Ex Parte Kobylarz

Patent Trial and Appeal BoardApr 12, 2016

11855868 (P.T.A.B. Apr. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111855,868 09/14/2007 Robert J. Kobylarz 23644 7590 04/14/2016 Barnes & Thornburg LLP (CH) P.O. Box 2786 Chicago, IL 60690-2786 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. 27726-106436 7783 EXAMINER PAIK, SANG YEOP ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 04/14/2016 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): Patent-ch@btlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT J. KOBYLARZ Appeal 2014-003173 1,2 Application 11/855,868 Technology Center 3700 Before PHILIP J. HOFFMANN, KENNETH G. SCHOPPER, and AMEE A. SHAH, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1 and 3-15. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. According to Appellant, the invention is related to "a [beverage] system [that] eliminates water which might otherwise result in evaporation 1 Our decision references Appellant's Specification ("Spec.," filed Sept. 14, 2007), Appeal Brief ("Appeal Br.," filed Aug. 27, 2013), and Reply Brief ("Reply Br.," filed Dec. 12, 2013), as well as the Examiner's Answer ("Answer," mailed Nov. 8, 2013). 2 Under the heading Real Party in Interest, Appellant identifies Bunn-0- Matic Corporation. Appeal Br. 1. Appeal2014-003173 Application 11/855,868 and accumulation of mineral deposits as well as precipitation of mineral deposits from water." Spec. i-f 4. We reproduce, below, independent claim 1 as representative of the appealed claims. 1. A brewing system for brewing a beverage using a beverage making substance, the brewer comprising: a controller for controlling the beverage brewer; a single reservoir for retaining heated water for dispensing, the reservoir having an upper portion and a lower area; a heater coupled to the controller and positioned in proximity to the lower area of the reservoir for controllably heating the water in the reservoir; a controllable water fill line communicating with the lower area of the reservoir for controllably introducing water to the reserv01r; a controllable valve means for controlling the volume of water introduced to the reservoir from the water fill line, the controllable valve means being coupled to the water fill line and to the controller; ,..1" 1Â· . . . h h . + a u1spense i1ne commun1cat1ng w1t11 t11e upper portion O_i the reservoir for controllably dispensing heated water from the reserv01r; a spray head coupled to the dispense line for distributing water over a brewing substance retained in a brewing substance holder; a check valve means coupled to the dispense line to prevent water in the dispense line from returning to the reservoir; and a controllable air pump coupled to the controller and communicating with at least one of the upper portion of the reservoir and the dispense line for providing air to the brewer to clear water from at least the dispense line at the end of a brewing cycle. Appeal Br., Claims App. 2 Appeal2014-003173 Application 11/855,868 REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows: claims 1, 3-8, 10, 12, and 14 under 35 U.S.C. Â§ 103(a) as unpatentable over Streeter (US 7,523,695 B2, iss. Apr. 28, 2009), Knepler (US 5,647,055, iss. July 8, 1997) (hereinafter "Knepler '055"), Knepler (US 5,375,508, iss. Dec. 27, 1994) (hereinafter "Knepler '508"), and McDuffie (US 2006/0090653 Al, pub. May 4, 2006); and claims 9, 11, 13, and 15 under 35 U.S.C. Â§ 103(a) as unpatentable over Streeter, Knepler '055, Knepler '508, McDuffie, and either Peterson (US 3,490,356, iss. Jan. 20, 1970) or Reynolds (US 3,443,508, iss. May 13, 1969). See Answer 2-5. ANALYSIS Rejections of claims 1, 3-8, 10, 12, and 14 Independent claim 1, from which claims 3-8, 10, 12, and 14 depend, recites "a check valve means coupled to the dispense line to prevent water in the dispense line from returning to the reservoir." Appeal Br. Claims App. The Examiner finds that Streeter' s beverage system discloses most of the claimed elements, but that Streeter does not disclose the claimed check valve. See Answer 2-3. The Examiner finds that McDuffie discloses a check valve, and concludes that it would have been obvious to use McDuffie's check valve in Streeter's dispense line between the water reservoir and the spray head. See id. at 3--4. Appellant argues that the rejection is in error. See Appeal Br. 9-11; see also Reply Br. 3--4. For the reasons discussed below, we agree with Appellant. 3 Appeal2014-003173 Application 11/855,868 The Examiner's reason for using ivicDuffie's check valve in Streeter's dispense line between the water reservoir and the spray head is that "to one of ordinary skill in the art, the one-way valve would be provided along the water dispense line ... to force or expel any residual liquid in the line as done in McDuffie, [and, thus] the valve would have been provided in the dispense line ... between the tank ... and the brewing chamber ... of Streeter." Ans. 6. We agree with Appellant, however, that this statement does not provide the required rational underpinning to support a legal conclusion of obviousness. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Initially, we find that it is the use of Streeter' s air pump 30 that is used to expel liquid from the dispense line. See, e.g., Appeal Br. 10. A check valve, or one-way valve (as the name suggests), is used to permit flow in only one direction, and does not "force or expel ... residual liquid in [a] line." Thus, Streeter already "force[s] or expel[s] any residual liquid in the line" without the addition of a check valve. See, e.g., Appeal Br. 10. Further, in McDuffie, a check valve is used between a flow meter and an air pump to prevent water from flowing into the air pump. See McDuffie i-f 44 ("The line from the air pump is connected to the line leading to the brewing chamber and includes a one way valve that is closed while the water pump is operated."). In the Examiner's proposed combination of Streeter and McDuffie, there is no air pump connected to the dispense line. McDuffie also describes an unillustrated check valve that "may be provided between the flow meter ... and brewing chamber." Id. at i-f 59. However, this check valve may be used "to prevent air from moving through the flow meter towards the reservoir." In the Examiner's proposed 4 Appeal2014-003173 Application 11/855,868 combination of Streeter and ivicDuffie, there is no flow meter. Further, the Examiner's proposed combination would result in the claimed arrangement that "prevent[ s] water in the dispense line from returning to the reservoir" while "providing air to the brewer to clear water from at least the dispense line" (Appeal Br., Claims App.) (emphasis added), which is a different result than the result of McDuffie's check valve (i.e., to prevent air flow). Thus, based on the foregoing, we conclude that the Examiner's reasoning for adding McDuffie' s check valve to Streeter' s device lacks the required rational underpinning. Therefore, we do not sustain the rejection of claims 1, 3-8, 10, 12, and 14. Rejection of claims 9, 11, 13, and 15 Claim 9 Independent claim 9 recites "a check valve means coupled to the dispense line to prevent water in the dispense line from returning to the reservoir." Appeal Br., Claims App. We do not sustain the rejection of claim 9 for reasons similar to those discussed above for claim 1, inasmuch as the Examiner's basis for the rejection is similar to claim 1. See, e.g., Answer4-5. Claims 11, 13, and 15 Independent claim 11, from which claims 13 and 15 depend, recites "a check valve means coupled to the dispense line to prevent water in the dispense line from returning to the reservoir." Appeal Br., Claims App. We do not sustain the rejection of claims 11, 13, and 15, for reasons similar to those discussed above for claim 1, inasmuch as the Examiner's basis for the rejection is similar to claim 1. See, e.g., Answer 4--5. 5 Appeal2014-003173 Application 11/855,868 DECISION We REVERSE the Examiner's rejection of claims 1, 3-8, and 10-15 under 35 U.S.C. Â§ 103. REVERSED 6