Ex Parte Amit

Patent Trial and Appeal Board

Jan 14, 2013

11837803 (P.T.A.B. Jan. 14, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/837,803 08/13/2007 Yuval Amit 048939-001000 5659
22204 7590 01/14/2013
NIXON PEABODY, LLP
401 9TH STREET, NW
SUITE 900
WASHINGTON, DC 20004-2128
EXAMINER
MOORE, WALTER A
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
01/14/2013 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
PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUVAL AMIT
(Application 11/837,803)
____________

Appeal 2011-011818
from Technology Center 1700
Walter Moore, Examiner
____________

Before RICHARD E. SCHAFER, RICHARD TORCZON and CHRISTOPHER L.
CRUMBLEY, Administrative Patent Judges.

TORCZON, Administrative Patent Judge.

DECISION ON APPEAL
The appellant (Amit) seeks relief from the final rejection of claims 1, 2, 5-7,
10-16, 19 and 20. We AFFIRM.
OPINION
BACKGROUND
Disclosure and claims
Amit discloses:1
A straining/stirring device and a method for manufacturing a
straining device . . . . The straining device includes a handle, a frame,

1 Spec., abstract.
Appeal

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Appeal 2011-011818 Application 11/837,803

3
wherein the frame is formed around a boarder [sic, border] of
the compartment, and the compartment is affixed to an interior
periphery of the frame;
wherein the compartment comprises a top porous surface and a
bottom porous surface that are sealed together; and
wherein the frame and the compartment form an assembly
comprising a concave portion of the spoon, the concave portion
configured to collect and hold additives while also allowing liquid to
pass through the top porous surface, to thereby retain the spoon-like
appearance and function of the device,
wherein the compartment is configured, so as to permit liquid to
pass through the compartment via the top porous surface and the
bottom porous surface so as to strain the medium, and
wherein the seal forms a peripheral seal section of the
compartment, and wherein the compartment is affixed to the frame via
the peripheral seal section.

Independent claim 14 defines the invention as:
A method for manufacturing a disposable straining device, the
method comprising:
positioning a medium to be strained between a top porous
surface and a bottom porous surface;
positioning the top porous surface and the bottom porous
surface so as to define a compartment and affixing the top porous
surface and the bottom porous surface to each other, wherein the
compartment is configured so as to allow liquid to pass through the
top porous surface and the bottom porous surface;
forming a frame and a handle in the form of a disposable spoon;
and
affixing the compartment to an interior periphery of the frame
such that the frame is formed around a boarder [sic, border] of the
compartment, and the compartment is supported by the frame and the
frame and the compartment form an assembly comprising a concave
portion of the spoon, the concave portion configured to collect and
hold additives while also allowing liquid to pass through the top
Appeal 2011-011818 Application 11/837,803

4
porous surface, to thereby retain the spoon-like appearance and
function of the device
wherein affixing the top porous surface and the bottom porous
surface to each other comprises heat sealing the top porous surface
and the bottom porous surface to each other so as to form a peripheral
seal section, and
wherein affixing the compartment to the frame comprises heat-
sealing the peripheral seal section to the frame.
Amit has not pointed us to a definition of "spoon-like appearance and
function". In one embodiment, Amit discloses that the "straining device 10 is
configured to collect and hold solid material, including additives such as sugar
particles, sweeteners, and salt, therein, while also allowing liquid to pass through".7
This description of an embodiment falls short of an express definition.8
Rejection
On appeal the examiner maintains a rejection of all pending claims except
claim 20 as having been obvious9 from the disclosure in a Lovell patent.10
Additionally, the examiner maintains a rejection of all pending claims as
having been obvious11 from over the combined disclosures of a Dick-Read
published application12 and either a Gorin patent13 or the Lovell patent.

7 Spec. ¶ 45.
8 In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (requiring reasonable clarity,
deliberateness and precision in a definition for a claim term).
9 Ans. 4, citing 35 U.S.C. 103.
10 W.C. Lovell & A.W. House, Packaging and stirring implement for making
beverages, U.S. Pat. 3,154,418 (1964).
11 Ans. 7, citing § 103.
12 G. Dick-Read, Device for making a beverage, WO 2005/013775 A1.
13 S. Gorin, Dispensing spoon, U.S. Pat. 3,946,652 (1976).
Appeal 2011-011818 Application 11/837,803

5
FACTS AND FINDINGS
[1] Lovell discloses "devices used for preparing various types of beverages such
as tea, coffee, and the like, and particularly to dispensers which serve as
containers for the beverage-making ingredient."14
[2] Lovell's object is to provide an infusion device that, like a spoon, is easily
removed from and can stir a hot liquid.15
[3] Lovell discloses an efficient method to manufacture the device "whereby the
devices are competitive in price with similar items now presently available on
the market."16
[4] Lovell Figure 2 (right) is a
sectional view of one
embodiment of the device.17
[5] The figure shows a dispenser 8 with a bowl 10 and a handle 12, where the
bowl has a chamber 14 containing the beverage ingredient 16.18
[6] The bowl also has orifices 18 covered with a porous sheet material 20.19
[7] The device is formed from upper and lower halves 26, 28 that are joined at
the margins 30, 30 of the device.20
[8] A film 22 protects the ingredients and is removed when the dispenser 8 is
used.21

14 Lovell 1:11-14.
15 Id. 1:27-37.
16 Id. 1:38-42.
17 Id. 1:60-61.
18 Id. 1:62-68. The handle 12 also has an ingredient chamber 24 for a second
ingredient. Id. 2:12-16.
19 Id. 1:68-2:3; 3:14-16.
20 Id. 2:19-30; 3:26-32 (spoon halves heat sealed together).
21 Id. 2:3-11.
Appeal 2011-011818 Application 11/837,803

6
[9] The examiner found that Lovell does not teach porous surfaces on both sides
of the bowl.22
[10] Lovell Figure 6 (right) illustrates another
embodiment in the form of a stirring rod
rather than a spoon.23
[11] The stirring rod 34 has perforations 33
opening into the chamber from both sides to permit free flow of liquid through
the stirring rod.
We find that Lovell does not teach forming the ingredient chamber
separately and then integrating it into the frame, but instead contemplates forming
the chamber as part of the frame.
[12] Dick-Read discloses "a device for making a beverage, in particular a device
to provide a beverage such as an infusion of a substance in a liquid."24
[13] Dick-Read reports that the prior art includes a tea bag enclosed in a two-
piece spoon, where both pieces of the spoon are perforated.25
[14] Dick-Read Figure 1 (right) is a perspective view of one
embodiment of a brewing
device.26
[15] Figure 3 shows a device 1
with a head 2 and a
handle 3. The head
features a non-permeable

22 Final Rej. 3.
23 Lovell 1:57; 2:45-47.
24 Dick-Read 1:5-6.
25 Id. 1:22-2:5.
26 Id. 9:5.
Appeal 2011-011818 Application 11/837,803

7
wall 4 and a pair of opposed liquid-permeable walls 5, 6.27
[16] Those skilled in the art would readily appreciate appropriate materials for
the permeable walls, including regular and "sheer flow" tea-bag paper.28
[17] Dick-Read forms the tea bag by locating tea between the permeable walls,
which are heat sealed or otherwise adhered together.29
[18] The bag is then located over the circular wall 4 of a head 2 and handle 3,
then an identical head-handle is brought into registration with the first and the
two head-handle pieces are welded together.30
[19] The examiner found that Dick-Read does not teach a concave bowl of a
spoon.
We note that it is an object of Dick-Read to brew so efficiently that a stirring
spoon is not necessary,31 but that Dick-Read reports the use of spoons as part of
related devices.32
[20] Dick-Read provides very exacting requirements, based on the type of tea
being used, in order to achieve a (relatively) dripless device.33
[21] Gorin discloses disposable spoons pre-filled with a beverage-making
ingredient (e.g., coffee, tea or soup) for brewing individual portions of a
beverage.34
[22] Gorin teaches the desirability of retaining spoon-like functions such as
stirring, feeding, tasting, sipping and ladling.35

27 Id. 10:8-12. Figure 3 does not show the second liquid-permeable wall 6.
28 Id. 10:18-21.
29 Id. 11:19-21.
30 Id. 12:1-6.
31 Id. 4:1-5.
32 Id. 1:22-2:5.
33 Id. 14-15.
34 Gorin 1:4-9.
Appeal 2011-011818 Application 11/837,803

8
[23] Gorin Figure 1 (right) is a perspective view of an
embodiment of a spoon.36
[24] The spoon 20 has a handle 22 and a bowl 24, which has
a concave upper wall 26.37
[25] A lower wall 28 of the bowl is also concave, but is
slightly deeper to accommodate the beverage-making
ingredient.38
[26] Perforations or apertures 38 in the lower wall permit the free flow of liquid
through the spoon so the ingredient may infuse into the liquid.39
[27] The examiner found that Gorin also teaches an embodiment with
perforations in the upper wall, relying on Gorin Figure 8.40
[28] Gorin Figure 8 (right) shows an exploded
perspective view of another embodiment.41
[29] Figure 8 shows the upper wall 26 (without
perforations) detached from the perforated
lower wall 28.
We note that Gorin teaches perforations in
either the upper or lower wall of the bowl (e.g., Figure 7 is identical to Figure 8,
except the perforations are in the upper wall instead). However, Gorin does not
appear to teach perforations in both walls for the same device. Reliance on
Figure 8 to teach perforation of both walls in the same device is an error.

35 Id. 1:49-51; 2:45-48.
36 Id. 2:16-17.
37 Id. 2:63-3:4.
38 Id. 3:5-10.
39 Id. 3:25-29.
40 Final Rej. 6; Ans. 8.
41 Gorin 2:33-34.
Appeal 2011-011818 Application 11/837,803

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ANALYSIS
Dick-Read and either Lovell or Gorin
Amit notes that Dick-Read does not teach a spoon-like bowl and contends
that there is no teaching of a spoon-shaped strainer.42 The examiner does not
concede that Dick-Read does not teach a spoon-shape, but only that it does not
teach a concave shape.43 The first page of Dick-Read's disclosure states that tea-
bag/spoons were already known to a person having ordinary skill in the art. Amit's
charge that the combination is the product of hindsight cannot be reconciled with
the plain language of Dick-Read.
Both Lovell and Gorin tout the benefits of retaining spoon-like functions,
such as ease of use and stirring. Dick-Read wishes to avoid stirring used with prior
art devices, which makes clear that stirring was a recognized function in the art.
Amit has not pointed us to a definition of "spoon-like appearance and
function" so a spoon-shaped device that provided at least one of these two
functions (ease of use or stirring) would be sufficient. Even if arguendo "spoon-
like function" required the device to be "configured to collect and hold solid
material, including additives such as sugar particles, sweeteners, and salt", the
examiner's proposed modification would also have a bowl shaped device, which
would be capable of holding solids.
All of the references recognize the importance of free flow of liquid through
the ingredient chamber. Common sense counsels that increasing the area of
perforation would improve the free flow of liquid. Similarly, perforations on both
sides of the spoon would naturally improve flow through the device. Dick-Read
takes this insight to an extreme—with the tea bag billowing out on both sides—that

42 Br. 13.
43 Ans. 14.
Appeal 2011-011818 Application 11/837,803

10
might make awkward spoon-like uses other than perhaps easy removal and stirring.
A patent publication is not limited, however, to what the earlier inventor intended,
but is good for all that it would fairly teach to a person having ordinary skill in the
art. Dick-Read teaches perforations on both walls in both his device and the prior
art. A person having ordinary skill in the art would have appreciated the value of
adopting dual perforation without being obligated to adopt all of Dick-Read's
innovations. Indeed, Dick-Read's exacting requirements for constructing the
billowing bag for different tea types would be motivation enough to adopt only the
simplest teachings in Dick-Read.
Amit has not shown error in the examiner's conclusion that it would have
been obvious to combine the benefits of a flow-through tea-bag-like compartment
with a spoon-like device. The subject matter of claim 1 would have been obvious
to a person having ordinary skill in the art. For claim 14, Amit points to the same
concave, spoon-like limitation as the point of error; hence, Amit has not shown
error for this claim either.
Amit has not argued the limitations of the other claims for this basis of
rejection and hence has not shown error for these claims on this basis.44

44 Alternatively, considering the limitations argued for the Lovell-only basis of
rejection, we see no basis for error. The references in combination teach
placement of the ingredient chamber, even an actual tea bag, in the head of the
device, clamped in place by one or more pieces of the head. Some claims require
the handle and frame to be "manufactured integrally as a single piece". Inasmuch
as the references teach one-piece head-handles, the limitation appears to be met.
To the extent the head-handles are in top-bottom pairs that are fused, welded or
adhered to each other during manufacturing, again the limitation is met because the
manufactured result is a single piece. Amit has not pointed us to an express
definition of the limitation terms that would exclude either of these alternatives.
Appeal 2011-011818 Application 11/837,803

11
Misreading of Gorin
To the extent the Examiner interpreted Gorin as teaching perforations in
both walls 26 and 28, the examiner erred. Alternatively, to the extent the examiner
interpreted Gorin as simply showing perforations on a top and bottom surface of
the bottom wall, the teaching is not very helpful because perforations by definition
go through the perforated structure but Gorin does not show perforations on both
sides of a chamber. In any case, Gorin is part of an alternative basis of rejection
and is not needed for a teaching of perforations on both sides of the device.
Accordingly, whether the examiner's interpretation is a factual mistake or simply
unhelpful, it was not prejudicial.45
Lovell alone
We have found a basis for affirming rejection of all pending claims so we do
not reach this alternative basis for rejecting less than all of the claims.
HOLDING
Amit has not shown reversible error in the second ground of rejection for all
pending claims so final rejection of claims 1, 2, 5-7, 10-16, 19 and 20 is—
AFFIRMED
bar

For the appellant: JOSEPH BACH, Nixon Peabody LLP, of Washington, D.C.

45 Cf. In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (holding one error not
prejudicial but other errors prejudicial).