Matthew Masifilo

Patent Trials and Appeals BoardAug 27, 2021

2020005765 (P.T.A.B. Aug. 27, 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. 14/991,979 01/10/2016 Matthew Masifilo 0002 2110 131245 7590 08/27/2021 Justin Luby 4105 W. El Prado Blvd Tampa, FL 33629 EXAMINER YOO, HONG THI ART UNIT PAPER NUMBER 1792 MAIL DATE DELIVERY MODE 08/27/2021 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 MATTHEW MASIFILO ____________________ Appeal 2020-005765 Application 14/991,979 Technology Center 1700 ____________________ Before MAHSHID D. SAADAT, JOHN A. EVANS, and BRIAN D. RANGE, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 seek our review3 under 35 U.S.C. § 134(a) from the final rejection of Claims 14–19, all pending claims. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). 1 Our Decision refers to Appellant’s Appeal Brief filed March 31, 2020 (“Appeal Br.”); Appellant’s Reply Brief filed August 5, 2020 (“Reply Br.”); Examiner’s Answer mailed June 5, 2020 (“Ans.”); the Final Rejection mailed January 15, 2020 (“Final Act.”), and the Specification filed January 10, 2016 (“Spec.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appeal Brief identifies the inventor, Matthew Masifilo, as the real party in interest. Appeal Br. 1. 3 We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could Appeal 2020-005765 Application 14/991,979 2 We AFFIRM. STATEMENT OF THE CASE INVENTION. The claims relate to an apparatus and method for brewing a kava beverage. See Abstract. An understanding of the invention can be derived from a reading of Claim 14, the sole independent claim, which is reproduced below with some formatting added: 14. A method of extracting insoluble kavalactones from kava root into a beverage medium, comprising the steps of: providing a filter apparatus, a beverage shaker with a first removable lid; filling the filter apparatus with kava root; placing the filled filter apparatus into the beverage shaker; filling the beverage shaker with a beverage medium; securing the first removable lid on the beverage shaker; vigorously shaking the beverage shaker-so that the filled filter apparatus flows through the beverage medium, causing the kava root to collide with the filter apparatus, whereby when the kava root collides with the filter apparatus evenly distributed compressive forces are exerted on the kava root extracting the insoluble kavalactones from the kava root into the beverage medium creating a brewed kava beverage. have made but chose not to make in the Briefs are deemed to be forfeit. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-005765 Application 14/991,979 3 REFERENCES Name4 Reference Date Durbin US D449,960 S Nov. 6, 2001 Shen US 2011/0226133 A1 Sept. 22, 2011 Lightfoot US 2012/0189741 A1 July 26, 2012 Tsuji US 2012/0258204 A1 Oct. 11, 2012 John Sterling Kingsley, THE NATURAL HISTORY OF MAN, Vol. VI, Boston, S.E. Cassino and Co. (1885). Merriam-Webster (online), Extract, https://www.merriam- webster.com/dictionary/extract (accessed 01/13/2020). REJECTIONS AT ISSUE 1. Claim 14 stands rejected under 35 U.S.C. § 103 as being unpatentable over Shen, Kingsley, and Merriam-Webster. Final Act. 2–4. 2. Claims 14 and 18 stand rejected under 35 U.S.C. § 103 as being unpatentable over Tsuji, Kingsley, and Merriam-Webster. Final Act. 4–6. 3. Claims 15, 16, and 17 stand rejected under 35 U.S.C. § 103 as being unpatentable over Shen, Kingsley, and Durbin. Final Act. 6–7. 4. Claim 19 stands rejected under 35 U.S.C. § 103 as being unpatentable over Tsuji, Kingsley, and Lightfoot. Final Act. 8. 4 All citations herein to the references are by reference to the first named inventor/author only. Appeal 2020-005765 Application 14/991,979 4 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We do not find Appellant’s arguments persuasive with respect to the rejections under § 103. CLAIM 14: OBVIOUSNESS OVER SHEN, KINGSLEY, AND MERRIAM-WEBSTER. Claim 14 recites, inter alia: vigorously shaking the beverage shaker-so that the filled filter apparatus flows through the beverage medium, causing the kava root to collide with the filter apparatus, whereby when the kava root collides with the filter apparatus evenly distributed compressive forces are exerted on the kava root extracting the insoluble kavalactones from the kava root into the beverage medium creating a brewed kava beverage. Appeal Br. 17 (Claims App.). The Examiner finds Shen teaches a vigorously-shaking a beverage shaker which includes a filter apparatus for emplacement of a material to be extracted. Final Act. 3. The Examiner finds Kingsley teaches kava root as a material to be extracted. Id. Appellant’s contends the Shen-Kingsley combination is not obvious because diffusion is the driving force motivating coffee or tea extraction as opposed to compression which is claimed. Appeal Br. 6. The Examiner finds vigorous shaking, taught by Shen, would exert compressive forces on the material confined within the filter apparatus, as claimed. Ans. 3–4. Appellant contends Shen fails to teach shaking will exert compressive stresses to the substrate in the filter cup. Reply Br. 3. The Examiner finds Shen teaches a device that is constructed and operated in a similar manner as the claimed beverage shaker. Final Act. 3. Appeal 2020-005765 Application 14/991,979 5 We find a similar device, operated in a similar manner, will inherently yield similar properties. “[I]nherency may supply a missing claim limitation in an obviousness analysis.” PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194–95 (Fed. Cir. 2014). Appellant discloses: Once the shaker has been filled with the beverage medium and the straining ball apparatus, the shaker is agitated by shaking the shaker. When the beverage medium flows through the straining ball apparatus, the kava roots will repeatedly crash into the strainer, creating a similar effect that the kneading and squeezing has in the traditional brewing method, extracting the kavalactones from the kava root into the beverage medium creating a kava. Spec. ¶ 15. Thus, Appellant discloses where the kava root crashes into the strainer, an effect, similar to kneading or squeezing, i.e., compression, is obtained. Compressive forces will also be inherently produced by operation of devices with the result similar to that claimed. In re Montgomery, 677 F.3d 1375, 1379–80 (Fed. Cir. 2012) (“The inherent result must inevitably result from the disclosed steps; ‘[inherency . . . may not be established by probabilities or possibilities.’”). Appellant further contends Shen fails to disclose the magnitude of compressive force generated by the Shen device. Final Act. 3. We find this argument not persuasive because a magnitude of compressive force, or range thereof, is not claimed. Appellant’s argument is not commensurate in scope with the claims which do not recite “calendar event.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). Appeal 2020-005765 Application 14/991,979 6 CLAIMS 14 AND 18: OBVIOUSNESS OVER TSUJI, KINGSLEY, AND MERRIAM-WEBSTER. With respect to Claims 14 and 18, Appellant applies substantially the same arguments against the teachings of Tsuji and Kingsley as were applied against the Shen-Kingsley combination. See Appeal Br. 10–13. For reasons similar to those discussed above, we are not persuaded of error. CLAIMS 15, 16, AND 17: OBVIOUSNESS OVER SHEN, KINGSLEY, AND DURBIN. “Applicant respectfully repeats the same argument above for Claim 14.” Appeal Br. 13. See Appeal Br. 13–15. For reasons similar to those discussed above, we are not persuaded of error. CLAIM 19: OBVIOUSNESS OVER TSUJI, KINGSLEY, AND LIGHTFOOT. “Applicant respectfully repeats the same argument above for Claim 18.” Appeal Br. 15. See Appeal Br. 15–16. For reasons similar to those discussed above, we are not persuaded of error. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 14 103 Shen, Kingsley, Merriam-Webster 14 14, 18 103 Tsuji, Kingsley, Merriam-Webster 14, 18 15, 16, 17 103 Shen, Kingsley, Durbin 15, 16, 17 Appeal 2020-005765 Application 14/991,979 7 19 103 Tsuji, Kingsley, Lightfoot 19 Overall Outcome 14–19 TIME PERIOD FOR RESPONSE 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2019). AFFIRMED