Ex Parte Norton et al

Patent Trials and Appeals Board

Apr 30, 2019

13612528 - (D) (P.T.A.B. Apr. 30, 2019)

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.").
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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
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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
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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.
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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).
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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
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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
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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
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