NESTEC S.A.

Patent Trials and Appeals Board

Aug 3, 2020

15657681 - (D) (P.T.A.B. Aug. 3, 2020)

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.
15/657,681 07/24/2017 Alfred YOAKIM 3712036-03481 7034
29157 7590 08/03/2020
K&L Gates LLP-Nestec S.A.
P.O. Box 1135
Chicago, IL 60690
EXAMINER
COX, STEPHANIE A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
08/03/2020 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________
Ex parte ALFRED YOAKIM,
JEAN-PAUL DENISART, and ANTOINE RYSER
________________
Appeal 2019-005561
Application 15/657,681
Technology Center 1700
________________
Before JEFFREY T. SMITH, GEORGE C. BEST, and
JEFFREY R. SNAY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–27 of Application 15/657,681. Final
Act. (June 18, 2018).2 We have jurisdiction under 35 U.S.C. § 6.
A telephonic hearing was held in this appeal on June 24, 2020.
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies NESTEC SA as the real party in interest.
Appeal Br. 3
2 We note that page 1 of the June 18, 2018 Action states that the action is
non-final. Because page 11 of this Action states that the action is “MADE
FINAL” and Appellant treated the Action as a Final Rejection, we assume
that the Examiner’s description of the action as non-final on page 1 is a
clerical error.
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Application 15/657,681
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I. BACKGROUND
The ’681 Application describes methods and apparatus for preparing a
beverage or liquid food from a food substance which is brewed or extracted.
Spec. 1. The beverage or liquid food is then separated from the food
substance using centrifugal forces on the receptacle which contains the food
substance. Id.
Claims 1 and 14 are representative of the ’681 Application’s claims
and are reproduced below from the Claims Appendix of the Appeal Brief.
1. A method for preparing a beverage or liquid food from a
predetermined dose of a food substance contained in a sealed
filtering capsule that is cup-shaped and has a longitudinal axis
of rotation that passes vertically and centrally through the cup,
which comprises injecting water into the capsule along the
longitudinal axis, centrifugally rotating the capsule about the
axis of rotation in order to force the water to flow through the
substance in the capsule in a centrifugal flow path to form the
beverage or liquid food, collecting the beverage or liquid food
to a collector before it passes through an outlet, and heating the
beverage or liquid food in the collector to avoid cooling of the
beverage or liquid food before it passes through the outlet.
Appeal Br. 18.
14. A device for preparing a beverage or liquid food
from a food substance contained in a sealed capsule and has a
longitudinal axis of rotation that passes vertically and centrally
through the capsule, bypassing water through the substance in
the capsule, the device comprising:
water feed means for introducing water into the capsule,
and
means for centrifugally rotating the capsule about its axis
of rotation to force the water to flow through the substance in
the capsule in a centrifugal flow path to prepare the beverage or
liquid food; and
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referencing means for positioning and referencing the
capsule in a removable manner in the device and operational
relationship with the water feed means and along and axis of
rotation in the centrifugal rotating means, with the referencing
means comprising a water injection structure that engages an
upper portion of the capsule and his rotatable their width and
that also includes means for piercing a water inlet in the capsule
at its longitudinal central axis;
wherein the device includes therein a collector for
collecting the beverage or liquid food before it exits the device,
and
wherein the device includes means for heating the
beverage or liquid food in the collector to avoid cooling of the
beverage or liquid food before it exits the device.
Appeal Br. 20–21.
II. REJECTION
On appeal, the Examiner maintains3 the following rejection: Claims
1–27 are rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of Sylvan,4 Guerin,5 and Powell.6

3 The Examiner has withdrawn the rejection of claims 1–27 as failing to
comply with the written description requirement of 35 U.S.C. § 112, ¶ 1.
Advisory Action 1 (November 13, 2018).
4 US 5,325,765, issued July 5, 1994.
5 BE 894,031 A1, published February 4, 1983. The Examiner relies upon an
English-language translation of the abstract.
6 US 2006/0096973 A1, published May 11, 2006.
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III. DISCUSSION
The ’681 Application contains three independent claims: claims 1, 8,
and 14. Appellant presents a single argument for reversal of the rejection of
these claims and does not present separate argument with respect to any of
the dependent claims. Thus, we limit our discussion to the independent
claims. To the extent we discuss specific limitations, we shall refer to claim
1, with the understanding that our discussion and reasoning applies with
equal force to claims 8 and 14.
The Examiner rejected all three independent claims as unpatentable
over the combination of Sylvan, Guerin, and Powell. Final Act. 4.
In so doing, the Examiner found that Sylvan describes a method for
preparing a beverage from a food substance comprising injecting water into
a capsule containing the food substance and allowing to flow through the
food substance into a collector in the bottom of the capsule. See Sylvan Fig 2
(referring to chamber 42). The brewed beverage then flows from the
collector chamber through an outlet. Id. (citing Sylvan 4:16–26; claim 1).
The Examiner further found that Sylvan does not describe or suggest passing
the water through the food substance in the capsule using centrifugal force.
Id.
The Examiner further found that Guerin teaches using centrifugal
forces to produce a beverage from a food substance. Id. The Examiner found
that it would have been obvious to apply Guerin’s method of using
centrifugal forces to force the water through the food substance in Sylvan’s
brewing method because Guerin teaches that centrifugal rotation can
produce the beverage in a shorter amount of time. Id. The Examiner also
found that the combination of Guerin and Sylvan does not describe heating
the beverage in the collector before it exits the capsule. Id.
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The Examiner additionally found that Powell describes a coffee maker
that includes an associated heating unit that insures that the beverage
remains heated after it is been brewed. Id. at 5 (citing Powell ¶ ¶ 16–19).
According to the Examiner, “it would have been obvious to apply [Powell’s]
methodology to Sylvan and heat the beverage in the collector so as to ensure
the coffee does not cool before consuming.” Id.
Appellant presents five arguments for reversal of the rejection of
independent claims 1, 8, and 14. For the reasons set forth below, we find
none of these arguments persuasive.
First, Appellant argues that Sylvan and Guerin are not properly
combinable. Appeal Br. 9–12. In particular, Appellant argues that “[i]t
simply is not possible to modify Sylvan to include centrifugal rotation in the
coffee containers are different in that one uses a sealed capsule and the other
does not.” Id. at 12. Appellant continues:
Additionally, the rejection is improper because the
proposed combination of references would result in a
modification of Sylvan in a way that changes the principle of
operation of the device disclosed in Guerin (or vice versa), or
alternatively, a substantial reconstruction of one device in view
of the other. As the degree of modification that would have
been required is significant, then the proposed modification in
combination of references is not one that could be characterized
as a “mere substitution of one element for another known in the
field.” See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007).
Id.
This argument is not persuasive. The level of ordinary skill in the field
of coffee maker design is high. According to Appellant, a person of ordinary
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skill in the art would be an engineer with experience designing coffee
makers.7
Nevertheless, Appellant argues that using Guerin’s centrifugal process
for forcing water to flow through the food substance in the capsule in
Sylvan’s apparatus would require a degree of reconstruction that is outside
the level of ordinary skill in the art. Appeal Br. 9–11. Appellant relies upon
non-record evidence in the form of the June 6, 2014, Declaration of Alfred
Yoakim to support this argument.8 The Yoakim Declaration asserts that it is

7 During the telephonic hearing, Appellant’s counsel admitted that the level
of ordinary skill in the art is high:
JUDGE BEST: Okay. Counsel, this is Judge Best. I guess my
first question is the argument you’re making regarding the
amount of reconstruction and redesign required by the—to
combine the references to arrive at the claimed invention
depends, at least in part, on the level of skill in the art and that’s
something your brief doesn’t address. What is the proper
definition of a person of ordinary skill in the art in this case?
MS. JIANG: I think that it would be someone who, for
example, an engineer in the field, you know like coffee machine
field.
JUDGE BEST: Okay. How much experience would that person
have?
MS. JIANG: How much experience? Someone who at least
needs to understand who at least has experience of, you know,
designing and like—designing these devices.
Tr. 4.
8 The Yoakim Declaration was filed in the ’681 Application’s parent and
grandparent applications (15/008,415 and 12/602,542, respectively).
Affidavits or declarations submitted in the prosecution of a prior non-
provisional application do not automatically become part of a continuation
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impossible to combine Sylvan and Guerin due to their completely different
methods of operation. See Yoakim Decl. ¶¶ 5–10.
The Yoakim Declaration is focused on the modification of Sylvan’s
capsule to relocate the capsule’s outlets to the positions described in Guerin.
Id. at ¶¶ 6–10. Thus, the Declaration addresses the possibility of
incorporating Guerin’s features into the structure of Sylvan, the primary
reference. This is not the proper test for obviousness. In re Keller, 642 F.2d
413, 425 (CCPA 1981) (“The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference . . . .”). Moreover, the issues addressed in the Yoakim
Declaration are not reflected in the independent claims on appeal.
Furthermore, the Examiner found that using centrifugal forces to brew
coffee is well-known in the art. See, e.g., Final Act. 10; Advisory Action 2

or divisional application claiming priority to the earlier non-provisional
application. See MPEP § 201.06(c)(IX). When an applicant wants to rely
upon the earlier filed affidavit or declaration, the applicant should make
remarks to that effect of record and include a copy of the original affidavit or
declaration filed in the prior non-provisional application. Id. In this
application, the only copy of the Yoakim Declaration accompanied the
Appeal Brief. Submission of the Yoakim Declaration after filing the notice
of appeal is untimely. 37 C.F.R. § 41.33(d)(1) (2018).
In this case, however, both Appellant and the Examiner discussed the
contents of the Yoakim Declaration during prosecution of the ’681
Application. We, therefore, will overlook the technical failure to make the
Declaration part of the record. Accordingly, we hereby order inclusion of the
Yoakim Declaration in the record of the ’681 Application. In the future, both
Appellant and the Examiner should ensure that all necessary and relevant
documents actually are made of record in the prosecution history of an
application.
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(June 18, 2018). Appellant does not contest this finding. See Appeal Br.
generally.
In view of the high level of ordinary skill in the art, we agree with the
Examiner that a person of ordinary skill in the art would have had a
reasonable expectation of successfully modifying Sylvan’s brewing method
and apparatus to incorporate Guerin’s use of centrifugal forces to cause
water to flow through the food substance.
Second, Appellant argues that the combination of Sylvan and Guerin
with Powell is inappropriate because “it is not really possible to combine
Powell with Sylvan or Guerin without radically modifying those references.”
Appeal Br. 13.
This argument is not persuasive. It is neither supported by evidence—
the Yoakim Declaration does not mention Powell—nor does Appellant
explain why a person of ordinary skill in the art would not have had a
reasonable expectation of success in modifying the combination of Sylvan
and Guerin to heat the collector portion of the apparatus to maintain a
temperature of the brewed beverage.
Third, Appellant argues that the combination of Sylvan, Guerin, and
Powell does not describe or suggest every limitation of the independent
claims. Appeal Br. 13–14. In particular, Appellant argues that the ’681
Application’s independent claims each require heating of the beverage in the
collector, which is part of the brewing device. See, e.g., ’681 Application,
Claim 8 (“wherein the device includes means for heating the beverage or
liquid food in the collector to avoid cooling of the beverage or liquid food
before it exits the device”). Powell, on the other hand, describes heating the
brewed beverage after it exits the brewing device and is collected in a carafe.
Id. at 13.
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This argument is not persuasive. As the Examiner found, Powell
teaches that it is known in the art to provide heating means for coffee after it
has been brewed. See Answer 12; Final Act. 5. We, therefore, do not discern
error in the Examiner’s finding that “it would have been obvious to . . . heat
the beverage in the collector so as to ensure the coffee does not cool before
consuming.” Id. Moreover, we are not persuaded that an engineer with
experience in designing coffee (see Tr. 4) would not have had a reasonable
expectation of success in modifying Sylvan’s apparatus to heat the collector
so that the coffee does not cool before exiting the brewing device. Appellant
agrees that a person of ordinary skill in the art would be familiar with a
variety of different ways of heating a brewed beverage.9

9 During the telephonic hearing, the following exchange occurred.
JUDGE BEST: As I understand it, Powell describes heating a
carafe. It collects the beverage after it exits the brewing device.
Your claim requires heating the beverage in a collector or the
collector’s position before the outlet of the brewing of the
brewing device; is that correct?
MS. JIANG: Uh-huh. Yes, correct.
JUDGE BEST: It would not be within level of ordinary skill in
the art for a person to take out teaching that one needs to heat
brewed coffee to keep it warm and change the location where
the heating occurs from after the outlet of the brewing device or
before the outlet of the brewing device?
MS. JIANG: That, again, would require at least substantial
reconstruction. So you—so taking—you would need to, for
example, include some type of a heating plate underneath the
cartridge and that would require—that would not just be like a
simple step, like to add that plate somehow into the devices in
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Fourth, Appellant states that the Yoakim Declaration “also provided
comparison tests that clearly demonstrated the unexpected results of the
present invention compared to preparation of beverages from cartridges that
are representative of Guerin and Sylvan when used in the same centrifugal
extraction method of the present claims.” Appeal Br. 10–11. In particular,
paragraphs 11–17 of the Yoakim Declaration and the report accompanying
the Declaration purport to describe the unexpectedly superior results
achieved by use of the claimed invention. These results, however, are not
germane because the comparison being made in the experiments is between
the specific capsule design that was the subject of the claims in the ’681
Application’s grandparent application and the capsules described in Sylvan
and Guerin. Yoakim Decl. ¶¶ 14–15. The same brewing apparatus was used
to test all of the different capsule designs. Id., ¶¶ 12–13. Thus, the
experiments did not compare the claimed invention with the closest prior art
and are not commensurate in scope with the claims.

the other references. So that would require a lot more than just
like simple change.
JUDGE BEST: Right. But people who are engineers who are
familiar with coffee brewing devices are well acquainted there’s
different ways to heat either the water or the brewed beverage,
right?
MS. JIANG: They can’t have—I mean, I wouldn’t say no. I
wouldn’t disagree. I don’t disagree, but I just mean right now
we are trying to differentiate our—the present invention from
what’s presented, what—the combined teachings of the cited
references.
Tr. 10.
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For the reasons set forth above, we affirm the rejection of independent
claims 1, 8, and 14 of the ’681 Application. Thus, we also affirm the
rejection of dependent claims 2–7, 9–13, and 15–27.
IV. CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1–27 103(a) Sylvan, Guerin, Powell 1–27
Overall Outcome 1–27
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