Ex Parte Norton et alDownload PDFPatent Trials and Appeals BoardApr 30, 201913612528 - (D) (P.T.A.B. Apr. 30, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/612,528 09/12/2012 109813 7590 05/01/2019 Fitch, Even, Tabin & Flannery, LLP 120 South LaSalle Street Suite 2100 Chicago, IL 60603-3406 FIRST NAMED INVENTOR Mark Richard Thomas Norton 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. 9610-102531-US 1097 EXAMINER LACHICA, ERICSON M ART UNIT PAPER NUMBER 1792 MAIL DATE DELIVERY MODE 05/01/2019 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 MARK RICHARD THOMAS NORTON, NICK ANDREW HANSEN, and GEOFFREY YORK Appeal2018-005637 Application 13/612,528 Technology Center 1700 Before N. WHITNEY WILSON, JEFFREY R. SNAY, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 2, and 4--16. We have jurisdiction. 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Kraft Foods R&D, Inc. Appeal Br. 3. Appeal2018-005637 Application 13/612,528 STATEMENT OF THE CASE2 Appellants describe the invention as relating to "cartridges, systems[,] and methods for preparation of beverages." Spec. ,r 1. In particular, the invention relates to cartridges that can be pierced to brew roasted ground coffee. Id. ,r 2. The invention makes use of a laterally expandable cup- shaped body in order to allow faster flow and reduce brew times. Id. ,r 5. Claim 1, reproduced below with emphases added to certain key recitations, is the only independent claim on appeal and is illustrative of the claimed subject matter: 1. A cartridge, containing one or more beverage ingredients, and comprising: a cup-shaped body having a closed bottom base, an upper open top, and a vertical peripheral sidewall extending vertically between the closed bottom base and the upper open top; a lid attached to the cup-shaped body to close the open top to define a container volume, the lid being pierceable to accommodate an inflow of an aqueous medium into the container volume; a cup-shaped filter located within the container volume to divide the container volume into an ingredient chamber volume containing the one or more beverage ingredients and a filtrate volume, the filter having an upper rim, a lower base, and a sidewall extending downwardly from the upper rim to the lower base; the upper rim of the filter being secured to the cup- shaped body at or near the upper open top of the cup- shaped body; 2 In this Decision, we refer to the Final Office Action dated Aug. 8, 2017 ("Final Act."), the Appeal Brief filed Jan. 8, 2018 ("Appeal Br."), the Examiner's Answer dated March 9, 2018 ("Ans."), and the Reply Brief filed May 9, 2018 ("Reply Br."). 2 Appeal2018-005637 Application 13/612,528 the closed bottom base being pierceable to accommodate an outflow from the filtrate volume of a beverage formed from the aqueous medium and the one or more beverage ingredients; the vertical peripheral side wall comprising a plurality of vertical flutes in an outer surface of the side wall that define a plurality of vertical filtrate channels in an inner surface of the side wall configured to direct beverage flow downwards towards the closed bottom base of the cup-shaped body, the vertical peripheral side wall having a uniform thickness; upper and lower annular portions of the vertical peripheral side wall that are above and below the plurality of vertical flutes, the upper and lower annular portions not having flutes therein; wherein the cup-shaped body is configured to be laterally expandable in use when aqueous medium at a temperature of at least 85°C and a pressure of at least 20 KPa is introduced into the container volume; and wherein the cartridge has an initial configuration wherein the vertical peripheral side wall has a generally frustoconical shape and a laterally expanded configuration wherein the vertical peripheral side wall has a generally barrel shape. Appeal Br. 22-23 (Claims App'x). REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Sweeney et al. US 6,645,537 B2 Nov. 11, 2003 (''Sweeney") Karanikos et al. US 2005/0051478 Al Mar. 10, 2005 ("Karanikos") Beaulieu et al. US 2010/0303964 Al Dec. 2, 2010 ("Beaulieu") Mann US 2011/0064852 Al Mar. 17, 2011 3 Appeal2018-005637 Application 13/612,528 Beer Kihnke US 2011/0305801 Al US 2012/0201932 Al REJECTIONS The following rejections are before us on appeal: Dec. 15, 2011 Aug. 9, 2012 Rejection 1. Claims 1, 2, and 4--9 under 35 U.S.C. § 103 as unpatentable over Sweeney. Ans. 3. Rejection 2. Claims 10-12 under 35 U.S.C. § 103 as unpatentable over Sweeney in view of Kihnke. Id. at 8. Rejection 3. Claims 10-12 under 35 U.S.C. § 103 as unpatentable over Sweeney in view of Beer. Id. at 10. Rejection 4. Claims 10-12 and 16 under 35 U.S.C. § 103 as unpatentable over Sweeney in view of Karanikos. Id. at 11. Rejection 5. Claims 1, 2, 4--12, and 16 under 35 U.S.C. § 103 as unpatentable over Karanikos in view of Sweeney. Id. at 13. Rejection 6. Claims 13-15 under 35 U.S.C. § 103 as unpatentable over Karanikos in view of Sweeney and Beaulieu. Id. at 22. Rejection 7. Claim 15 under 35 U.S.C. § 103 as unpatentable over Karanikos in view of Sweeney, Beaulieu, and Mann. Id. at 25. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections."). After considering the evidence 4 Appeal2018-005637 Application 13/612,528 presented in this Appeal and each of Appellants' arguments, we are not persuaded that Appellants identify reversible error. Thus, we affirm the Examiner's rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. The Appellants do not separately argue any dependent claims. We therefore limit our discussion to claim 1 and rejections 1 and 5. Consistent with the provisions of 37 C.F.R. § 4I.37(c)(l)(iv) (2013), all other claims stand or fall with claim 1. Rejection 1. The Examiner rejects claim 1 under 35 U.S.C. § 103 as unpatentable over Sweeney. Ans. 4. We focus on the Examiner's findings and determinations relevant to Appellants' arguments. The Examiner finds that Sweeney teaches a cup-shaped body ( cup-shaped container 12) having a vertical peripheral sidewall extending vertically between the closed bottom (bottom 18) and the upper open top (upper opening 24). Ans. 4; see also Sweeney Figs. 2, 3, 9. The Examiner finds that the vertical peripheral sidewall comprises a plurality of vertical flutes. Ans. 4--5. The Examiner finds that Sweeney Figure 9 teaches a sidewall having upper and lower annular portions not having flutes. Id. at 6. The Examiner annotates Sweeney Figure 9 to illustrate the Examiner's position, and we reproduce that annotated figure below. 5 Appeal2018-005637 Application 13/612,528 vertlcal 111.ltes lower anl'\Ular portion not2 l 8 g havft19 flutes 222. 2.20 FIG. 9 Sweeney Figure 9 is a bottom perspective view of a disposable filter cartridge in accordance with an embodiment of the Sweeney invention. The Examiner's annotations point to an "upper annular portion not having flutes," "vertical flutes," and a "lower annular portion not having flutes." Ans. 6. Appellants first argue that Sweeney lacks claim 1 's recited "upper and lower annular portions not having flutes therein." Appeal Br. 11-13. This argument is unpersuasive. As explained by the Examiner and illustrated above, Figure 9 of Sweeney discloses such a configuration. Ans. 6. Appellants argue that Sweeney's outer wall of boss 218a is not part of the side wall 220. Appeal Br. 12; see also Reply Br. 5. Appellants' different characterization of Sweeney's container, however, does not show reversible error in the Examiner's interpretation that the sidewall of the Sweeney cartridge extends from the closed bottom base3 to the upper open top as 3 Because the Sweeney device is made from "generic polymeric material" (Ans. 29), its base is capable of being pierced (i.e., "pierceable to accommodate ... " as claim 1 recites). 6 Appeal2018-005637 Application 13/612,528 recited in claim 1. Thus, Appellants do not show reversible error in the Examiner's finding that Sweeney's sidewall includes the boss. While it is true that the Sweeney sidewall steps inward (i.e., turns from vertical to horizontal before turning vertical again) at a point where the sidewall is no longer fluted, claim 1 does not recite that the entirety of the wall be continuously vertical. Moreover, Appellants' disclosed embodiments also have what the Specification refers to as a vertical sidewall that steps inwardly at the same point. See, e.g., Spec. Figs. 1, 2, 11; see also Ans. 27. Thus, the broadest reasonable interpretation of claim 1 includes the configuration shown by Sweeney. We are not persuaded that claim 1 's recitations of "cup-shaped," "vertical peripheral sidewall," "extending vertically," or "generally frustoconical" should be construed so narrowly that the inward step of Sweeney is excluded from the claim's scope. Appellants also argue against the Examiner's alternative position that it would have been obvious to modify Sweeney's cartridge to have portions of the sidewall without vertical flutes. Appeal Br. 14. We do not need to address this argument because, as explained above, Sweeney explicitly teaches portions of the sidewall without vertical flutes as recited by claim 1. Appellants also argue that the Examiner has not adequately established the obviousness of claim 1 's recitation "wherein the cartridge has an initial configuration wherein the vertical peripheral side wall has a generally frustoconical shape and a laterally expanded configuration wherein the vertical peripheral side wall has a generally barrel shape." The Examiner, however, finds that the cartridge of Sweeney is capable of expanding into a barrel shape when subjected to hot water. Ans. 7-8. The Examiner finds that Sweeney teaches that its capsule is made of the same 7 Appeal2018-005637 Application 13/612,528 generic polymer materials as those disclosed for Appellants' cartridge. Id. at 28-29. The Examiner therefore has established that the claimed and prior art product are identical or substantially identical, and the burden shifts to Appellants "to prove that the prior art products do not necessarily or inherently possess the characteristics of [the] claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977); see also In re Schreiber, 128 F.3d 1473, 14 7 8-79 (Fed. Cir. 1997) (holding that prior art anticipated claim with functional claim language where capable of performing recited function). Here, Appellants do not provide evidence persuasively demonstrating that the Sweeney cartridge would not meet this recitation. Accordingly, Appellants' argument in this regard does not establish reversible error. Because Appellants' arguments do not establish reversible error, we sustain the Examiner's rejections of claims 1, 2, 4--12, and 16 where Sweeney is used as a primary reference (Rejections 1--4 referenced above). Rejection 5. The Examiner rejects claim 1 as obvious over Karanikos in view of Sweeney. Ans. 13. The Examiner finds that Karanikos teaches a cartridge similar to that recited by claim 1 but finds that Karanikos does not teach flutes and does not teach sidewall portions above and below flutes that do not have flutes. Id. at 15. The Examiner relies on Sweeney for teachings regarding fluted and unfluted portions of the sidewall (as we discuss above). Id. at 15-19. Appellants again dispute that Sweeney teaches claim 1 's configuration of a sidewall having areas with and without flutes. Appeal Br. 16-17. This argument is unpersuasive for the reasons explained above. Appellants also argue that the Examiner has not adequately established that the Karanikos and Sweeney combination would meet claim 8 Appeal2018-005637 Application 13/612,528 1 's recitation "wherein the cartridge has an initial configuration wherein the vertical peripheral side wall has a generally frustoconical shape and a laterally expanded configuration wherein the vertical peripheral side wall has a generally barrel shape." Appeal Br. 19-20. The Examiner, however, explains that the Karanikos and Sweeney combination would have the same configuration and materials and Appellants' device and therefore would meet the same functional language. Ans. 32-33. Appellants' do not persuasively dispute this position, and Appellants' arguments fail to establish error for the same reasons explained above with regard to the Examiner's first rejection. Because Appellants' arguments do not establish reversible error, we sustain the Examiner's rejections of claims 1, 2, and 4--16 where Karanikos is used as a primary reference (rejections 5-7 referenced above). DECISION For the above reasons, we affirm the Examiner's rejections of claims 1, 2, and 4--16. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 9 Copy with citationCopy as parenthetical citation