Jay Otto et al.

Patent Trials and Appeals Board

May 26, 2021

2020003806 (P.T.A.B. May. 26, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/480,788 05/25/2012 Jay D. Otto J-00014-002 4905
25179 7590 05/26/2021
A PATENT LAWYER, LLC
R WILLIAM GRAHAM
8586 Eagle Ridge
Springboro, OH 45066
EXAMINER
MCCLAIN-COLEMAN, TYNESHA L.
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
05/26/2021 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):
billg@apat1.com
info@apat1.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAY D. OTTO and R. WILLIAM GRAHAM
____________

Appeal 2020-003806
Application 13/480,788
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and
SHELDON M. McGEE, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) the final rejection of
claims 25–28. We have jurisdiction over the appeal. 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant’s invention is directed to filter cups adapted for use in
single cup coffee makers (Spec. 1). The Specification describes that a
typical single cup coffee maker brews ground coffee in a sealed plastic pod

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Javajig, LLC as the real party in interest (Appeal Br. 1).
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with high pressure and heat from an intense water pressure stream (id. at 1,
2). The Specification describes that the conventional sealed plastic pod
contains a polymer filter adhered to the pod’s plastic wall (id. at 2). Because
the plastic pod can only be used once, the pods are said to pose significant
environmental issues and added costs (id.). According to the Specification,
the described single-use paper filter cup and reusable brew basket
overcomes the issues and expenses associated with brewing single cup
coffee (id. at 3).
Figure 10 of the Specification, as reproduced below, illustrates a cross
section of a reusable brew basket, including a filter disposed in press-fit
relation within the insert and retainer:

The Specification’s Figure 10 illustrates a reusable brew basket
including, inter alia, generally cup-shaped filter 30 disposed in press-fit
relation between retainer 12 and insert 20 (id. at 9). Filter 30 includes inside
surface 33, which receives a beverage forming ingredient such as coffee
grounds (id.). Retainer 12 includes: (i) an upper end having an open top,
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which receives a removable top and (ii) a bottom end, which includes a
centrally located opening large enough to permit insertion of a finger to
discard filter 30 (id. at 8).
Claim 25 is representative of the subject matter on appeal (emphasis
and pagination added):
25. A method of brewing a single cup of coffee comprises
the steps of:
providing an electric coffee brewing machine;
providing a reusable brew basket having a filter retainer
having an upper end having an opening therein and a bottom
including an opening therein to receive one’s finger
therethrough, an insert having an upper collar of a diameter
less than the diameter than of the upper end of said filter
retainer to fit therein and defining an open area between the
upper collar to receive a beverage forming ingredient
therethrough, said insert having a peripheral lip of a diameter
greater than said diameter of the upper end of the filter retainer
and said insert further having a lower extension which when a
filter is disposed within said filter retainer and said insert is
disposed within said filter, wherein said retainer and said insert
upper collar and lower extension are tapered in a
complementary manner, said insert press-fits the filter within
said filter retainer to retain said filter adjacent said filter
retainer, and a removable top having an outer perimeter lip
portion with a diameter of at least that of said diameter of said
upper end of said filter retainer and a lower collar portion of a
diameter less than said diameter of the upper collar and
configured to secure to the insert, wherein said top has an
opening therethrough to receive a water outlet from the
beverage brewing machine;
disposing a single-use coffee filter between said filter
retainer and said insert in a manner to cause said filter to be
press-fit therebetween;
putting coffee into the filter prior to securing said
removable top to said insert; connecting said top to said insert
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and secures to said upper collar of said insert; inserting said
reusable brew basket into said electric coffee brewing
machine[;] and
brewing a single cup of coffee with said electric coffee
brewing machine; and
disassembling said reusable brew basket by removing
said top and said insert from said filter retainer by using at
least part of said peripheral lip, and subsequently removing
said filter with coffee therein by inserting one’s finger through
said bottom opening and discarding said filter while retaining
said reusable brew basket for reuse.
Appeal Br. 19–20 (Claims App.).
Appellant appeals the following rejections:
1. Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over MacMahon et al. (WO 2006/043106 A2, published
Apr. 27, 2006) (“MacMahon”), in view of Fu et al. (US 2011/0073607
A1, published Mar. 31, 2011) (“Fu”), and further in view of Zaruba et
al. (US 4,595,099, issued June 17, 1986) (“Zaruba”) (Final Act. 3–6).
2. Claims 27 and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over MacMahon, in view of Fu, Zaruba, and further in
view of Toms (US 3,121,636, issued Feb. 18, 1964) (Final Act. 6–8).

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FINDINGS OF FACT & ANALYSIS
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s prior art rejections under 35 U.S.C.
§ 103(a). We add the following for emphasis.
I. Obviousness rejection of claims 25 and 26 over MacMahon, in
view of Fu, and further in view of Zaruba
Appellant argues independent claims 25 and 26 as a group (see
generally Appeal Br. 6–15; Reply Br. 1–10). We select claim 25 as
representative of this group. 37 C.F.R. § 41.37(c)(1)(iv). Accordingly,
claim 26 will stand or fall with our analysis of claim 25.
With respect to claim 25, the Examiner’s findings and conclusions
regarding MacMahon, Fu, and Zaruba are located on pages 3 through 6 of
the Final Office Action.
The Examiner finds that MacMahon discloses certain limitations of
the claimed reusable brew basket subject matter. Figure 5 of MacMahon, as
reproduced below, illustrates an exploded perspective view of a pod for
preparing a coffee beverage:

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MacMahon’s Figure 5 illustrates a pod for preparing a coffee
beverage including, inter alia, sealing ring 23, which frictionally engages
with skirt 26 of upper element 20 “to sandwich the layer of filtering material
22 between the sealing ring 23 and an outer surface of” skirt 26 (MacMahon
20:4–5).
The Examiner finds that MacMahon’s method of brewing a single cup
of coffee teaches each step and limitation of the method recited in
independent claim 25, except that MacMahon does not disclose, inter alia,
providing a reusable brew basket with an insert having
a lower extension which when a filter is disposed within the
filter retainer and the insert is disposed within the filter retainer,
the insert press-fits the filter within the filter retainer to retain
the filter adjacent the filter retainer, the filter retainer and insert
are tapered in a complementary manner, the lower collar
portion of the top has a diameter less than the diameter of the
upper collar of the insert, and the insert has a peripheral lip of a
diameter greater than the diameter of the upper end of the filter
retainer.
(Final Act. 4).
The Examiner, however, relies upon Fu’s reusable brew basket
comprising a filter retainer and an insert, each “tapered in a complementary
manner,” and a removable top (id.). The Examiner finds Fu teaches that
“the insert (frame) may provide structure, stability, and integrity to the filter”
(id. at 5 (citing Fu ¶ 24)). The Examiner also finds that MacMahon’s “insert
acts as a support for the filtering material . . . and sandwich[es] the filtering
material adjacent to the filter retainer (sidewall) without adhesive or other
bonding techniques” (Final Act. 5; see MacMahon 9:2–21). Based on these
teachings, the Examiner determines that it would have been obvious to one
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of ordinary skill in the art at the time of the invention to press-fit the filter
between a filter retainer and an insert (Final Act. 5).
The Examiner finds that MacMahon does not teach disassembling the
reusable brew basket by inserting one’s finger through the bottom opening
and pushing out the filter containing spent coffee grounds (id.).
The Examiner, however, finds Zaruba teaches a foodstuff storage
container “having an open top and . . . [a] partial bottom wall forming [a]
generally centrally disposed aperture” (Final Act. 6 (citing Zaruba 1:36–41;
Figs. 1–3)). The Examiner finds Zaruba teaches that the foodstuff may be
pushed out of the container by inserting the user’s finger through the bottom
aperture (Final Act. 6 (citing Zaruba 1:41–46; 3:27–30; Fig. 4)). The
Examiner determines that it would have been obvious to one of ordinary
skill in the art at the time of the invention to vary the opening’s size in the
bottom of MacMahon’s filter retainer so that the filter may be removed by
inserting one’s finger through the opening (Final Act. 6 (citing MacMahon
5:12–31; 9:26–10:6; 15:20–29; 26:11–24; 27:1–19)).
Appellant argues that MacMahon “appears defective and lacking an
adequately sufficient description and/or drawings to render a suitable
teaching” of the claimed coffee brewing method (Appeal Br. 9). According
to Appellant, “[i]t is simply unclear what exactly Macmahon teaches” (id. at
10).
We are unpersuaded by Appellant’s argument. In our view,
MacMahon contains an operable and enabled disclosure. Appellant has not
shown that undue experimentation would have been required to combine
MacMahon’s pod for brewing single cup coffee with features from Fu’s
reusable brew basket and Zaruba’s bottom aperture. See Okajima v.
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Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior
art evinces the level of skill in the art). Accordingly, there is a reasonable
expectation that one of ordinary skill in the art would have been enabled to
modify MacMahon’s pod with the known features of: (i) Fu’s removable top
and complementary-tapered cartridge and insert and (ii) Zaruba’s bottom
aperture.
Appellant argues that claim 25’s recitation of the term “reusable”
connotes structure (Reply Br. 2). According to Appellant, MacMahon fails
to disclose a reusable brew basket retainer and insert having the requisite
tapered feature, which allows each to press-fit a filter (Appeal Br. 9–11;
Reply Br. 2–4). Appellant contends that MacMahon also fails to disclose an
insert having a peripheral lip with a diameter greater than a diameter of a
filter retainer’s upper end, wherein a part of the peripheral lip can be used to
facilitate separation of the insert and top from the filter (Appeal Br. 11
(citing MacMahon 20:1–6 (describing Fig. 4)); see also Reply Br. 5).
Contrary to Appellant’s arguments, the claim term “reusable” does not
connote structure. Even assuming the disputed claim term encompasses
structural limitations, MacMahon explicitly discloses that the pod may be
reusable and provided with a removable lid in the upper surface (see Ans. 13
(citing MacMahon 28:13–16)).
Furthermore, Appellant’s arguments are directed to attacking the
individual secondary references rather than the combined teaching of the
references (see, e.g., Reply Br. 4–5). Appellant’s criticisms of MacMahon
individually do not establish nonobviousness. See In re Keller, 642 F.2d
413, 426 (CCPA 1981); In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971) (“[T]he test for combining references is not what the individual
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references themselves suggest but rather what the combination of disclosures
taken as a whole would suggest to one of ordinary skill in the art.”). We
discern no reversible error in the Examiner’s findings that MacMahon, in
combination with Fu, reasonably disclose and render obvious the limitations
regarding: (i) a complementary-tapered cartridge and insert and (ii) an insert
having a peripheral lip with a diameter greater than a diameter of a filter
retainer’s upper end (Final Act. 4–5).
Appellant argues that Fu’s plastic or metal filter, which is bonded to a
tapered basket, is not combinable with MacMahon’s pod (Appeal Br. 12).
Appellant contends that Fu’s single use disposable basket including a
bonded filter is not reusable (id.; see also Reply Br. 5–7).
We are not persuaded by these arguments for the reasons stated in the
Examiner’s Answer (Ans. 14–15). We note that Fu explicitly discloses that
“filter medium 130 may be secured for example, by thermal bonding of the
plastic used for the frame 128, or with an adhesive, by crimping, by heat
sealing, or any other way” (Fu ¶ 25) (emphasis added). In other words, Fu
does not exclude MacMahon’s method of sandwiching a layer of filtering
material between an insert and a filter retaining sidewall without “adhesive
or other bonding techniques” (MacMahon 9:20–21). See In re Fritch, 972
F.2d 1260, 1264 (Fed. Cir. 1992) (explaining that “[i]t is well settled that a
prior art reference is relevant for all that it teaches to those of ordinary skill
in the art”).
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Contrary to Appellant’s arguments, we find that the Examiner
provides a reasonable basis for the findings and conclusions regarding the
combined teachings of MacMahon, Fu, and Zaruba.
Appellant also argues that Zaruba’s sandwich preparation and storage
containers are not in the same field of endeavor as the claimed coffee
brewing method (Appeal Br. 14; Reply Br. 7–10). With respect to whether
Zaruba is reasonably pertinent, Appellant argues that one of ordinary skill in
the art would not look to Zaruba to solve problems related to waste reduction
in making single cup coffee (Appeal Br. 15 (citing Spec. ¶¶ 5–11)).
In response, the Examiner finds that Zaruba is analogous art because
the disclosure relates to a storage container for a foodstuff (Ans. 18 (citing
Zaruba Abstract)). The Examiner finds that Zaruba’s container having an
opening at the bottom for pushing food with one’s finger up and out of the
container is similar to the claimed use of an opening at the filter retainer’s
bottom (Ans. 19).
Appellant contends that the relied-upon reference is not in the same
field of endeavor because Zaruba’s “structure is so dissimilar and could in
no way function as the instant invention” (Reply Br. 8). Appellant asserts
that the Examiner has failed to provide or explain the required correlation
between the problems Zaruba set out to solve and those addressed by
Appellant (id. at 9–10).
The scope of analogous art is to be construed broadly. Wyers v.
Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme
Court’s decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398
(2007), directs us to construe the scope of analogous art broadly, stating that
‘familiar items may have obvious uses beyond their primary purposes, and a
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person of ordinary skill often will be able to fit the teachings of multiple
patents together like pieces of a puzzle.’ Id. at 402 (emphasis added).”).
A reference is reasonably pertinent if . . . it is one which,
because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his
problem. If a reference disclosure has the same purpose as the
claimed invention, the reference relates to the same problem,
and that fact supports use of that reference in an obviousness
rejection.
Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir.
2011) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)); see also In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (same standard).
In this instance, Appellant’s analysis does not explain why Zaruba’s
reusable container for preparing and storing a foodstuff is not within the
same field of endeavor as the claimed method comprising the step of
providing a reusable basket for brewing coffee. We note that Zaruba is
reasonably pertinent to the problem faced by Appellant, namely, “to improve
the efficiency of” preparing a foodstuff (Spec. 3). In our view, Zaruba
would have logically commended itself to a person of ordinary skill in the
art when considering how best to efficiently remove a foodstuff from a
container prior to reusing that container to prepare more foodstuff (id.).
Accordingly, we find that Zaruba is within Appellant’s field of endeavor and
is reasonably pertinent to Appellant’s problem, and thus is analogous art.
Therefore, Appellant’s arguments are insufficient to convince us of
reversible error in the Examiner’s rejection of claim 25.
On this record, we sustain the Examiner’s § 103(a) rejection as to
claims 25 and 26.
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II. Obviousness rejection of claims 27 and 28 over MacMahon, in
view of Fu, Zaruba, and further in view of Toms
Appellant argues dependent claims 27 and 28 as a group (see
generally Appeal Br. 15–16; Reply Br. 10–11). We select claim 27 as
representative of this group. 37 C.F.R. § 41.37(c)(1)(iv). Accordingly,
claim 28 will stand or fall with our analysis of claim 27.
With respect to claim 27, the Examiner’s findings and conclusions
regarding MacMahon, Fu, Zaruba, and Toms are located on pages 6 through
8 of the Final Office Action.
Claim 27 is illustrative:
27. The method of claim 25, wherein said peripheral lip
includes one of a tab and a cut-off edge to aid in
separation from said lip portion of said removable top.
Appeal Br. 21 (Claims App.).
The Examiner finds that the peripheral lip of MacMahon’s modified
insert is not disclosed as having a tab and a cut-off edge (Final Act. 7).
Because Toms teaches that “the tab on the insert is used to remove the
insert from the container,” the Examiner determines that it would have been
obvious to one of ordinary skill in the art at the time of the invention to use a
tab or cut-off edge on the peripheral lip of MacMahon’s modified insert
(id.). According to the Examiner, using a tab or cut-off edge on the
peripheral lip would have provided aid in disassembling the reusable brew
basket (id.).
Appellant argues that the rejection of claim 27 is based on
impermissible hindsight (Appeal Br. 16). Appellant argues that one of
ordinary skill in the art would not have been motivated to incorporate Toms’
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insert, top, or tab with the Examiner’s relied-upon references regarding pods,
which are not intended for reuse (id.; Reply Br. 11).
Appellant’s arguments are unpersuasive.
As the Examiner finds, MacMahon teaches a reusable pod and Fu
discloses a reusable permeable basket (Ans. 13 (citing MacMahon 28:13–
16); Ans. 15 (citing Fu ¶ 32)). The Examiner finds that Toms and Fu both
teach the use of tabs and cut-off edges in the food container art (Final Act. 7
(citing Toms 2:17–20; Fu ¶ 20)). In view of these teachings, one of ordinary
skill in the art would have been motivated to incorporate Toms’ tab into
MacMahon’s modified reusable pod. We discern no reversible error in the
Examiner’s findings that MacMahon, in combination with Fu, Zaruba, and
Toms, reasonably disclose and render obvious the limitations regarding an
insert’s peripheral lip having a tab and a cut-off edge to aid in separation
from a removable top’s lip portion (Final Act. 6–8).
Appellant argues that Toms’ insert is merely a cover for a water
soluble ingredient and the tab fails to extend past the retaining cup (Appeal
Br. 16; Reply Br. 11 (citing Toms Figs. 3, 4)).
Appellant’s unpersuasive arguments are directed to attacking Toms
individually rather than the combined teaching of the references. Keller, 642
F.2d at 426. Furthermore, the Examiner finds that Fu, not Toms, teaches an
insert having a peripheral lip, which extends past the retaining cup (Final
Act. 4 (citing Fu ¶¶ 23, 25, 30–33)).
Contrary to Appellant’s arguments, we find that the Examiner
provides a reasonable basis for the findings and conclusions regarding the
combined teachings of MacMahon, Fu, Zaruba, and Toms.
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Therefore, Appellant’s arguments are insufficient to convince us of
reversible error in the Examiner’s rejection of claim 27.
On this record, we sustain the Examiner’s § 103(a) rejection as to
claims 27 and 28.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
25, 26 103(a) MacMahon, Fu, Zaruba 25, 26
27, 28 103(a) MacMahon, Fu,
Zaruba, Toms
27, 28
Overall
Outcome
25, 26, 27,
28

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED