 13.

Appeal 2019-001312
Application 15/104,426

4
Appellant’s Figure 2 also shows collar 4 (below), as well as main body 2 and
cover 3, and groove 11.

Appellant submits that Deuber does not teach or suggest the claim feature of
“the base of the arch is offset inwards in comparison to a transition between the
side wall and the collar.” Appellant contends that although Deuber’s Figure 11
shows an inclined angle “α” of a peripheral side wall of the main body and discusses
an offset “d” of the welding bead, there is nothing in Deuber that suggests the above
noted claim feature. Appeal Br. 9. Figure 11 (as annotated by the Examiner on
page 5 of the Answer) of Deuber is reproduced below:

Appeal 2019-001312
Application 15/104,426

5

We refer to the Examiner’s findings made on pages 4–5 of the Answer.
Therein, the Examiner recognizes that Deuber is silent regarding the base of the arch
being offset inwards in comparison to a transition between the side wall and the
collar. Ans. 5. The Examiner finds that the configuration of the claimed arch is a
matter of choice which a person of ordinary skill in the art would have found
obvious absent persuasive evidence that the particular configuration of the claimed
arch was significant (MPEP § 2144.04.IV.B.). Id. The Examiner further finds that
the disposition of the arch provides no functionality to the claimed capsule and
does not show a patentably distinguishing feature over the prior art of record. Id.
Appellant argues on pages 10–11 of the Appeal Brief that the claimed feature
of the base of the arch being offset inwards in comparison to a transition between
the sidewall and the collar has a technical significance and is advantageous in terms
of attaching the cover to the main body. Appellant refers to parts of the
Specification which discloses that a tool which, during an ultrasound welding
procedure, is applied during a thermal connection process, can engage along a
Appeal 2019-001312
Application 15/104,426

6
greater area without the collar having to be extended, and that the tool also engages
where no counterpart in a further tool supporting the collar is present. Appeal Br 11;
Spec. ¶ [0034]. Appellant further states that the first tool 21 cannot apply a
counterforce in the inner region because it is applied further outwardly than second
tool 22 coupling in the energy, wherein an advantage results from the intrinsic
stiffness of the main body and the cover, due to the shape, wherein the intrinsic
stiffness is increased by thickening 14. Appeal Br. 11; Spec. ¶ [0035]. Appellant
explains that energy director 23 (see Figures 3 and 4), which is an important and
necessary feature during ultrasonic welding of the cover on the main body, can be
further inwards with reference to the sidewall, and that the configuration with an
outwardly arched cover adds to the fastening strength. Appeal Br. 11; Spec. ¶
[0036].
On page 12 of the Appeal Brief, Appellant submits that the claim feature of
“the base of the arch is offset inwards in comparison to a transition between the side
wall and the collar” is a structural part of the claimed capsule that is provided to
increase the strength of the connection between the cover and the main body. Hence,
Appellant argues that even if some of the advantages are related to the production of
the capsule, this does not alter the fact that the claim feature is not disclosed in
Deuber. Appeal Br. 12. Appellant also argues that the Examiner provided no
persuasive evidence that the claim feature of “the base of the arch is offset inwards
in comparison to a transition between the side wall and the collar” was a known
design alternative for the prior art capsules. Appeal Br. 12. Appellant contends that
to support a conclusion that a feature is an obvious matter of design choice, the
Examiner must present a ‘convincing line of reasoning’ as to why one of ordinary
Appeal 2019-001312
Application 15/104,426

7
skill in the art would have found the claimed feature to have been obvious.2 Appeal
Br. 12.
The Examiner’s response is set forth on pages 10–11 of the Answer, which
we adopt as our own. We refer to pages 2–3 of the Reply Brief regarding
Appellant’s stated reply.
We agree with the Examiner that Appellant’s arguments pertaining to the
improvements in the production of the capsule are unpersuasive for the reasons
discussed by the Examiner in the record (discussed, supra).
With regard to Appellant’s position that even if some of the advantages of the
claim feature are related to improving the production of the inventive capsule, the
claim feature is a structural feature of the capsule itself which has a clear mechanical
significance not disclosed in Deuber, we are also unpersuaded by such argument for
the following reasons.
As discussed above, it is the Examiner’s finding that the modification of
Deuber to arrive at the claim feature is an obvious variation of shape. Appellant
argues it results in a change of function in the form of advantages associated with
strength of the connection and refers to the Specification in this regard (Spec. ¶
[0035]). However, as pointed out by the Examiner, there is no comparison of
connection strength in the record. Ans. 10–11. There is no comparison of the
connection strength of Deuber’s capsule with the connection strength of Appellant’s
claimed capsule. As such, it is simply unknown whether the function of the
Deuber’s capsule is different from the function of the claimed capsule in this regard.

2 As discussed in MPEP § 2144.04, if the facts in a prior legal decision are
sufficiently similar to those in an application under examination, the examiner may
use the rationale used by the court. Changes in shape is an example directed to
common practices which the court has held normally require only ordinary skill in
the art and hence are considered routine expedients. MPEP § 2144.04 IV. B. This is
the line of reasoning used by the Examiner.
Appeal 2019-001312
Application 15/104,426

8
Furthermore, “[t]he fact that appellant has recognized another advantage which
would flow naturally from following the suggestion of the prior art cannot be the
basis for patentability when the differences would otherwise be obvious." Ex parte
Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (The prior art taught
combustion fluid analyzers which used labyrinth heaters to maintain the samples at a
uniform temperature. Although appellant showed an unexpectedly shorter response
time was obtained when a labyrinth heater was employed, the Board held this
advantage would flow naturally from following the suggestion of the prior art.).
In view of the above, we affirm the rejection.

DECISION
The rejection is affirmed.

TIME PERIOD
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