Ex Parte Kirschner et al

Patent Trial and Appeal Board

Dec 5, 2012

11162178 (P.T.A.B. Dec. 5, 2012)

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.
11/162,178 08/31/2005 Jonathan Kirschner 25040-1313 3177
29052 7590 12/05/2012
SUTHERLAND ASBILL & BRENNAN LLP
999 PEACHTREE STREET, N.E.
ATLANTA, GA 30309
EXAMINER
NGO, LIEN M
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
12/05/2012 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 JONATHAN KIRSCHNER and LARRY J. MATTSON
____________________

Appeal 2010-010553
Application 11/162,178
Technology Center 3700
____________________

Before: EDWARD A. BROWN, BARRY L. GROSSMAN, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010553
Application 11/162,178

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-6, 8-17, 19 and 20. Claims 7 and 18 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE all rejections and enter a new ground of rejection.

CLAIMED SUBJECT MATTER
The claims are directed to a material dosing system and method.
Claims 1, 11, and 15 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A material dosing system, comprising:
a brewable material source with a plurality
of brewable material doses therein;
a dosing block;
the dosing block comprising a first aperture
positioned on a first side of the dosing block and a
second aperture positioned on a second side of the
dosing block;
the dosing block further comprising a sliding
plate positioned between the first side and the
second side, the sliding plate comprising a dosing
aperture movable between the first aperture and
the second aperture; and
a coupling connecting the brewable material
source and the first aperture of the dosing block;
the coupling comprising a reverse taper
expanding in the direction of the dosing block and
being sized for a dose of the brewable material.

Appeal 2010-010553
Application 11/162,178

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REJECTIONS
1. Claims 1, 5, 6, and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over White (GB 312,771; pub. Jun. 6, 1929) and Sherman (US
6,450,371 B1; iss. Sept. 17, 2002), Swindler (US 3,193,159; iss. July 6,
1965), or Dobkin (US 2,358,913; iss. Sep. 26, 1944);
2. Claims 1-6, 10-12, 15-17, and 20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Sherman and Dobkin; and
3. Claims 8, 9, 13, 14, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sherman, Dobkin, and Bobrick (US 2,240,030; iss.
Apr. 29, 1941), Davis (4,106,535; iss. Aug. 15, 1978), Morrow (4,964,546;
Oct. 23, 1990), or Murray (4,856,681; Aug. 15, 1989).

OPINION
New Ground – Indefiniteness – Claims 1-6 and 8-14
At the outset, we note that claim 1 recites “the coupling comprising a
reverse taper . . . being sized for a dose of the brewable material” and claim
11 recites “the coupling comprising a reverse taper . . . being sized for a
coffee dose.” Firstly, we are unable to determine from this claim language
whether the coupling, the reverse taper, or perhaps both, is “sized for.”
Secondly, the meaning of “sized for” is unclear. Appellants’ Specification
does not describe, much less define the meaning of, “sized for” relative to
the coupling or the reverse taper.
Appellants’ arguments also do not clarify the intended meaning of
“sized for.” Appellants argue:
The size, shape, and/or diameter of the dosing aperture 190 is
arranged for a predetermined volume of the ground coffee 120
and the diameter of the members 210, 220 about the coupling
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Application 11/162,178

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200 are sized to increase along the reverse taper 225 to prevent
bridging of the ground coffee and to ensure a substantially
consistent pressure.
Reply Br. 5. Appellants additionally note “[s]ee Paragraph [0019], [0021],
[0023]; Fig. 2” when explaining where support for “sized for” is allegedly
found in the Specification. Id. However, paragraphs [0019] and [0023] of
the Specification explain that the reverse taper prevents bridging when the
ground coffee travels to the dosing aperture. Paragraph [0021] of the
Specification discusses the dimensions of the dosing aperture, which is a
separate claimed element from the coupling and the reverse taper.
Accordingly, Appellants have not directed us to any disclosure, or to any
other evidence, that clarifies the meaning of the claimed limitations.
We are unable to discern what “sized for” means in light of the
Specification. For example, it is unclear to us if “sized for” refers to one or
more volumes, one or more diameters, one or more opening sizes, a
combination of one or more volumes, diameters, and/or opening sizes, and,
if so, which volume(s), diameter(s), or opening(s), and further, whether the
“sized for” limitation applies to the coupling, the reverse taper, or both.
Thus, ambiguity exists and there are multiple possible claim constructions
available.
“[I]f a claim is amenable to two or more plausible claim constructions,
the USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim . . .
indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential). Accordingly, and pursuant to our authority under 37 C.F.R.
§ 41.50(b) (2011), we enter a new ground of rejection against claims 1-6 and
8-14 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing
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Application 11/162,178

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to particularly point out and distinctly claim the subject matter which
Appellants regard as the invention.

Obviousness – Claims 1-6 and 8-14
Because we found that claims 1-6 and 8-14 are indefinite, a
determination of the scope of these claims would require us to resort to
considerable speculation as to the meaning of the terms employed and
assumptions as to the scope of the claims. Therefore, any determination on
the merits of the Examiner’s rejection of claims 1-6 and 8-14 is imprudent.
See In re Steele, 305 F.2d 859, 862 (CCPA 1962). As such, we are
constrained to reverse, pro forma, the Examiner’s rejection of claims 1, 5, 6,
and 10 under 35 U.S.C. § 103(a) as being unpatentable over White and
Sherman, Swindler, or Dobkin, the Examiner’s rejection of claims 1-6 and
10-12 under 35 U.S.C. § 103(a) as being unpatentable over Sherman and
Dobkin, and the Examiner’s rejection of claims 8, 9, 13, and 14 under 35
U.S.C. § 103(a) as being unpatentable over Sherman, Dobkin, and Bobrick,
Davis, Morrow, or Murray. We hasten to add that this is a procedural
reversal rather than one based upon the merits of the rejections.

Obviousness – Claims 15-17 and 20
The Examiner indicates that Sherman discloses each of the features
found in claim 15 except the reverse taper. Ans. 4. The Examiner relies on
Dobkin as teaching a “coupling having a washer 110 with a reverse taper
(outer surface o[f] the washer)” and determines that it would have been
obvious “to modify the Sherman coffee dosing system with the coupling
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having a reverse taper, as taught by Dobkin, in order to enhance the moisture
tightness for the dosing system.” Ans. 5.
Appellant contends that “what is described as the ‘reverse taper’ [in
Dobkin] is merely a washer 110 that appears slightly angled only on one side
in Fig. 9” and “this would appear to be a drawing error on the right side of
the washer 110 of Fig. 9.” App. Br. 7. In support of this position, Appellant
further explains that “[t]here is no taper shown on the left side of the washer
110 in Fig. 9 and no taper whatsoever shown on either side of the washer
110 in Fig. 10.” Id. We agree.
Based on our review of the Figures 9 and 10 of Dobkin we find
nothing that shows a taper on an outer surface (or even on an inner surface)
of the washer 110. The Examiner also has not pointed to anything further in
the disclosure of Dobkin that supports the finding of a reverse taper being
disclosed in Dobkin. Thus, we cannot sustain the Examiner’s rejection of
claims 15-17 and 20.

Obviousness – Claim 19
Claim 19 depends from claim 15. The Examiner's application of
Bobrick, Davis, Morrow, or Murray to the rejection of claim 19 (Ans. 6)
does not cure the deficiencies of the rejection of claim 15, as discussed
supra. Thus, we do not sustain the rejection of claim 19.

DECISION
We REVERSE the Examiner’s decision to reject claims 1-6, 8-17, 19,
and 20.
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Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of claims 1-6 and 8-14 under 35 U.S.C. § 112, second
paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. 41.50(b)

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