Ex Parte TAN

Patent Trial and Appeal Board

Feb 15, 2019

15021417 (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/021,417 03/11/2016 JINGWEITAN
24737 7590 02/20/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2013P00177WOUS01 7829
EXAMINER
WILLIAMS, LELA
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
02/20/2019 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JING WEI TAN
Appeal2019-001304
Application 15/021,417
Technology Center 1700
Before JAMES C. HOUSEL, LILAN REN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-19. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 Our decision refers to the Specification ("Spec.") filed March 11, 2016, the
Examiner's Final Office Action ("Final") dated December 11, 2017,
Appellants' Appeal Brief ("Appeal Br.") filed May 18, 2018, the Examiner's
Answer ("Ans.") dated September 28, 2018, and Appellants' Reply Brief
("Reply Br.") filed November 26, 2018.
2 Appellant is the Applicant, Koninklijke Philips N.V., which is identified in
the Appeal Brief as the real party in interest (Appeal Br. 3).
Appeal2019-001304
Application 15/021,417
STATEMENT OF THE CASE
The invention relates to a method and apparatus for controlling a
roasting process of coffee beans (Spec. 1 :5). Appellant discloses that,
although it was known that the surface color of coffee beans is an important
indicator to determine the roasting level of the coffee beans, surface color
alone is insufficient to determine the roasting degree because coffee beans
with the same surface color may have different core or inner part color due
to different bean type or roasting profile (id. at 1 :26-31 ). Therefore,
Appellant discloses a method, apparatus, and coffee machine for controlling
a roasting process of coffee beans, wherein the method comprises sampling
first and second batches of coffee beans during roasting, detecting the
surface color of the first batch of coffee beans, grinding the second batch of
coffee beans and detecting the color of the ground beans, and controlling the
roasting process at least partially based on the detected color of the surface
and the inner part of the sampled coffee beans (id. at 2:7-13). According to
Appellant, doing so permits automatic adjustment of the roasting profile
during the roasting process with high accuracy and limited user effort (id. at
2: 14--16).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. A method for controlling a roasting process of coffee beans,
comprising steps of:
- sampling a first batch of coffee beans and a second
batch of coffee beans from said coffee beans during roasting;
- detecting a surface colour of the first batch of coffee
beans;
- grinding the second batch of coffee beans and detecting
a powder colour of the second batch of coffee beans after
grinding; and
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Application 15/021,417
- controlling the roasting process at least partially based
on the detected surface colour of the first batch of coffee beans
and the detected powder colour of the second batch of coffee
beans.
Independent claim 10 recites an apparatus for controlling a roasting
process of coffee beans comprising a sampling unit, a grinding unit, a
detection unit, and a control unit. 3
REJECTIONS
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection under 35 U.S.C. § 103:
1. Claims 1-10 and 14 as unpatentable over Mergili4 in view of
Scarsella, 5 and further in view of Wasserman; 6
3 We note claim 10 recites various "units," each preceded by a functionally
descriptive term, e.g., sampling, grinding, detection, and control, and
succeeded by a functional description set forth in a "configured to" clause.
Neither the Examiner nor Appellant indicate whether the question of 3 5
U.S.C. § 112(±) has been addressed, nor are we able to find any discussion of
this question in the record. Although Appellant are entitled to a presumption
that § 112(±) is not implicated where the term "means" is not used, that
presumption can be overcome where it is shown that the term used, in this
case "unit," is a nonce word used in the same fashion as "means." In
accordance with MPEP 2181 (I), upon further prosecution, the Examiner may
wish to evaluate whether there is sufficient corresponding structure for each
of the "units" recited in claim 10.
4 Mergili et al., DE 19645306, published November 13, 1997. The
Examiner relies, without objection, on an English machine translation dated
January 5, 2017 ("Mergili").
5 Scarsella et al., US 4,072,765, issued February 7, 1978 ("Scarsella").
6 Wasserman et al., US 6,207,211 Bl, issued March 27, 2001
("Wasserman").
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Application 15/021,417
2. Claims 11-13 as unpatentable over Mergili in view of
Scarsella, and further in view of Wasserman and West; 7 and
3. Claims 15-19 as unpatentable over Mergili in view of
Scarsella, and further in view of Wasserman and Buschmann. 8
ANALYSIS
The Examiner finds that Mergili discloses a method for controlling a
roasting process of coffee beans based on the surface color of the coffee
beans during the roasting process (Final 2). The Examiner finds Mergili
discloses that the degree of roasting may be controlled continuously on the
basis of the surface color of the roasting coffee beans without removing the
beans or interrupting the roasting process (id.). In addition, the Examiner
finds Mergili fails to disclose grinding coffee beans and obtaining the color
of the ground beans (id. at 3).
Nonetheless, the Examiner finds Scarsella discloses a method of
roasting coffee, wherein the roasting is expressed by the color from fine
grinding of air-cooled roasting coffee (Final 3). The Examiner concludes
that it would have been obvious "to also consider the color of coffee grinds
during roasting and to control the roasting process based on said color, as
taught by Scarsella, in the invention of Mergili, to achieve a coffee product
with a high amount of coffee aromas and flavors" (id.).
With regard to sampling of the coffee beans, the Examiner finds
Wasserman teaches a coffee roasting method wherein samples of beans are
taken from processing for analysis (Final 3). The Examiner concludes that it
would have been obvious to sample a portion of the coffee beans in
7 West, US 5,526,437, issued June 11, 1996.
8 Buschmann, US 2014/0106038 Al, published April 17, 2014.
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Application 15/021,417
Mergili' s process, as modified by Scarsella, during processing to ensure the
beans were roasting within desired parameters (id.)
Appellant argues that Mergili, Scarsella, and Wasserman, individually
or in combination, fail to teach or suggest any control of the roasting process
based at least in part on a detected powder or grind color of the coffee beans
during the roasting process (Appeal Br. 14). Appellant contends that Mergili
teaches away from sampling and grinding of coffee beans during the
roasting process (id. at 15-16). In particular, Appellant asserts that Mergili
teaches detecting the surface color of coffee beans during the roasting
process without sampling and grinding (id. at 15). Appellant also contends
that Scarsella grinds and detects the color of the ground coffee beans only
after the roasting process is complete (id. at 16). As such, Appellant
contends that Scarsella fails to teach or suggest sampling and grinding of
coffee beans during the roasting process for controlling the process (id.).
Appellant also contends that Wasserman fails to teach sampling of coffee
beans during the roasting process for controlling the process (id.).
Appellant's arguments are persuasive of reversible error. There is no
dispute that Mergili fails to teach sampling and grinding of coffee beans
during the roasting process, detecting the color of the ground beans, and
controlling the roasting process based, at least in part, on the detected
ground bean color. Mergili teaches an improved method for controlling the
coffee roasting process that does not require frequent sample taking or
interruption of the process (Mergili 2, 3rd ,r). However, Mergili discloses
that sample taking during the roasting process was known for controlling the
process (id. at 2, 2d i-f). The disclosure of an alternative, albeit inferior,
solution does not amount to a teaching away. DePuy Spine, Inc. v.
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Application 15/021,417
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)
(citing In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
However, the problem with the combination of applied prior art here
is there is no teaching to sample and grind coffee beans during the roasting
process, detect the surface color of the beans as well as their grind color, and
control the roasting process based, at least in part, on the detected colors. As
Appellant contends, Scarsella and Wasserman fail to teach these features
(Reply Br. 10-11 ). Scarsella merely determines the color of the ground
roasted coffee at the end of the roasting process (Scarsella 2:47-68, 4:3-9).
Scarsella does not suggest that the color of ground coffee beans sampled
during the roasting process may be used to control the process. Likewise,
Wasserman merely samples and grinds coffee beans at a specific
predetermined transition point in the roasting process and at the end of the
roasting process to determine that the roasted beans have roasted to a desired
roast color in each of the two steps of the roasting process (Wasserman
1:55---67, 2:50---65). The Examiner does not find that Wasserman teaches
controlling the roasting process based, at least in part, on the detected color
of the sampled and ground coffee beans.
Because there is no teaching or suggestion in the applied prior art to
sample and grind coffee beans during the roasting process, detect the color
of the ground coffee, and control the roasting process based, at least in part,
on the detected color of both the surface of the sampled coffee beans and the
ground coffee beans, we cannot say that the Examiner has carried the burden
of establishing a prima facie case of obviousness of the claimed invention.
KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007); In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). Only impermissible hindsight serves as a
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guide to arrive at the claimed invention. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (requiring "some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness."); In re
Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) ("hindsight" is inferred when
the specific understanding or principal within the knowledge of one of
ordinary skill in the art leading to the modification of the prior art in order to
arrive at Appellant's claimed invention has not been explained). "[W]e
cannot allow hindsight bias to be the thread that stitches together prior art
patches into something that is the claimed invention." Metal craft of
Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017).
We note that the obviousness rejection of claim 10 relies on the same
prior art combination as applied against claim 1 and, likewise, suffers from
the same deficiencies as discussed above. In particular, we find no teaching
or suggestion for providing a sampling unit providing coffee beans to
grinding and detection units, and a control unit configured to control the
roasting process based, at least in part, on the detected color of the surface of
sampled coffee beans and the detected color ground sampled coffee beans.
Moreover, we note that the Examiner does not rely on either West or
Buschmann to remedy the deficiencies in the rejection of claim 10.
Accordingly, we will not sustain the Examiner's decision to reject
claims 1 and 10, and claims 2-9 and 11-19 which depend, respectively,
therefrom.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
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claims 1-19 under 35 U.S.C. § 103 as unpatentable over the combined
teachings of Mergili, Scarsella, and Wasserman, alone or further combined
with West or Buschmann, is reversed.
REVERSED
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