Ex Parte BodumDownload PDFPatent Trial and Appeal BoardJan 30, 201812161106 (P.T.A.B. Jan. 30, 2018) Copy Citation 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. 12/161,106 07/16/2008 Jorgen Bodum Q109127 8407 23373 7590 02/01/2018 SUGHRUE MION, PLLC 2100 PENNSYLVANIA AVENUE, N.W. SUITE 800 WASHINGTON, DC 20037 EXAMINER STAPLETON, ERIC S ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 02/01/2018 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JORGEN BODUM Appeal 2016-005153 Application 12/161,106 Technology Center 3700 Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and AMEE A. SHAH, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s rejections of claims 1, 4—13, 18—20, 22, and 24—30. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 The Appellant identifies the real party in interest as “PI-Design AG.” (Appeal Br. 2.) Appeal 2016-005153 Application 12/161,106 STATEMENT OF THE CASE The Appellant’s invention relates to “a filter insert” that “can be inserted in a jug in a simple manner” and not “fall out of the jug when pouring the beverage.” (Spec. 2,11. 27—30.) Illustrative Claim 1. A filter insert for inserting into an insertion opening of a vessel for the purpose of extraction of beverages, the filter insert comprising: a hollow main body, the main body being upwardly open and comprising a cylindrical filtering section, the cylindrical filtering section being provided with filtering holes, the main body further comprising a rigid support section arranged above the cylindrical filtering section, and the main body further comprising a rigid annular flange that projects radially outwards from the rigid support section, the rigid annular flange having a bottom surface, a top surface and an outer rim, and an elastic collar that is a structure separate from and attached to said hollow main body, the elastic collar covering an outside contour of the support section and of the flange, the elastic collar being made of a flexible and heat-resistant plastic for flexible adaptation to an inside dimension of the insertion opening of the vessel, the elastic collar comprising a lower portion having the form of a cylindrical ring, a middle portion above the lower portion, the middle portion having an elastic wave-form outside contour extending along a circumferential direction of the elastic collar like a rosette with alternating crests and troughs, said middle portion at said outside contour being compressible to provide a tight fit into said insertion opening of the vessel, and an upper portion, wherein the upper portion tightly fits over the annular flange so as to cover the bottom surface, the rim and at least part of the top surface of the annular flange. 2 Appeal 2016-005153 Application 12/161,106 Kopp McMichael Matuschek Bielfeldt References US 4,656,932 US 4,865,737 US 6,012,379 US 6,189,438 B1 Apr. 14, 1987 Sept. 12, 1989 Jan. 11,2000 Feb. 20, 2001 Rejections The Examiner rejects claims 1, 4—13, 18, 20, 22, and 24—30 under 35 U.S.C. § 103(a) as unpatentable over Bielfeldt, McMichael, and Matuschek. (Final Action 2.) The Examiner rejects claim 19 under 35 U.S.C. § 103(a) as unpatentable over Bielfeldt, McMichael, Matuschek, and Kopp. (Final Action 13.) ANALYSIS Claims 1, 20, and 30 are the independent claims on appeal, with the rest of the claims on appeal (i.e., claims 4—13, 18, 19, and 24—29) depending therefrom. (See Appeal Br., Claims App.) Independent claims 1, 20, and 30 recite a “filter insert” for “inserting into an insertion opening” of a vessel “for the purpose of extraction of beverages.” (Id.) Independent Claims 1 and 20 Independent claims 1 and 20 require the filter insert to comprise a “main body” and a “collar” that is “a structure separate from” the main body. (Appeal Br., Claims App.) The Examiner finds that Bielfeldt discloses a filter insert having a main body and a separate collar. (See Final Action 2—3.) Bielfeldt discloses a “support ring 23” and a “filter element 28” that is “inserted into the mouth of the support ring 23.” (Bielfeldt, col. 12,11. 54—56, see also Figs. 1 and 6.) The Examiner’s 3 Appeal 2016-005153 Application 12/161,106 rejection, as we understand it, equates Bielfeldt’s filter element 28 to the claimed main body and equates Bielfeldt’s support ring 23 to the claimed collar. Independent claims 1 and 20 also require the main body to comprise a “filtering section,” a “support section,” and an “annular flange that projects radially outwards” from the support section. (Appeal Br., Claims App.) The Examiner finds that Bielfeldt’s filter element 28 includes these components. (See Final Action 3.) In Bielfeldt’s filter element 28, an outer wall 27 defines a lower hemispherical envelope 29 and a transition area 30, and a “ring- shaped” rim 39 is shown projecting radially outward from this outer wall 27. (See Bielfeldt, col. 12,11. 11-13, 53-55; col. 13,11. 1^1, Figs. 1-3.) Independent claims 1 and 20 further require the collar to have an “upper portion” that “tightly fits over the annular flange” so as to cover “at least part of the top surface of the annular flange.” (Appeal Br., Claims App.) The Examiner finds that this limitation is disclosed by Bielfeldt. (See Final Action 4.) We are persuaded by the Appellant’s argument that this finding by the Examiner is not supported by the record. We are persuaded because we agree with the Appellant that “[sjupport ring 23 of Bielfeldt does not cover the upper side of rim 39.” (Appeal Br. 23; see also Bielfeldt Fig. 6.)2 And McMichael’s teachings regarding a “rigid support section” (see Final Action 9), and Matuschek’s teachings regarding “silicone rubber” (see id. at 13), do not compensate for this shortcoming. 2 Insofar as the Examiner considers rim 39 of filter element 27 to be part of the collar, as opposed to the main body, (see e.g., Final Action 3, 7), the Examiner has not adequately supported a finding that filter element 27 would still include the “annular flange” required by independent claims 1 and 20. 4 Appeal 2016-005153 Application 12/161,106 Thus, we do not sustain the Examiner’s rejection of independent claims 1 and 20 as unpatentable over Bielfeldt, McMichael, and Matuschek. Independent Claim 30 Independent claim 30, like independent claims 1 and 20, requires the filter insert to comprise a “main body” and a “collar” that is “a structure separate from” the main body (Appeal Br., Claims App.); and the Examiner makes similar findings with respect to this limitation (see Final Action 8—9). Independent claim 30 further requires the main body to comprise a “tapering section,” that is “arranged above [a] transition section” and that “ha[s] a conical shape and a cross section that decreases in an upward direction.” (Appeal Br., Claims App.) The Examiner finds that this limitation is disclosed by Bielfeldt. (See Final Action 9.) We are persuaded by the Appellant’s argument that this finding by the Examiner is not supported by the record. We are persuaded because we agree with the Appellant that “there is no inverted funnel shaped structure above any structure in Bielfeldt.” (Appeal Br. 39.) And McMichael’s teachings regarding a “rigid support section” and Matuschek’s teachings regarding “silicone rubber” (see Final Action 9, 13), do not compensate for this shortcoming. Thus, we do not sustain the Examiner’s rejection of independent claim 30 as unpatentable over Bielfeldt, McMichael, and Matuschek. Dependent Claims 4^13, 18, 19, and 24—29 The Examiner’s further findings and determinations with respect to the dependent claims (see Final Action 5—6, 8—14) do not cure the above- discussed deficiencies in the Examiner’s rejection of the independent claims. 5 Appeal 2016-005153 Application 12/161,106 Thus, we do not sustain the Examiner’s rejection of dependent claims 4—13, 18, and 24—29 under 35 U.S.C. § 103(a) as unpatentable over Bielfeldt, McMichael, and Matuschek; and we do not sustain the Examiner’s rejection of dependent claim 19 under 35 U.S.C. § 103(a) as unpatentable over Bielfeldt, McMichael, Matuschek, and Kopp. DECISION We REVERSE the Examiner’s rejections of claims 1, 4—13, 18—20, 22, and 24—30. REVERSED 6 Copy with citationCopy as parenthetical citation