Ex Parte Zeller et al

Patent Trials and Appeals Board

Jan 30, 2019

14008471 - (D) (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/008,471 04/24/2014
109813 7590 01/31/2019
Fitch, Even, Tabin & Flannery, LLP
120 South LaSalle Street
Suite 2100
Chicago, IL 60603-3406
FIRST NAMED INVENTOR
Bary L. Zeller
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.
29610-102026-US 5854
EXAMINER
NGUYEN, THANH H
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
01/31/2019 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 BARY L. ZELLER, RICHARD P. APISCOPA,
GREG A. WISEMAN, SARITA V. PORBANDARWALA, and
THOMAS A. GIBSON
Appeal 2018-002654
Application 14/008,471
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and BRIAN
D. 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 1-25, 36-40, and 42. We have jurisdiction. 35
U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Koninklijke Douwe
Egberts B.V. which is co-owned by Mondelez International and Acom
Holdings. Appeal Br. 3. Appellants state that Acom Holdings is a
subsidiary of JAB Holdings Company. Id.
Appeal2018-002654
Application 14/008,471
STATEMENT OF THE CASE2
Appellants describe the invention as relating to an improved filter for
use in a closed or open brewing system (for example, for brewing coffee).
Spec. ,r,r 2-8. Claim 1, reproduced below with emphases added to certain
key recitations, is illustrative of the claimed subject matter:
1. A beverage cartridge for use in a beverage maker,
compnsmg:
a chamber, said chamber having at least one substantially
enclosed portion, said at least one substantially enclosed portion
having a base with a perimeter and a wall connected to said
perimeter of said base, said chamber receiving and housing
undegassed coffee therein;
a beverage filtering device, having a filter carrier device
operatively connected to said chamber, said filter carrier being
positioned within said chamber;
a filter element made of a liquid-permeable material and
having a first surface and a second surface positioned oppositely
to said first surface,
said second surface being at least partially attached to said
filter carrier, said filter element having a plurality of
microperforations formed in the filter element by at least one
of piercing and scoring, said plurality of microperforations
extending from said first surface to said second surface of said
filter element; and
a sealing element connected to the wall of said chamber
whereby said beverage cartridge is sealed and thereby
enclosed;
whereby said beverage filtering device increases the
permeability of fluid flowing through said beverage cartridge
during brewing.
2 In this Decision, we refer to the Final Office Action dated March 15, 2017
("Final Act."), the Appeal Brief filed August 15, 2017 ("Appeal Br."), the
Examiner's Answer dated November 15, 2017 ("Ans."), and the Reply Brief
filed January 16, 2018 ("Reply Br.").
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Application 14/008,471
Appeal Br. 19 (Claims App'x.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Bentley et al. us 4,853,234 Aug. 1, 1989
("Bentley")
Hargraves et al. us 4,966,780 Oct. 30, 1990
("Hargraves")
Simon et al. us 5,871,644 Feb. 16, 1999
("Simon")
Fond us 5,897,899 Apr. 27, 1999
Halliday et al. US 7,287,461 B2 Oct. 30, 2007
("Halliday")
Y oakim et al. WO 2008/148650 Al Dec. 11, 2008
("Y oakim")
Bongers et al. US 2010/0068361 Al Mar. 18, 2010
("Bongers")
REJECTIONS
The following rejections are before us on appeal:
Rejection 1. Claims 1-14, 16-22, 24, 25, 36, and 38--40 under 35
U.S.C. § 103 as unpatentable over Halliday in view ofYoakim, Bentley, and
Hargraves. Ans. 3.
Rejection 2. Claims 15, 23, and 37 under 35 U.S.C. § 103 as
unpatentable over Halliday in view of Y oakim, Bentley, and Hargraves in
further view of Fond. Id. at 9.
Rejection 3. Claim 42 under 35 U.S.C. § 103 as unpatentable over
Halliday in view of Yoakim, Bentley, and Hargraves in further view of
Bongers and Simon. Id. at 9.
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Application 14/008,471
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
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 individual rejection or
claim. See, e.g., Appeal Br. 17. We therefore limit our discussion to the
Examiner's first rejection and claim 1. All remaining claims on appeal stand
or fall with that claim. 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
The Examiner rejects claim 1 under 35 U.S.C. § 103 as unpatentable
over Halliday in view of Y oakim, Bentley, and Hargraves. Ans. 3. The
Examiner finds that Halliday generally teaches the recited beverage filtering
device with filter element. Ans. 3--4 ( citing Halliday). The Examiner finds
that Halliday teaches "uses a filter 4 that has perforations to allow liquid to
pass, which could be construed as 'microperforations,' [Halliday] is silent to
specifically reciting 'microperforations' positioned [ as recited in claim 1]."
Ans. 4. The Examiner finds that Yoakim teaches a capsule with micro scale
openings and teaches that control of the number and size of the openings
improves the interaction between the food substance and water. Id. (citing
Y oakim). The Examiner determines that because "both Halliday and
Y oakim are drawn to beverage capsules with filtering means, it would have
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Application 14/008,471
been obvious to one having ordinary skill in the art to provide micro
perforations, as taught by Y oakim, on the filter element to provide an
improved interaction between the food substance and water." Id.
The Examiner also finds that Halliday is "silent to specifically reciting
'undegassed' coffee therein. Id. at 5. The Examiner finds that Bentley
teaches "fresh roasted coffee grounds in sealed containers" and Hargraves
teaches packaging fresh roasted ground coffee as quickly as possible without
undergoing substantial off gassing. Id. at 5 (citing Bentley and Hargraves).
The Examiner determines "it would have been obvious to one having
ordinary skill in the art to seal fresh coffee grounds in a cartridge after it has
been roasted and grounded in order to retain the desirable volatile aroma and
reduce oxidation." Id. at 5.
We first address claim construction. Appellants argue that claim 1 's
recitation of microperforations "formed in the filter element by at least one
of piercing and scoring" is entitled to patentable weight. Appeal Br. 15-16.
The recitation is written in a product-by-process format: the structure of the
microperforations is defined "at least in part in terms of the method or
process by which [they are] made." Smithkline Beecham Corp. v. Apotex
Corp., 439 F.3d 1312, 1315 (Fed. Cir. 2006) (internal quotes and citation
omitted). Appellants do not dispute that these are product-by-process
recitations.
Accordingly, the recitation limits the scope of the claim, but
"determination of patentability is based on the product itself," not on "its
method of production." In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
"If the product in a product-by-process claim is the same as or obvious from
a product of the prior art, the claim is unpatentable even though the prior
product was made by a different process." Id.
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For product-by-process claims, the Examiner "bears a lesser burden of
proof in making out a case of prima facie obviousness for product-by-
process claims because of their peculiar nature than would be the case when
a product is claimed in the more conventional fashion." In re Fessmann,
489 F.2d 742, 744 (CCPA 1974). Thus, "when the prior art discloses a
product which reasonably appears to be either identical with or only slightly
different than a product claimed in a product-by-process claim, a rejection
based alternatively on either section 102 or section 103 of the statute is
eminently fair and acceptable." Id. (quote and citation omitted). Once the
examiner establishes a prima facie case of anticipation or obviousness, the
burden "to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product" shifts to the Appellants.
Thorpe, 777 F.2d at 698 (citation omitted).
Here, Appellants attack the Examiner's prima facie obviousness
position by arguing that the proposed combination of Halliday and Y oakim
would not result in claim 1 's microperforations. Appeal Br. 12-13, 15-16;
Reply Br. 5---6. In particular, the Appellants argue that Y oakim describes
openings between fibers of a material rather than microperforations. Id.
The Examiner, however, finds that an embodiment of Y oakim teaches micro
scale slots or holes rather than only teaching openings between fibers. Ans.
10-11. The preponderance of the evidence supports the Examiner's
position. See, e.g., Yoakim 3: 1-8 (teaching a "gastight material" that has
outlet openings once in opened for use in the beverage production device),
4:1-16 (describing openings whose size (on the micro scale) can be adjusted
to improve interaction between food substance and water), 4:33-5: 1
( explaining that use of a meshed material is merely one "possible mode" of
Yoakim).
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Appellants also argue that Halliday teaches away from perforations
because it seeks to avoid a "short-circuit" that prevents all water from
passing through the beverage material. Appeal Br. 13. The Examiner,
however, finds that the Halliday short-circuit discussion refers to preventing
liquid from flowing around the filter entirely. Ans. 11. The Examiner's
position is supported by the preponderance of the evidence. Halliday 10:3-9
(teaching ensuring no "short-circuits" through the spokes and rim to ensure
passage of the water through the filter). Appellants have not persuasively
explained how Halliday teaches that perforations in its filter should be
avoided; just to the contrary, Halliday expressly teaches that liquid must be
able to pass through its filter. Id.
With respect to claim 1 's product-by-process language
("microperforations formed in the filter element by at least one of piercing
and scoring" ( emphasis added)), Appellants argue that openings 18 of
Y oakim between fibers would be visibly distinguishable from
microperforations formed by piercing or scoring. Appeal Br. 16; Reply Br.
8-10. Appellants do not, however, present an argument that the micro scale
slots / holes of Y oakim are structurally distinguishable from
microperforations formed by piercing or scoring, and Appellants present no
evidence as to this point. The Examiner correctly determines that
Appellants have not adequately established a structural difference between
the claimed product-by-process feature and the openings of Y oakim. Ans.
13-14.
Appellants also argue that the combined references would not include
undegassed coffee because (1) Bentley merely teaches "fresh roast and
ground coffee" which is not synonymous with undegassed coffee and
because (2) Hargarves teaches problems associated with sealing undegassed
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coffee in a container. Appeal Br. 12-15. Claim 1, however, does not
positively recite "undegassed coffee" as part of the recited "beverage
cartridge for use in a beverage maker." Appeal Br. 19 ( Claims App 'x.)
Rather, claim 1 recites a "chamber receiving and housing undegassed coffee
therein." Id. This recitation structurally limits claim 1 only by requiring a
chamber capable of receiving and housing an undegassed coffee. See In re
Schreiber, 128 F.3d 1473, 1476-8 (Fed. Cir. 1997) (affirming Board's
conclusion that claims directed at popcorn dispenser were anticipated in
view of dispenser designed to dispense liquids such as oil). Because
Appellants do not persuasively argue that the combined art does not teach
such a chamber, Appellants do not establish reversible error.
We further note that, in the alternative, even if claim 1 did positively
require undegassed coffee as part of the recited apparatus, Appellants still
have not established reversible error in the Examiner's rejection. In
particular, Hargraves teaches the benefit ofundegassed coffee. Final Act. 4
(citing Hargraves 4:57---64; 5:53-57). Bentley's teaching of packaging
"fresh roast and ground coffee" further suggests that the coffee is not
completely undegassed. Id. (citing Bentley 1:23-28). Fresh coffee has a
desirable aroma (Hargraves Abstract), and the aroma comes from off
gassing. If Bentley's fresh roast and ground coffee was completely
degassed, it would have no desirable aroma and thereby would not be fresh.
We agree with the Examiner that "fresh" in this context is temporal (Ans.
12); if substantially time lapses after roasting and grinding (and time would
result in degassing), the coffee is no longer fresh.
Although Hargraves does indicate that the prior art experienced
difficulties with regard to sealing gassed coffee, Hargraves also indicates
that those difficulties could be overcome. Ans. 13 (citing Halliday 17:3-16).
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Appellants emphasize that Hargraves teaches a solution specific to the
Hargraves container regarding eliminating an undesirable hissing noise
when gas is released (Reply Br. 8), but the record does not indicate that such
a noise would exist in the context of a Halliday/Yoakim beverage maker.
Moreover, even if a person of skill thought noise was a potential downside,
this noise would not necessarily outweigh Hargrave' s expressed benefits of
undegassed coffee. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1165 (Fed. Cir. 2006) ("a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine").
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 1-25, 36-40 and 42.
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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