Ex Parte Kramer et al

Patent Trial and Appeal BoardMay 13, 2013

11793102 (P.T.A.B. May. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SIEGMUND KRAMER and ALBERT OSTERMAIER ____________ Appeal 2011-003777 Application 11/793,102 Technology Center 3700 ____________ Before JAMES P. CALVE, WILLIAM A. CAPP and SCOTT A. DANIELS, Administrative Patent Judges. CAPP, Administrative Patent Judge DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 14-32. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2011-003777 Application 11/793,102 - 2 - THE INVENTION Appellants’ invention is a coffee machine. Spec. 1, para. [001]. Claim 1, reproduced below with paragraph indentation added, is illustrative of the subject matter on appeal. 14. A coffee machine comprising a heating device for heating water, a brewing chamber for accommodating a coffee pad, to which brewing chamber water heated by the heating device is fed in order to release flavorings from a coffee pad arranged in said brewing chamber, and an outlet for the coffee so produced, wherein the coffee machine comprises a steam generator with a steam outlet for providing steam. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: The following rejections are before us for review: 1. Claim 14 is rejected under 35 U.S.C. § 102(b) as being anticipated by Basile. 2. Claim 24 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Basile.1 1 The Examiner has withdrawn this rejection. Ans. 14. Tacchella Trebitz Schmed Basile Eicher US 2,825,317 DE 195 45 111 A1 US 6,019,028 US 6,510,783 B1 US 2004/0177760 A1 Mar. 4, 1958 Jun 5, 1997 Feb. 1, 2000 Jan. 28, 2003 Sep. 16, 2004 Appeal 2011-003777 Application 11/793,102 - 3 - 3. Claims 20, 25 and 26 are rejected under 35 U.S.C. 103(a) as being unpatentable over Basile and Schmed.2 4. Claims 21-23 are rejected under 35 U.S.C. 103(a) as being unpatentable over Basile, Schmed and Tacchella. 3 5. Claims 14-16, 20-21 and 23-32 are rejected under 35 U.S.C. 102(b) as being anticipated by Trebitz. 6. Claim 14 is rejected under 35 U.S.C. 102(b) as being anticipated by Eicher. 7. Claims 14, 16, 18 and 20 are rejected under 35 U.S.C. 102(b) as being anticipated by Schmed. 8. Claims 16 and 18-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Eicher and Trebitz. 9. Claim 17 is rejected under 35 U.S.C. 103(a) as being unpatentable over Eicher and Schmed and admitted prior art. OPINION Anticipation of Claim 14 by Basile The Examiner finds that Basile discloses all of the elements of claim 14. Ans. 3. Appellants traverse the Examiner’s rejection by challenging the Examiner’s finding that the limitation directed to feeding water to a brewing chamber in order to release flavoring from a coffee pad is met by Basile. App. Br.5. In response, the Examiner states that it is inherent that flavorings are released when a coffee pad is infused with hot water. Ans. 13. In addition, 2 The Examiner has withdrawn this rejection. Ans. 14. 3 The Examiner has withdrawn this rejection. Ans. 14. Appeal 2011-003777 Application 11/793,102 - 4 - the Examiner interprets the phrase "to which brewing chamber water heated by the heating device is fed in order to release flavorings from a coffee pad arranged in said brewing chamber" as functional language reciting intended use that does not distinguish the claimed structure over Basile’s structure, which is capable of performing the claimed intended use of feeding water to a brewing chamber to release flavorings from a coffee pad arranged in the brewing chamber. Ans. 14. There is no question that Basile discloses a coffee machine with a brewing chamber and that, as a result of passing heated water through the brewing chamber, coffee flavorings are released. Basile, Abstract; col. 5, ll. 43-50. Thus, the only issue for us to decide is whether the limitation directed to: “a brewing chamber for accommodating a coffee pad,” is satisfied by Basile. We agree with the Examiner that this limitation is satisfied. Appellants do not claim a coffee pad as a structural limitation per se.4,5 Instead, Appellants claim a brewing chamber that functionally is capable of accommodating a coffee pad. The outcome here is controlled by the Federal Circuit’s decision in the case of In re Schreiber, 128 F.3d 1473, 1477–78 (Fed.Cir. 1997). The Schreiber court explained that choosing to 4 The Examiner disposed of the coffee pad limitation issue as functional language reciting intended use. Ans. 14. However, even if we were to construe “coffee pad” as a structural limitation, it appears that Basile does disclose coffee pads. See Basile, col. 1, ll. 14-20; col. 3, ll. 14-20; col. 4, ll. 58-61; see also Basile, Claim 17. 5 According to Appellants, “coffee pads” are normally formed from two sheets of filter paper connected to one another at the edge and containing ground coffee in the enclosed area between the two pieces of paper. Spec. 1, ll. 9-11. Appeal 2011-003777 Application 11/793,102 - 5 - define an element functionally carries with it the risk that the functional limitation asserted to be critical for establishing novelty in the claimed subject matter is an inherent characteristic of the prior art. Id. at 1478. As in Schreiber, all structural limitations recited in claim 14 are found in Basile’s coffee machine. Id. at 1477. Therefore, the Examiner had a sound basis for finding that Basile’s coffee machine is capable of feeding heated water to a brewing chamber to release flavorings form a coffee pad contained therein and Appellants have not persuaded us or error in those findings. Schreiber, 128 F.3d at 1478. Once the Examiner found that Basile was capable of accommodating a coffee pad, the burden shifted to Appellants to show that Basile did not inherently possess the functionally defined limitations of the claimed apparatus. See Schreiber, 128 F.3d at 1478 (where Examiner was justified in concluding that prior art’s structure inherently was capable of performing the claimed function, the burden shifted to Schreiber to show that prior art structure did not inherently possess the functionally defined limitations of the claimed apparatus and Schreiber failed to do so.); see also In re Spada, 911 F.2d 705, 708 (CCPA 1990). Here, Appellants presented neither evidence nor argument to challenge the Examiner’s finding that Basile was capable of accommodating a coffee pad and receiving heated water in the brewing chamber to release flavorings from the coffee pad. In the absence of contrary evidence or argument on this point, we sustain the Examiner’s anticipation rejection of claims 14 over Basile. Appeal 2011-003777 Application 11/793,102 - 6 - Anticipation by Trebitz Claim 14 The Examiner finds that Trebitz discloses each and every limitation of claim 14. Ans. 7. The Examiner interprets the claim language “for accommodating a coffee pad” as functional language reciting intended use. Ans. 15. The Examiner finds that Trebitz’s brewing chamber 53 that is fillable with espresso grounds is capable of accommodating a coffee pad. Id. Appellants traverse the rejection solely on the basis that Trebitz does not disclose a coffee pad. App. Br. 11. Appellants distinguish Trebitz as disclosing a pressure chamber fillable with espresso grounds rather than a coffee pad. Id. However, this argument does not persuade us of error in the Examiner’s finding that Trebitz discloses structure that is capable of meeting this functional feature or show that Trebitz’s structure is not capable of performing the recited function. Thus, the anticipation rejection over Trebitz presents us with the identical issue that we resolved above with respect to the Basile rejection. We sustain the Examiner’s rejection of claim 14 over Trebitz for the same reasons discussed above with respect to Basile. Schreiber, supra. Claims 15, 16, 20, 21 and 23-32 The Examiner finds, and Appellants do not dispute, that Trebitz discloses all of the dependent limitations of claims 15, 16, 20, 21 and 23-32. Ans. 7-9. Appellants do not argue for the separate patentability of these claims beyond the arguments previously advanced and rejected with respect to claim 14. See App. Br. 11. We sustain the Examiner’s rejection of claims 15, 16, 20, 21 and 23-32. Appeal 2011-003777 Application 11/793,102 - 7 - Anticipation of Claim 14 by Eicher The Examiner finds that Eicher discloses each and every limitation of claim 14 (Ans. 9) and the brewing head is capable of accommodating a coffee pad as recited in claim 14 (Ans. 16). Appellants traverse the rejection solely on the basis that Trebitz does not disclose a brewing chamber for accommodating a coffee pad. App. Br. 12. The analysis here is identical to what we have previously discussed with respect to the anticipation rejections of claim 14 over Basile and Trebitz. We sustain the anticipation rejection of claim 14 over Eicher. Anticipation by Schmed Claim 14 The Examiner finds that Schmed discloses each and every limitation of claim 14 (Ans. 10) and the filter funnel is capable of accommodating a coffee pad as recited in claim 14 (Ans. 17). Appellants traverse the rejection solely on the basis that Schmed does not disclose a brewing chamber for accommodating a coffee pad. App. Br. 12. The analysis here is identical to what we have previously discussed with respect to the anticipation rejections of claim 14 over Basile, Trebitz and Eicher. We sustain the anticipation rejection of claim 14 over Schmed. Claims 16, 18 and 20 The Examiner finds, and Appellants do not dispute, that Schmed discloses all of the dependent limitations of claims 16, 18 and 20. Ans. 10. Appellants do not argue for the separate patentability of these claims beyond the argument previously advanced and rejected with respect to claim 14. Appeal 2011-003777 Application 11/793,102 - 8 - App. Br. 12-13. We sustain the Examiner’s rejection of claims 16, 18 and 20 as anticipated by Schmed. Unpatentability of Claims 16 and 18-20 over Eicher and Trebitz Claims 16 and 18-20 all depend directly or indirectly from claim 14. Clms. App'x. Appellants argue that claims 16 and 18-20 depend from claim 14 and Eicher does not teach or suggest a brewing chamber for accommodating a coffee pad, as recited in claim 14, and Trebitz does not remedy this deficiency. See App. Br. 13. In view of our decisions regarding the anticipation rejections above, claim 14 is unpatentable over Eicher and is also unpatentable over Trebitz. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (a disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103 since anticipation is the epitome of obviousness). Inasmuch as Appellants do not offer any separate arguments for patentability of these dependent claims, we sustain the Examiner’s rejection of claims 16 and 18-20 as unpatentable over Eicher and Trebitz. Unpatentability of Claim 17 Claim 17 depends indirectly from claim 14. Clms. App'x. Appellants argue that Eicher does not teach or suggest a brewing chamber for accommodating coffee pad, as recited in claim 14, and Schmed does not remedy the deficiencies of Eicher. App. Br. 13-14. In view of our decisions regarding the anticipation rejections above, claim 14 is unpatentable over Eicher and is also unpatentable over Schmed. See In re Fracalossi, supra. Appellants do not argue for the separate patentability of claim 17 beyond the Appeal 2011-003777 Application 11/793,102 - 9 - argument previously advanced and rejected with respect to claim 14. App. Br. 13-14. Accordingly, we sustain the Examiner’s rejection of claim 17. Unpatentability of Claim 22 Claim 22 depends indirectly from claim 14. Clms. App'x. Appellants argue that Trebitz does not disclose a brewing chamber for accommodating a coffee pad and Tacchella does not remedy these deficiencies. See App. Br. 14. In view of our decisions regarding the anticipation rejections above, claim 14 is unpatentable over Trebitz. See In re Fracalossi, supra. Appellants do not argue for the separate patentability of claim 22 beyond the argument previously advanced and rejected with respect to claim 14. App. Br. 14. Accordingly, we sustain the Examiner’s rejection of claim 22. DECISION The decision of the Examiner to reject claims 14-32 is affirmed. 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). AFFIRMED Klh