Ex Parte Boussemart et al

Patent Trial and Appeal Board

Dec 5, 2017

12990590 (P.T.A.B. Dec. 5, 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.
12/990,590 11/01/2010 Christophe S. Boussemart 3712036-1169 1680
29157 7590 12/07/2017
K&T Oates T T .P-Phiraan
EXAMINER
P.O. Box 1135
CHICAGO, IL 60690
THAKUR, VIREN A
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
12/07/2017 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 CHRISTOPHE S. BOUSSEMART and
ALFRED YOAKIM
Appeal 2017-001301
Application 12/990,590
Technology Center 1700
Before DONNA M. PRAISS, JULIA HEANEY, and
DEBRA L. DENNETT, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 seek our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 1,3,4, 7—11, and 16 of
Application 12/990,590 under 35 U.S.C. § 103(a) as obvious. We have
1 This Decision refers to the Specification (filed Nov. 1, 2010) (“Spec.”),
Final Office Action (dated Aug. 5, 2015) (“Final Act.”), Advisory Action
(dated Nov. 12, 2015) (“Advisory Act.”), Appeal Brief (filed Mar. 9, 2016)
(“App. Br.”), Examiner’s Answer (dated Sept. 6, 2016) (“Ans.”), and Reply
Brief (filed Oct. 25, 2016) (“Reply Br.”).
2 Appellants identify the real party in interest as Nestec S.A. App. Br. 2.
Appeal 2017-001301
Application 12/990,590
jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we
affirm.
BACKGROUND
The subject matter on appeal relates to a sealed beverage capsule for
use in a beverage production machine, such as a coffee machine. App. Br. 6.
The sealed capsule is designed to be placed in an extraction chamber of a
beverage production machine, where liquid is injected into the capsule and
mixes with ingredients within a compartment of the capsule. Id. Appellants
seek to achieve reliable control of liquid flow rate and pressure conditions
inside the capsule by providing a perforated recessed section at the capsule’s
inlet face where liquid is injected. Id. at 7. Claim 1, the sole independent
claim on appeal, is representative of the claimed subject matter {id. at 31):
1. A sealed beverage capsule comprising:
a form-stable body having an inlet face for introducing a
liquid into the capsule after being opened;
an outlet face connected to the body of the capsule for
delivering a beverage from the capsule;
a recessed section at the inlet face of the body of the
capsule;
at least one compartment comprising ingredients located
between the inlet face and the outlet face of the body of the
capsule;
the recessed section and the body being made from one
single piece and made integrally of form-stable plastic, the
recessed section provided with a plurality of injection openings,
protruding inside the compartment, arranged to receive a
dedicated opening member of a beverage preparation device,
having a tube-like form, and comprising (1) an annular
cylindrical wall extending away from the body and (2) a bottom
face positioned transversally relative to a main flow path of the
liquid through the capsule;
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Application 12/990,590
the recessed section is sealed against the exterior of the
capsule in an air-tight manner by an additional cover member
that is connected to the body of the capsule as a separate piece;
the additional cover member is a thin membrane of a
material having a lower perforation resistance than the material
of the body of the capsule, the thin membrane sealed at a
circumferential surface of the inlet face in an airtight manner,
and contours of the circumferential surface and the cover
member overlapping at a circular section; and
outside the recessed section, the body of the capsule is
devoid of any perforation that would constitute a liquid inlet or
a beverage outlet.
Id. at 31 (Claims Appx).
REFERENCES
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Shattuck US 152,532 Jan. 5, 1875
Gidge US 3,445,237 May 20, 1969
Simon Jr. US 3,908,530 Sept. 30, 1975
English US 4,446,158 May 1, 1984
Wu US 5,390,587 Feb. 21, 1995
Favre US 5,472,719 Dec. 5, 1995
Sargent US 2003/0005826 A1 Jan. 9, 2003
Schifferle ‘813 US 2003/0172813 A1 Sept. 18,2003
Cai US 6,777,007 B2 Aug. 17, 2004
Perkovic US 6,869,627 B2 Mar. 22, 2005
Hu US 2005/0084569 A1 Apr. 21,2005
Schifferle ‘390 US 2005/0150390 A1 July 14, 2005
Rivera US 2007/0144357 A1 June 28, 2007
Scarchilli US 2007/0259073 A1 Nov. 8, 2007
Barrera AU 51220/73 July 18, 1974
Gallo FR 2617389 A1 June 1, 1989
Denisart WO 2006/021405 A2 Mar. 2, 2006
Ozanne WO 2007/042414 A1 Apr. 19, 2007
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Application 12/990,590
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 3, 4, and 7—8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Favre, Perkovic, Denisart, and any of
Gidge, Barrera, and/or Gallo, and in further view of Rivera, Ozanne, and Hu.
Advisory Act. 12.3
2. Claims 4 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of references in Rejection 1, and further
in view of Scarchilli. Advisory Act. 12.
3. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of references in Rejection 1, and further in view of
Schifferle ’390. Advisory Act. 13.
4. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of references in Rejection 1, and further in view of Wu and
Shattuck. Advisory Act. 13.
5. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of references in Rejection 1, and further in view of Simon
Jr. and English. Advisory Act. 13.
6. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of references in Rejection 1, and further in view of Wu,
Shattuck, and Cai. Advisory Act. 13.
7. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of references in Rejection 1, and further in view of Sargent
or English. Advisory Act. 13.
3 The Examiner amended the rejections in the Advisory Action, in view of
Appellants’ cancellation of claim 6 after the Final Action. Advisory Act. 12.
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Application 12/990,590
8. Claims 1,3,7, and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Schifferle ’813, Perkovic, Denisart,
Barrera, and Gallo, and in further view of Rivera, Ozanne, and Favre.
Advisory Act. 14.
9. Claims 4 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of references in Rejection 8, and in
further view of Scarchilli. Advisory Act. 14.
10. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of references in Rejection 8, and in further view of Wu and
Shattuck. Advisory Act. 14.
11. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of references in Rejection 8, and in further view of Simon
Jr. or English. Advisory Act. 15.
12. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of references in Rejection 8, and in further view of
Wu, Shattuck, and Cai. Advisory Act. 15.
13. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of references in Rejection 8, and further in view of
Sargent or English. Advisory Act. 15.
DISCUSSION
Rejection 1
Appellants separately argue only claims 1 and 3. App. Br. 8—17.
Accordingly, we limit our discussion to those claims; claims 4, 7, and 8
stand or fall with claims 1 and 3, from which they depend. We review the
appealed rejection for error based upon the issues identified by Appellants
and in light of the arguments and evidence produced thereon. Cf. Ex parte
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Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with
approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it has long
been the Board’s practice to require an applicant to identify the alleged error
in the examiner’s rejections”)).
Appellants argue that the combination of references in Rejection 1
fails to render claim 1 obvious because a person of ordinary skill in the art
would not have been motivated to arrive at the claimed invention.
Appellants focus on three claimed features: (1) the recessed section
“provided with a plurality of injection openings, protruding inside the
compartment,” “comprising an annular cylindrical wall extending away from
the body” and “sealed against the exterior of the capsule;” (2) the cover
member “having a lower perforation resistance than the material of the
body;” and (3) “the recessed section and the body being made from one
single piece and made integrally of form-stable plastic.” App. Br. 8—15. We
address each of these in turn.
The Examiner finds that Favre’s inner membrane (Favre Fig. 12b,
item 42) corresponds to the recessed section of claim 1 and teaches its
structural limitations, although not its specific shape, i.e. “an annular
cylindrical wall extending away from the body.” Final Act. || 11—13. The
Examiner further finds that Barrera teaches that perforations in a recessed
section can be advantageous for inducing turbulence to improve flavor
(Barrera 5:1—3); the Examiner relies on Barrera’s openings in the bottom
face of a recessed section and different shaped perforations on a side wall.
Final Act. 114, citing Barrera Fig. 1, items 4 and 6 and page 4, last line to
page 5, line 4. Appellants do not dispute these findings; rather, Appellants
argue that the Examiner’s reasoning as to why a person of ordinary skill in
the art would have modified Favre’s inner membrane 42 to have the features
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of any of the secondary references (Denisart, Perkovic, Gidge, Gallo,
Barrera, Rivera, Ozanne, and Hu) is conclusory and insufficient because the
structures disclosed by the secondary references have different functions
than Favre’s inner membrane 42.4 App. Br. 10—11. Appellants also dispute
the Examiner’s findings with regard to specific features of Denisart,
Perkovic, Gidge, and Gallo and argue that the differences between those
secondary references and Favre would have precluded combination of the
references to achieve the claimed invention. Id. at 8—10.
The Examiner responds by noting that Perkovic, Denisart, Gidge, and
Gallo are all directed to beverage capsules used for producing a beverage by
directing water through the capsule, and that Perkovic and Denisart also
teach a water permeable recessed portion in a similar position as Favre’s
inner membrane 42 and provide a similar function of retaining contents
within the ingredients compartment while providing a water passage.
Ans. ^Hf 10—11. The Examiner reasons, therefore, that it would have been an
obvious choice of shape to modify Favre’s recessed portion to have the
claimed shape because Perkovic and Denisart show that similar shapes
perform a similar function. Id. ^ 10. The Examiner further notes that
Appellants’ arguments against Gidge and Gallo (App. Br. 9-10) are not
responsive to the rejection, because the Examiner did not rely on Gidge’s
wall 34, or propose to modify Gallo. Ans. 6—8.
Appellants further argue that even if a person of ordinary skill in the
art would have modified Favre’s membrane 42 with Barrera to induce
turbulence in the liquid, Barrera uses apertures 5 arranged in the upper part
4 Labels to elements are presented in bold font, regardless of their
presentation in the original document.
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Application 12/990,590
of the side of its basket to direct liquid flow, which would have been
inapplicable to Favre which uses outlets in the lower membrane 2 at the
bottom of the cartridge. App. Br. 11, citing Barrera 4 and Figs 1—3; Favre 5,
6:39-51, and Figs 3 and 13. Appellants’ argument, however, does not
respond to the Examiner’s finding, which relies on Barrera’s perforations 6
provided in duct 2.
Having considered the Appellants’ arguments and the Examiner’s
responses as summarized above, we are not persuaded that Appellants
identify reversible error in the Examiner’s findings or reasoning concerning
the claimed features of the “recessed section” recited in claim 1. The
Examiner’s findings concerning Favre and the secondary references are
supported by at least a preponderance of the evidence, and the Examiner’s
reasoning is sufficiently articulated to support the determination of
obviousness. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.”). Appellants argue that the Examiner
failed to take into account that their claimed structure has improved
functionality relating to control of flow rate and pressure conditions (App.
Br. 10-11), however, the appealed claims do not specifically recite that
functionality. Therefore, the Examiner did not reversibly err in failing to
address differences in flow rate and pressure conditions over the cited prior
art.
With regard to the “cover member” recited in claim 1, Appellants
argue that the modification of Favre’s membrane 41 as proposed by the
Examiner would change its principle of operation because Favre teaches that
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Application 12/990,590
membrane 41 is “as impervious as the side wall and the bottom of the
cartridge.” App. Br. 12—13, citing Favre 1:43—50, 3:24—29, 7:58—62. The
Examiner responds by noting Favre’s additional teaching that the function of
membrane 41 is to provide an air-tight seal, and that the capsule material
may be synthetic resin while membrane 41’s material may be aluminum,
similar to that of Appellants’ cover. Ans. 114; Spec. 10:30-32. The
Examiner further reasons that a person of ordinary skill in the art would have
expected perforation resistance of Favre’s resin capsule to have been higher
than its aluminum membrane 41 because of their respective functionalities,
and that modification of the thickness of Favre’s membrane 41 would have
been advantageous for the purpose of facilitating its removal. Ans. 114.
The Examiner’s reasoning is sufficiently articulated and supported by Favre.
Appellants, on the other hand, do not point to error in the Examiner’s
reasoning, and further, their argument that the proposed modification of
Favre would change the principle of operation is not supported by a
preponderance of the evidence.
With regard to the “recessed section and the body being made from
one single piece and made integrally of form-stable plastic” as recited in
claim 1, the Examiner finds that although Favre does not specifically recite
this feature, Favre teaches that the body of its capsule can be made from
aluminum or synthetic materials, and that the particular shape of the capsule
is not limiting. Final Act. || 15—17, citing Favre 4:40-42, 50—53, 10:13—16.
The Examiner relies on the secondary references as teaching a recessed
porous, thermoformed sheet (Denisart), beverage cartridges having a one-
piece construction (Perkovic and Rivera), a porous and non-porous portion
made of the same material and integrally formed (Perkovic), and various
orientations of cartridges such as having the inlet face unitary with the body.
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Id. 115—16 (providing citations to Perkovic, Denisart, Rivera, and Hu). The
Examiner determines it would have been obvious to a person of ordinary
skill in the art to modify Favre’s recessed portion to be unitary with the
capsule body and made from a single piece of form-stable plastic, because
the functionality of a one-piece structure would have been similar to two
pieces and the art teaches unitary construction. Ans. 115—16.
Appellants do not dispute the Examiner’s findings with regard to
Favre. App. Br. 13—15. Appellants’ arguments primarily are directed to
features of the secondary references upon which the Examiner does not rely
for the rejection, or for which the Examiner relies upon Favre. For example,
Appellants argue that Denisart does not teach a recessed section made
integrally of form-stable plastic with the body (see App. Br. 14), but the
Examiner relies on Favre as teaching that both the body and the recessed
portion can be made from thermoplastic materials, and determines that
modifying Favre to form the recessed section in a single piece with the body
would have been an obvious choice in view of the other secondary
references’ teaching of a unitary body. Ans. 116. See In re Keller, 642
F.2d 413, 425 (CCPA 1981) (nonobviousness cannot be shown by attacking
references individually where the rejection is based on combination of the
references). Therefore, Appellants’ arguments are not persuasive of
reversible error.
Claim 3 depends from claim 1 and additionally recites that “both the
annular wall and the bottom face comprise injection openings.” App. Br. 31.
Appellants argue that none of the secondary references teach injection
openings in the annular cylindrical wall. App. Br. 16. Appellants further
argue, as above, that Barrera’s apertures 5 arranged in the upper part of the
side of its basket to direct liquid flow, would have been inapplicable to
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Favre which uses outlets in the lower membrane 2 at the bottom of the
cartridge for directing water. The Examiner responds by noting that Favre’s
entire recessed section has perforations, such that if its shape were modified
as proposed in the rejection, the annular wall and bottom face would
comprise perforations. Ans. 119. Appellants do not assert error in this
reasoning. Reply Br. 2—7. Because the Examiner’s reasoning is sufficiently
articulated and supported by Favre and the secondary references, as
discussed above, Appellants’ argument is not persuasive of reversible error.
Accordingly, we affirm Rejection 1.
Rejections 2—7
Rejections 2—7 are directed at dependent claims 4, 8—11, and 16.
Among these claims, claim 11 is the only one for which Appellants present a
separate substantive argument. App. Br. 17—21. Claim 11 depends from
claim 1 and additionally recites that “the capsule comprises a first and a
second compartment” having certain features. App. Br. 32. The Examiner
finds that Cai teaches one arrangement of multiple compartments, and
determines that modifying Favre to employ such an arrangement of
compartments would have been obvious for the purpose of providing
multiple flavors or blended drinks. Final Act. 139. Appellants’ argue that
the rejection is in error because “Cai teaches, at most, compartments
separated by a horizontal wall” appears to be based on a specific
interpretation of “compartment.” App. Br. 20. However, Appellants do not
direct us to anything in the Specification to support a construction of
“compartment” that patentably distinguishes the teachings of Cai.
Accordingly, Appellants’ argument is not persuasive of reversible error.
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Rejections 8—13
Rejections 8—13 relate to the Examiner’s alternative determination of
obviousness based on Schifferle ’813 as the primary reference. Having
sustained the determination of obviousness in Rejections 1—7, which
rejections encompass all of the claims at issue in Rejections 8—13, we need
not reach these rejections.
SUMMARY
We affirm the rejection of claims 1,3,4, 7—11, and 16 under
35 U.S.C. § 103(a).
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
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