Ex Parte Amit

Patent Trial and Appeal BoardJan 14, 2013

11837803 (P.T.A.B. Jan. 14, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/837,803 08/13/2007 Yuval Amit 048939-001000 5659 22204 7590 01/14/2013 NIXON PEABODY, LLP 401 9TH STREET, NW SUITE 900 WASHINGTON, DC 20004-2128 EXAMINER MOORE, WALTER A ART UNIT PAPER NUMBER 1793 MAIL DATE DELIVERY MODE 01/14/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YUVAL AMIT (Application 11/837,803) ____________ Appeal 2011-011818 from Technology Center 1700 Walter Moore, Examiner ____________ Before RICHARD E. SCHAFER, RICHARD TORCZON and CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges. TORCZON, Administrative Patent Judge. DECISION ON APPEAL The appellant (Amit) seeks relief from the final rejection of claims 1, 2, 5-7, 10-16, 19 and 20. We AFFIRM. OPINION BACKGROUND Disclosure and claims Amit discloses:1 A straining/stirring device and a method for manufacturing a straining device . . . . The straining device includes a handle, a frame, 1 Spec., abstract. Appeal w c p fr m p m p m c A strainin handle 2 The fram compart strainin porous the subs A method fo 2 Spec. Â¶ 3 Id. Â¶ 3 4 Id. Â¶ 4 5 Id. Â¶ 4 6 Br. 17 appendi 2011-0118 hich is po ontaining a orous surf ame. Furth edium thr orous surf edicine, o rovides a c edicine, a ollecting a mit's Figu g device 1 0 and a fr e 30 circ ment 40, w g section 4 surfaces 43 tance 50 t mit has tw of manufa A str a han a fram rm a disp a com 31. 9. 0. 1. (Claims A x. 18 sitioned at medium ace and a b er, the co ough at lea ace. The m r soup ing onvenient nd for a va nd adding re 4A (rig 0, with a ame 30.3 umscribes hich has 2 and top , 46.4 A p o be strain o indepen cturing. C ainer devic dle; e, which osable spo partment ppendix). an end of to be strain ottom por mpartmen st one of edium to b redient. Ac apparatus riety of ut an additiv ht) is a cro a a and bottom eripheral ed and aff dent claim laim 1 de e in the fo is position on; and containing We revie 2 the handle ed. The c ous surfac t is configu the top por e strained cordingly for prepar ensil appli e. ss-section seal 44 enc ixes the co s: claim 1 fines the in rm of a di ed at an en a medium w the claim Appli , and a co ompartme e, and is a red so as ous surfac may inclu , the strain ing a beve cations su al view of loses mpartmen to a devic vention a sposable s d of the h to be stra s as they cation 11/ mpartmen nt includes ffixed to t to strain th e and the de a beve ing device rage, a fo ch as stirri one embo t 40 to the e and claim s:6 poon, com andle so a ined, appear in 837,803 t a top he e bottom rage, od, or a ng or diment2 of frame 30. 14 to a prising: s to the claims a 5 Appeal 2011-011818 Application 11/837,803 3 wherein the frame is formed around a boarder [sic, border] of the compartment, and the compartment is affixed to an interior periphery of the frame; wherein the compartment comprises a top porous surface and a bottom porous surface that are sealed together; and wherein the frame and the compartment form an assembly comprising a concave portion of the spoon, the concave portion configured to collect and hold additives while also allowing liquid to pass through the top porous surface, to thereby retain the spoon-like appearance and function of the device, wherein the compartment is configured, so as to permit liquid to pass through the compartment via the top porous surface and the bottom porous surface so as to strain the medium, and wherein the seal forms a peripheral seal section of the compartment, and wherein the compartment is affixed to the frame via the peripheral seal section. Independent claim 14 defines the invention as: A method for manufacturing a disposable straining device, the method comprising: positioning a medium to be strained between a top porous surface and a bottom porous surface; positioning the top porous surface and the bottom porous surface so as to define a compartment and affixing the top porous surface and the bottom porous surface to each other, wherein the compartment is configured so as to allow liquid to pass through the top porous surface and the bottom porous surface; forming a frame and a handle in the form of a disposable spoon; and affixing the compartment to an interior periphery of the frame such that the frame is formed around a boarder [sic, border] of the compartment, and the compartment is supported by the frame and the frame and the compartment form an assembly comprising a concave portion of the spoon, the concave portion configured to collect and hold additives while also allowing liquid to pass through the top Appeal 2011-011818 Application 11/837,803 4 porous surface, to thereby retain the spoon-like appearance and function of the device wherein affixing the top porous surface and the bottom porous surface to each other comprises heat sealing the top porous surface and the bottom porous surface to each other so as to form a peripheral seal section, and wherein affixing the compartment to the frame comprises heat- sealing the peripheral seal section to the frame. Amit has not pointed us to a definition of "spoon-like appearance and function". In one embodiment, Amit discloses that the "straining device 10 is configured to collect and hold solid material, including additives such as sugar particles, sweeteners, and salt, therein, while also allowing liquid to pass through".7 This description of an embodiment falls short of an express definition.8 Rejection On appeal the examiner maintains a rejection of all pending claims except claim 20 as having been obvious9 from the disclosure in a Lovell patent.10 Additionally, the examiner maintains a rejection of all pending claims as having been obvious11 from over the combined disclosures of a Dick-Read published application12 and either a Gorin patent13 or the Lovell patent. 7 Spec. Â¶ 45. 8 In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (requiring reasonable clarity, deliberateness and precision in a definition for a claim term). 9 Ans. 4, citing 35 U.S.C. 103. 10 W.C. Lovell & A.W. House, Packaging and stirring implement for making beverages, U.S. Pat. 3,154,418 (1964). 11 Ans. 7, citing Â§ 103. 12 G. Dick-Read, Device for making a beverage, WO 2005/013775 A1. 13 S. Gorin, Dispensing spoon, U.S. Pat. 3,946,652 (1976). Appeal 2011-011818 Application 11/837,803 5 FACTS AND FINDINGS [1] Lovell discloses "devices used for preparing various types of beverages such as tea, coffee, and the like, and particularly to dispensers which serve as containers for the beverage-making ingredient."14 [2] Lovell's object is to provide an infusion device that, like a spoon, is easily removed from and can stir a hot liquid.15 [3] Lovell discloses an efficient method to manufacture the device "whereby the devices are competitive in price with similar items now presently available on the market."16 [4] Lovell Figure 2 (right) is a sectional view of one embodiment of the device.17 [5] The figure shows a dispenser 8 with a bowl 10 and a handle 12, where the bowl has a chamber 14 containing the beverage ingredient 16.18 [6] The bowl also has orifices 18 covered with a porous sheet material 20.19 [7] The device is formed from upper and lower halves 26, 28 that are joined at the margins 30, 30 of the device.20 [8] A film 22 protects the ingredients and is removed when the dispenser 8 is used.21 14 Lovell 1:11-14. 15 Id. 1:27-37. 16 Id. 1:38-42. 17 Id. 1:60-61. 18 Id. 1:62-68. The handle 12 also has an ingredient chamber 24 for a second ingredient. Id. 2:12-16. 19 Id. 1:68-2:3; 3:14-16. 20 Id. 2:19-30; 3:26-32 (spoon halves heat sealed together). 21 Id. 2:3-11. Appeal 2011-011818 Application 11/837,803 6 [9] The examiner found that Lovell does not teach porous surfaces on both sides of the bowl.22 [10] Lovell Figure 6 (right) illustrates another embodiment in the form of a stirring rod rather than a spoon.23 [11] The stirring rod 34 has perforations 33 opening into the chamber from both sides to permit free flow of liquid through the stirring rod. We find that Lovell does not teach forming the ingredient chamber separately and then integrating it into the frame, but instead contemplates forming the chamber as part of the frame. [12] Dick-Read discloses "a device for making a beverage, in particular a device to provide a beverage such as an infusion of a substance in a liquid."24 [13] Dick-Read reports that the prior art includes a tea bag enclosed in a two- piece spoon, where both pieces of the spoon are perforated.25 [14] Dick-Read Figure 1 (right) is a perspective view of one embodiment of a brewing device.26 [15] Figure 3 shows a device 1 with a head 2 and a handle 3. The head features a non-permeable 22 Final Rej. 3. 23 Lovell 1:57; 2:45-47. 24 Dick-Read 1:5-6. 25 Id. 1:22-2:5. 26 Id. 9:5. Appeal 2011-011818 Application 11/837,803 7 wall 4 and a pair of opposed liquid-permeable walls 5, 6.27 [16] Those skilled in the art would readily appreciate appropriate materials for the permeable walls, including regular and "sheer flow" tea-bag paper.28 [17] Dick-Read forms the tea bag by locating tea between the permeable walls, which are heat sealed or otherwise adhered together.29 [18] The bag is then located over the circular wall 4 of a head 2 and handle 3, then an identical head-handle is brought into registration with the first and the two head-handle pieces are welded together.30 [19] The examiner found that Dick-Read does not teach a concave bowl of a spoon. We note that it is an object of Dick-Read to brew so efficiently that a stirring spoon is not necessary,31 but that Dick-Read reports the use of spoons as part of related devices.32 [20] Dick-Read provides very exacting requirements, based on the type of tea being used, in order to achieve a (relatively) dripless device.33 [21] Gorin discloses disposable spoons pre-filled with a beverage-making ingredient (e.g., coffee, tea or soup) for brewing individual portions of a beverage.34 [22] Gorin teaches the desirability of retaining spoon-like functions such as stirring, feeding, tasting, sipping and ladling.35 27 Id. 10:8-12. Figure 3 does not show the second liquid-permeable wall 6. 28 Id. 10:18-21. 29 Id. 11:19-21. 30 Id. 12:1-6. 31 Id. 4:1-5. 32 Id. 1:22-2:5. 33 Id. 14-15. 34 Gorin 1:4-9. Appeal 2011-011818 Application 11/837,803 8 [23] Gorin Figure 1 (right) is a perspective view of an embodiment of a spoon.36 [24] The spoon 20 has a handle 22 and a bowl 24, which has a concave upper wall 26.37 [25] A lower wall 28 of the bowl is also concave, but is slightly deeper to accommodate the beverage-making ingredient.38 [26] Perforations or apertures 38 in the lower wall permit the free flow of liquid through the spoon so the ingredient may infuse into the liquid.39 [27] The examiner found that Gorin also teaches an embodiment with perforations in the upper wall, relying on Gorin Figure 8.40 [28] Gorin Figure 8 (right) shows an exploded perspective view of another embodiment.41 [29] Figure 8 shows the upper wall 26 (without perforations) detached from the perforated lower wall 28. We note that Gorin teaches perforations in either the upper or lower wall of the bowl (e.g., Figure 7 is identical to Figure 8, except the perforations are in the upper wall instead). However, Gorin does not appear to teach perforations in both walls for the same device. Reliance on Figure 8 to teach perforation of both walls in the same device is an error. 35 Id. 1:49-51; 2:45-48. 36 Id. 2:16-17. 37 Id. 2:63-3:4. 38 Id. 3:5-10. 39 Id. 3:25-29. 40 Final Rej. 6; Ans. 8. 41 Gorin 2:33-34. Appeal 2011-011818 Application 11/837,803 9 ANALYSIS Dick-Read and either Lovell or Gorin Amit notes that Dick-Read does not teach a spoon-like bowl and contends that there is no teaching of a spoon-shaped strainer.42 The examiner does not concede that Dick-Read does not teach a spoon-shape, but only that it does not teach a concave shape.43 The first page of Dick-Read's disclosure states that tea- bag/spoons were already known to a person having ordinary skill in the art. Amit's charge that the combination is the product of hindsight cannot be reconciled with the plain language of Dick-Read. Both Lovell and Gorin tout the benefits of retaining spoon-like functions, such as ease of use and stirring. Dick-Read wishes to avoid stirring used with prior art devices, which makes clear that stirring was a recognized function in the art. Amit has not pointed us to a definition of "spoon-like appearance and function" so a spoon-shaped device that provided at least one of these two functions (ease of use or stirring) would be sufficient. Even if arguendo "spoon- like function" required the device to be "configured to collect and hold solid material, including additives such as sugar particles, sweeteners, and salt", the examiner's proposed modification would also have a bowl shaped device, which would be capable of holding solids. All of the references recognize the importance of free flow of liquid through the ingredient chamber. Common sense counsels that increasing the area of perforation would improve the free flow of liquid. Similarly, perforations on both sides of the spoon would naturally improve flow through the device. Dick-Read takes this insight to an extremeâ€”with the tea bag billowing out on both sidesâ€”that 42 Br. 13. 43 Ans. 14. Appeal 2011-011818 Application 11/837,803 10 might make awkward spoon-like uses other than perhaps easy removal and stirring. A patent publication is not limited, however, to what the earlier inventor intended, but is good for all that it would fairly teach to a person having ordinary skill in the art. Dick-Read teaches perforations on both walls in both his device and the prior art. A person having ordinary skill in the art would have appreciated the value of adopting dual perforation without being obligated to adopt all of Dick-Read's innovations. Indeed, Dick-Read's exacting requirements for constructing the billowing bag for different tea types would be motivation enough to adopt only the simplest teachings in Dick-Read. Amit has not shown error in the examiner's conclusion that it would have been obvious to combine the benefits of a flow-through tea-bag-like compartment with a spoon-like device. The subject matter of claim 1 would have been obvious to a person having ordinary skill in the art. For claim 14, Amit points to the same concave, spoon-like limitation as the point of error; hence, Amit has not shown error for this claim either. Amit has not argued the limitations of the other claims for this basis of rejection and hence has not shown error for these claims on this basis.44 44 Alternatively, considering the limitations argued for the Lovell-only basis of rejection, we see no basis for error. The references in combination teach placement of the ingredient chamber, even an actual tea bag, in the head of the device, clamped in place by one or more pieces of the head. Some claims require the handle and frame to be "manufactured integrally as a single piece". Inasmuch as the references teach one-piece head-handles, the limitation appears to be met. To the extent the head-handles are in top-bottom pairs that are fused, welded or adhered to each other during manufacturing, again the limitation is met because the manufactured result is a single piece. Amit has not pointed us to an express definition of the limitation terms that would exclude either of these alternatives. Appeal 2011-011818 Application 11/837,803 11 Misreading of Gorin To the extent the Examiner interpreted Gorin as teaching perforations in both walls 26 and 28, the examiner erred. Alternatively, to the extent the examiner interpreted Gorin as simply showing perforations on a top and bottom surface of the bottom wall, the teaching is not very helpful because perforations by definition go through the perforated structure but Gorin does not show perforations on both sides of a chamber. In any case, Gorin is part of an alternative basis of rejection and is not needed for a teaching of perforations on both sides of the device. Accordingly, whether the examiner's interpretation is a factual mistake or simply unhelpful, it was not prejudicial.45 Lovell alone We have found a basis for affirming rejection of all pending claims so we do not reach this alternative basis for rejecting less than all of the claims. HOLDING Amit has not shown reversible error in the second ground of rejection for all pending claims so final rejection of claims 1, 2, 5-7, 10-16, 19 and 20 isâ€” AFFIRMED bar For the appellant: JOSEPH BACH, Nixon Peabody LLP, of Washington, D.C. 45 Cf. In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (holding one error not prejudicial but other errors prejudicial).