Ex Parte Noble et al

Patent Trial and Appeal BoardApr 20, 2016

12692314 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/692,314 01122/2010 7590 Phillip M, Pippenger Miller, Matthias & Hull suite 2350 One North Franklin Street Chicago, IL 60606 04/20/2016 FIRST NAMED INVENTOR Ken Noble 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. 29605/16002 1607 EXAMINER SMITH, CHAIM A ART UNIT PAPER NUMBER 1792 MAILDATE DELIVERY MODE 04/20/2016 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 KEN NOBLE and SAMANTHA PESKI1 Appeal2014-005316 Application 12/692,314 Technology Center 1700 Before PETER F. KRATZ, KAREN M. HASTINGS, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. OGDEN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-7 and 15-17 in the above-identified application. We have jurisdiction pursuant to 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Sturm Foods, Inc. Appeal Br. 3. Appeal2014-005316 Application 12/692,314 BACKGROUND Appellants' invention relates to "soluble coffee products that include compressed coffee particles." Spec. iJ 1. Independent claim 1 is representative: 1. A soluble coffee product comprising a mixture of freeze dried roasted coffee, micro-milled roasted coffee and coffee oil, the mixture being formed of compressed particles, each having a particle size between 4 mesh and 25 mesh. Appeal Br. App. A 12 (emphasis added). Claims 15, 16, and 17 are also independent. Id. at 13. The Examiner maintains the following grounds of rejection: I. Claims 1, 2, and 4 under 35 U.S.C. Â§ 103(a) as being unpatentable over EP 0 928 561 Al [hereinafter Gilbert] (published July 14, 1999), in view of US 3,769,032 [hereinafter Lubsen] (issued Oct. 30, 1973) as further evidenced by Michael Sivetz, 2 Coffee Processing Technology 13, 24 (1963), US 3,655,397 [hereinafter Parliament] (issued Apr. 11. 1972), and EP 0 220 889 A2 [hereinafter Lascelles] (published May 6, 1987), and further in view of US 2,931,727 [hereinafter Kraut] (issued Apr. 5, 1960). Answer 2-5. II. Claims 5-7 under 35 U.S.C. Â§ 103(a) as being unpatentable over Gilbert, in view of Lubsen as further evidenced by Sivetz, Parliament, and Lascelles, and further in view of Kraut and US 5,840,189 [hereinafter Sylvan] (issued Nov. 24, 1998). Answer 5-6. III. Claims 3 and 15-17 under 35 U.S.C. Â§ 103(a) as being unpatentable over Gilbert, in view of Lubsen as further evidenced by Sivetz, Parliament, and Lascelles, and further in view of Kraut and 2 Appeal2014-005316 Application 12/692,314 US 2006/0216377 Al [hereinafter Milon] (published Sept. 28, 2006). Answer 6-8. All the claims are argued as a group. See Appeal Br. 9-10. Therefore, consistent with the provisions of 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013), we limit our discussion to claim 1, and all the claims stand or fall together. DISCUSSION Upon consideration of the evidence on this appeal record and each of Appellants' contentions raised in the Appeal Brief, we determine that a preponderance of the evidence supports the Examiner's conclusion that the subject matter of Appellants' claims is unpatentable over the applied prior art. We sustain the Examiner'sÂ§ 103 rejections for essentially the reasons set out by the Examiner in the Answer. We add the following for emphasis. The Examiner finds, in particular, that Kraut teaches a soluble coffee product comprising compressed particles of a fines fraction that is close in size to the 4 mesh upper size limit required by claim 1. Final Action 3. The Examiner calculates the approximate size by noting that Kraut teaches the production of pellets of size%" or about mesh 2.5, "which would allow for moistened particles of a slightly smaller size or close to mesh 3 (0.279")." Id. The Examiner then finds that the moistened particles would be expected to shrink on drying, so that the resulting dry particles would be "close to the claimed size of 4 mesh." Id. The Examiner determines that reaching the size range required by claim 1 is merely a matter of scaling, and "the exact particle size would be a result effective variable and subject to routine experimentation to the ordinarily skilled artisan" because Kraut teaches that 3 Appeal2014-005316 Application 12/692,314 particle size represents a tradeoff between extraction rate and brewing problems such as channeling. Id. at 4. Appellants argue that Kraut discloses compression and particle size in two distinct embodiments, and that it is improper for the Examiner to show obviousness by combining features of the two embodiments. See Appeal Br. 9-10 (citing Ex parte Cucerzan, Appeal No. 2009-008190, 2011 WL 1661470 (BPAI 2011)). Appellants characterize the first embodiment as "to compress the fines as they are with no additional ingredients and no wetting," and the second embodiment as "to add a binder agent (e.g., dried coffee) to the fines, wet the mixture, and extrude it." Id. at 9. According to Appellants, Kraut does not state that the particles formed by compression alone have any particular size. Reply Br. 1. Appellants argue that "Kraut does not teach a coffee product that is both compressed and sized per the claims' stated limitations." Appeal Br. 10. We are not persuaded that the Examiner erred in combining Kraut's teachings about compression with its teachings about particle size. Although it may be inappropriate to pick and choose elements from different prior art embodiments in the context of a rejection under 35 U.S.C. Â§ 102, the same rule does not apply in the context of a 35 U.S.C. Â§ 103 rejection. See, e.g., In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Therefore, we look to what Kraut as a whole teaches to one of ordinary skill in the art at the time of filing. "A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective." In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). As indicated above, Kraut recognizes that extraction rate and brewing problems are affected by 4 Appeal2014-005316 Application 12/692,314 particle size. Accordingly, substantial evidence supports the Examiner's finding that particle size is a result-effective variable. Moreover, it is well settled that it would have been obvious for a person of ordinary skill in the art to develop workable or even optimum ranges for result-effective parameters. In re Woodruff, 919 F.2d 1575, 1577 (Fed. Cir. 1990) (where the difference between the claimed invention and the prior art is some range, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range); see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Kraut teaches that in order to prevent pressure drop problems during percolation associated with the presence of "fines" in a coffee grind, the fines fraction may be formed "into pellets having a size substantially larger than the course particles of the grind." Kraut 1:70-72. Kraut teaches two ways of producing such particles from the fines fraction: ( 1) the fines may be "pelletized under pressure by themselves," or (2) "the fines can have blended therewith a small quantity of dried coffee extract which when moistened provides a bond for the fines." Id. 2:20-23. In reference to using moistened particles with a binder, Kraut teaches that the moistened mixture "is readily extruded through % " die holes or thereabout" and then "cut into pellet lengths in the order of%" to Y2"," after which the pellets are cooled and dried. Id. at 2:62-65. Kraut's teachings about size are not solely applicable to the extrusion method. Kraut states that "[t]his fines fraction can be pelletized by means of a variety of apparatus such as an extruding die, a tableting press and the like." Id. at 2:53-55. Pressing and extruding through a die are thus presented as alternative ways of "forming the 'fines' fraction of a coffee 5 Appeal2014-005316 Application 12/692,314 grind into pellets having a size substantially larger than the course particles of the grind." Id. at 1 :70-72. The typical coarse particles in a grind, according to Kraut, are retained by a #24 mesh screen. See id. at 2:47-51. Thus, whether the particles are produced by pressing or extruding, Kraut teaches that the particle size should be "substantially larger than" #24 mesh. A person of ordinary skill in the art would have read Kraut as teaching that forming particles of the exemplified size, regardless of means, would help reduce pressure drop problems. For the above reasons, and those expressed by the Examiner, we affirm the Examiner's decision to reject claims 1-7 and 15-17. DECISION The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l .136(a)(l )(iv). AFFIRMED 6