Ex Parte Bergdahl et al

Patent Trial and Appeal Board

Aug 31, 2017

13120612 (P.T.A.B. Aug. 31, 2017)

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.
13/120,612 03/23/2011 Johan Bergdahl 3712036-1255 1556
29157 7590 09/05/2017
K&T Oates T T .P-Phiraan
EXAMINER
P.O. Box 1135
CHICAGO, IL 60690
NORTON, JOHN J
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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 JOHAN BERGDAHL, JOHN MELDRUM,
DAVID J. HARRISON, DAVID HAMEL, and
MICHAEL (MISCHA) STIEGER
Appeal 2015-005709
Application 13/120,6121
Technology Center 3700
Before STEFAN STAICOVICI, FREDERICK C. LANEY, and
ARTHUR M. PESLAK, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Johan Bergdahl et al. (Appellants) appeals under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 3—7 and 15—17. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest are co-inventor David
Hamel and Nestec LTD. Appeal Br. 2 (filed Nov. 5, 2014).
Appeal 2015-005709
Application 13/120,612
INVENTION
Appellants’ invention “relates to such a device which enables the
preparation of a beverage from a beverage concentrate which is provided to
a receptacle by supplying diluent jets to the receptacle.” Spec. 1,11. 4—7.
Claim 6, reproduced below, is independent and representative of the
claimed subject matter:
6. A beverage production device for preparing a beverage
from a beverage concentrate contained in a receptacle,
comprising:
a support for supporting the receptacle;
a motor that rotates the support; and
a plate member positioned vertical to the support, the plate
member comprising at least two outlet nozzles for injecting a
fluid jet into the receptacle, a liquid supply connected to the
outlet nozzles, at least one of the outlet nozzles designed to direct
a fluid jet to an inner side wall of the receptacle, at least one of
the outlet nozzles designed to direct a fluid jet to the bottom of
the receptacle, and the plate member comprising an outlet in
connection with a coffee mixing chamber for injecting coffee
into the receptacle, the coffee mixing chamber being mounted on
the plate member.
Appeal Br. 19 (Claims App.).
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 3 and 6 under 35 U.S.C. § 103(a)
as unpatentable over Sher ’382 (US 2008/0093382 Al, pub.
Apr. 24, 2008), Jenner (EP 1407698 Al, pub. Apr. 14, 2004),
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Application 13/120,612
Lassato (US 7,648,049 Bl, iss. Jan. 19, 2010), and Knees (US
4,301,717, iss. Nov. 24, 1981).
II. The Examiner rejected claims 4, 16, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Sher ’382, Jenner, Lassato,
Knees, and Hammad (US 2006/0266225 Al, pub. Nov. 30,
2006).
III. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Sher ’382, Jenner, Lassato, Knees, and Sher
’169 (US 2007/0080169 Al, pub. Apr. 12, 2007).
IV. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Sher ’382, Jenner, Lassato, Knees, and
Orzech (US 2007/0068969 Al, pub. Mar. 29, 2007).
V. The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Sher ’382, Jenner, Lassato, Knees, Sher ’169,
and Inouye (US Des. 307,669, iss. May 8, 1990).
ANALYSIS
Rejection I
Lor claim 6, the Examiner finds Sher ’382 discloses each recited
limitation, except it “does not disclose a plate member, a coffee mixing
chamber, or a motor that rotates the support.” final Act. 2. finding that the
Jenner, Lassato, and Knees references disclose these elements, the Examiner
determines
[i]t would have been obvious to one of ordinary skill in the art to
implement the plate of Jenner to support the nozzles and to
implement a mixing chamber for coffee, like that shown in
Lassota, on top of the same plate for support to allow the
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Application 13/120,612
apparatus of Sher ’3[82] to make coffee, and to implement a
rotating mechanism as exhibited in Knees to rotate the base and
receptacle to increase agitation and improve mixing.
Id. at 2—3. Appellants challenge the rationale underpinning of the
Examiner’s reason that a skilled artisan would have combined the various
element of Jenner, Lassato, and Knees with Sher. Appeal Br. 6—14. We
agree with Appellants that there is a flaw in the Examiner’s rejection for the
following reasons.
The Examiner finds a skilled artisan would have combined a rotating
mechanism with the combined apparatus taught by Sher ’382, Jenner, and
Lassato “to increase agitation and improve mixing.” Final Act. 2—3. As
support, the Examiner cites to Knees, which discloses a “means to rotate [a]
container about [an] axis at a speed such that stirring but not centrifuging
[occurs] (Knees, col. 2,11. 3—13),” as demonstrating it was “well known in
the mechanical arts that rotating something causes agitation that would aid in
mixing, and such technology is already known in the cooking arts.” Id. at 2.
Appellants argue the Examiner’s reliance on Knees is misplaced because it
is concerned with cooking solid foods. Appeal Br. 13. Recognizing the
concern of Knees “is quite different” (i.e., cooking solid foods), “the
Examiner objects to the idea that rotating a beverage container to mix
contents is not known in the art: anyone who has swirled a cup to mix a
beverage (which the Examiner thinks would be most people) would know
this.” Ans. 6.
Despite this objection, the Examiner does not offer any evidence of
prior knowledge that having a rotatable receptacle support would be
beneficial in the liquid food-dispensing device of Sher ’382 as this device
already provides agitation and mixing by creating turbulence when “ejecting
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Application 13/120,612
the diluent stream at an angle relative to [the] vertical.” Sher ’382, para. 28.
Hence, the reason proffered by the Examiner to modify the teachings of Sher
’382, i.e., “to increase agitation and improve mixing,” appears to already be
performed adequately by the liquid food-dispensing device of Sher ’382.
The Examiner has not provided any findings that Sher ’382 recognized a
problem with mixing and agitation of its diluent streams. Our reviewing
court indicates that the “mere fact that the prior art could be so modified
would not have made the modification obvious unless the prior art suggested
the desirability of the modification.” In re Gordon, 733 F.2d 900, 902 (Fed.
Cir. 1984). In other words, the Examiner offers no persuasive evidence a
skilled artisan would have recognized that providing Knees’s rotatable
receptacle would “improve mixing” or “increase agitation” in the liquid
food-dispensing device of Sher ’382. Without a persuasive articulated
rationale based on rational underpinnings for modifying the device of Sher
’382 as proposed, the Examiner’s rejection appears to be the result of
hindsight analysis. See, e.g.. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006).
As such, the Examiner fails to offer an adequate reasoning with
rational underpinning that it was known to a person of ordinary skill in the
art that Knees’s rotatable receptacle support would be beneficial in the liquid
food-dispensing device of Sher ’382, as modified by Jenner and Lassato.
Therefore, we do not sustain the Examiner’s rejection of claim 6, as well as
claim 3 depending therefrom.
Rejection II
We also do not sustain the Examiner’s rejection of claims 4, 16, and
17 under 35 U.S.C. § 103(a) as unpatentable over Sher, Jenner, Lassato,
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Knees, and Hammad for reasons similar to those discussed for Rejection I.
In particular, these claims depend from claim 6 (Appeal Br. 19—20 (Claims
App.)), and the Examiner’s use of the teachings of Hammad does not cure
the deficiencies in Rejection I. See Final Act. 3.
Rejection III
We also do not sustain the Examiner’s rejection of claim 5 under
35 U.S.C. § 103(a) as unpatentable over Sher, Jenner, Lassato, Knees, and
Sher ’169 for reasons similar to those discussed for Rejection I. In
particular, claim 5 depends from claim 6 (Appeal Br. 19 (Claims App.)), and
the Examiner’s use of the teachings of Sher ’ 169 does not cure the
deficiencies in Rejection I. See Final Act. 3.
Rejection IV
We also do not sustain the Examiner’s rejection of claim 7 under
35 U.S.C. § 103(a) as unpatentable over Sher, Jenner, Lassato, Knees, and
Orzech for reasons similar to those discussed for Rejection I. In particular,
claim 7 depends from claim 6 (Appeal Br. 19 (Claims App.)), and the
Examiner’s use of the teachings of Orzech does not cure the deficiencies in
Rejection I. See Final Act. 3^4.
Rejection V
We also do not sustain the Examiner’s rejection of claim 15 under
35 U.S.C. § 103(a) as unpatentable over Sher, Jenner, Lassato, Knees, and
Inouye for reasons similar to those discussed for Rejection I. In particular,
claim 15 depends, indirectly, from claim 6 (Appeal Br. 20 (Claims App.)),
and the Examiner’s use of the teachings of Inouye does not cure the
deficiencies in Rejection I. See Final Act. 4.
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DECISION
We reverse the Examiner’s rejection of claims 3—7 and 15—17.
REVERSED
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