Ex Parte Hansen

Patent Trials and Appeals BoardFeb 28, 2019

13612487 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/612,487 09/12/2012 109813 7590 02/28/2019 Fitch, Even, Tabin & Flannery, LLP 120 South LaSalle Street Suite 2100 Chicago, IL 60603-3406 FIRST NAMED INVENTOR Nick Andrew Hansen 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 9610-102405-US 9761 EXAMINER LACHICA, ERICSON M ART UNIT PAPER NUMBER 1792 MAIL DATE DELIVERY MODE 02/28/2019 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 BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NICK ANDREW HANSEN Appeal2018-005241 Application 13/612,487 1 Technology Center 1700 Before KAREN M. HASTINGS, JAMES C. HOUSEL, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL Appellant filed an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1--4, 7-15, and 19-21 under 35 U.S.C. Â§ 103(a)2 as being unpatentable over Karanikos3 in view ofMann. 4 We have jurisdiction under 35 U.S.C. Â§ 6(b ). 5 1 Appellant identifies Kraft Foods R&D, Inc., as the real party in interest. Appeal Brief ("Appeal Br." 3) filed Nov. 13, 2017. 2 A rejection under 35 U.S.C. 112, second paragraph, has been withdrawn by the Examiner. Examiner's Answer dated Feb. 20, 2018 ("Ans." 3). 3 US 2005/0051478 Al, published Mar. 10, 2005. 4 US 2011/0064852 Al, published Mar. 17, 2011. 5 Our Decision additionally refers to the Specification filed Sept. 12, 2012 ("Spec.") and the Reply Brief dated Apr. 20, 2018 ("Reply Br."). Appeal2018-005241 Application 13/612,487 We REVERSE. BACKGROUND The subject matter on appeal relates to a cartridge for the preparation of a beverage (see, e.g., claims 1 and 15). In use, a piercing element enters the cartridge to permit introduction of water to brew a beverage, such as coffee, through a filter within the cartridge. Spec. ,r 2. The invention concerns a guard element housed within the cartridge that supports the filter and protects the filter from being damaged during piercing of the cartridge. Id. ,I 6. Independent claim 1 is illustrative and is reproduced below from the Claims Appendix of the Appeal Brief. Limitations at issue are italicized. 1. A cartridge for preparation of a beverage comprising: a closed container defining a container volume and including a body, the body having a closed lower end portion with a piercing surface and an upper end portion opposite the closed lower end portion, the body including an annular side wall; a filter located in the closed container to divide the container volume into an ingredient chamber volume and a filtrate volume, wherein the filter is connected to and extends downward from the upper end portion of the body; a base of the filter and a side wall of the filter extending upward from the base toward the upper end portion of the body; a beverage medium located in the ingredient chamber volume; and a guard element located in the filtrate volume; wherein the guard element is separately-formed from the closed container and located within the filtrate volume to define an outlet zone, the guard element being interposed between the filter and the outlet zone; a filter support surface of the guard element; 2 Appeal2018-005241 Application 13/612,487 an inwardly-tapered circuniferential side wall of the guard element spacing the filter support surface from the piercing surface of the body closed lower end portion and radially inward from the side wall of the body, the circuniferential side wall including a plurality of struts and apertures between the struts that permit beverage to flow therethrough; wherein the guard element is configured to prevent encroachment of the filter into the outlet zone such that in use on full extension of a piercing element of a beverage preparation apparatus the piercing element is enabled to be placed in fluid communication with the outlet zone without the piercing element contacting either the guard element or filter; the filter support surface of the guard element contacts the base of the filter and provides a uniform clearance distance between the base of the filter and the piercing surface of the body. Independent claim 15 similarly requires a guard element having a circumferential sidewall with struts and apertures. Each remaining claim depends from claim 1 or 15. DISCUSSION The Examiner finds Karanikos discloses a cartridge for brewing a beverage that includes, among other things, a closed container, a filter, and a beverage medium. Ans. 4--5. The Examiner finds Karanikos does not disclose the guard element of claim 1 but finds Mann discloses a cartridge for preparing a beverage that includes a guard element. Id. at 5-6. The Examiner concludes it would have been obvious to modify Karanikos to incorporate Mann's filter guard to protect Karanikos's filter from damage, such as from a piercing element. Id. at 7. The Examiner finds Mann's guard element lacks a circumferential sidewall including struts and apertures, but concludes it would have been 3 Appeal2018-005241 Application 13/612,487 obvious to provide those structures "to allow liquid to flow out during extraction" and as "a matter of choice." Id. at 6, 16-17. Appellant contends, among other things, that the Examiner's proposed modification to Mann's filter element is not a mere design choice, and the Examiner's rationale is insufficient to establish a prima facie case of obviousness for claim 1. Appeal Br. 14. Appellant's arguments are persuasive. Mann discloses a portion capsule 1 for producing a beverage that includes a filter element 5 dividing a cavity 3 of the capsule 1 into a first region for holding raw beverage material and a second region to hold and collect beverage extract. Mann ,r,r 1, 62. The filter element 5 has filter openings 17 in a filter surface 50 that permit beverage extract to pass through and into the second region. Id. ,r 62. Mann discloses an embodiment in which the filter element 5 includes support structures 16 in the form of columns 16' that support the filter surface 50 with respect to a bottom so the filter element 5 is more stable with respect to forces perpendicular to a horizontal plane. Id. ,r,r 70-72. Modifying Mann's filter element 5 to include a circumferential sidewall including struts and apertures, as proposed by the Examiner, involves more than a mere design choice. The Examiner does not point to evidence to support a finding that one of ordinary skill would have had a reason to modify Mann's filter element and its support structure to include a circumferential sidewall including struts and apertures. "[R ]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int 'l Co. 4 Appeal2018-005241 Application 13/612,487 v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). For the foregoing reasons, we do not sustain the Examiner'sÂ§ 103(a) rejection of claims 1--4, 7-15, and 19-21 over Karanikos and Mann. DECISION The Examiner's decision is reversed. REVERSED 5