Ex Parte Deuber

Patent Trial and Appeal Board

Jan 29, 2018

13263778 (P.T.A.B. Jan. 29, 2018)

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.
13/263,778 12/29/2011 Louis Deuber FRG-35206 3159
40854 7590 01/31/2018
RANKIN, HILL & CLARK LLP
38210 GLENN AVENUE
WILLOUGHBY, OH 44094-7808
EXAMINER
CHOU, JIMMY
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
01/31/2018 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):
40854@rankinhill.com
spaw @ rankinhill. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOUIS DEUBER
Appeal 2017-003706
Application 13/263,778
Technology Center 3700
Before EDWARD A. BROWN, JAMES P. CALVE, and
FREDERICK C. LANEY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Louis Deuber (Appellant)1 appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 16—25 under 35 U.S.C. § 102(b) as
unpatentable over Aardenburg (WO 2008/023057 A2, published Feb. 28,
2008).2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appeal Brief identifies Qbo Coffee GmbH as the real party in interest.
Appeal Br. 3.
2 Claims 3—5 and 10—15 are cancelled, and claims 1, 2, and 6—9 are allowed.
Appeal Br. 5, 14—18 (Claims App.).
Appeal 2017-003706
Application 13/263,778
CLAIMED SUBJECT MATTER
Claims 16, 24, and 25 are independent. Claim 16, reproduced below,
is illustrative of the claimed subject matter.
16. A device for puncturing a capsule, which capsule
comprises an extraction material for brewing a beverage, by
perforating a wall of the capsule, the device comprising:
a plate-like base element that forms a supporting surface
for the capsule, the plate-like base element comprising a plurality
of through openings for a liquid to flow through the plate-like
base element into the capsule or from the capsule, said plate-like
base element including a main portion that includes said
supporting surface and extending portions that extend outwardly
from peripheral edges of said supporting surface whereby
peripheral edges of said main portion are defined by the
peripheral edges of the supporting surface and peripheral edges
of said extending portions, and
wherein the extending portions are folded at an angle so as
to project away from the supporting surface and thereby form a
plurality of perforation elements that are integral with the plate­
like base element and project from the peripheral edges of the
supporting surface such that the peripheral edges of the main
portion are defined solely by the peripheral edges of the
supporting surface,
the perforation elements each comprising a sharpened
perforation edge projecting away from the supporting surface.
Appeal Br. 16 (Claims App.).
ANALYSIS
Claim 16 recites, inter alia, “said plate-like base element including a
main portion that includes said supporting surface and extending portions
that extend outwardly from peripheral edges of said supporting surface, ”
and “wherein the extending portions are folded at an angle so as to project
away from the supporting surface and thereby form a plurality of perforation
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Appeal 2017-003706
Application 13/263,778
elements that are integral with the plate-like base element and project from
the peripheral edges of the supporting surface. ” Appeal Br. 16 (Claims
App. (emphasis added)).
The Examiner finds that Aardenburg discloses a plate-like base
element (disk body 20) comprising a main portion including a supporting
surface and extending portions (Fig. 26 shows perforation elements 8 formed
in a folded manner) that extend outwardly from the peripheral edge of the
supporting surface, whereby the peripheral edges of the main portion are
defined by the peripheral edge of the supporting surface and the peripheral
edges of the extending portions (“annotated [Fig.] 26 show[s] each [of] the
perforation elements has at least a portion [that] extends from an edge
portion to the main portion. It is noted that [the] Examiner has defined the
peripheral edge portion of [the] main portion in annotated [Fig.] 26[.]”), and
wherein the extending portions (“8 includes 34, 35 and 12 as shown in [Fig.
26] are in folded like manner”) are folded at an angle so as to project away
from the supporting surface and thereby form a plurality of perforation
elements that project from the peripheral edge of the supporting surface such
that the peripheral edge of the main portion are defined solely by the
peripheral edges of the supporting surface. Final Act. 2 (italics omitted); see
also Aardenburg, Fig. 26. The Examiner’s annotated Figure 26 of
Aardenburg includes the annotation, “the peripheral edge (extends 360
degrees) is defined by the extending portions of perforation elements and the
peripheral edges of said extending portions.” Id. at 12.
Appellant contends that Aardenburg does not teach or suggest that the
“extending portions” found by the Examiner (i.e., “perforation elements 8”)
extend from peripheral edges of the supporting surface. Appeal Br. 11.
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Appeal 2017-003706
Application 13/263,778
Rather, annotated Figure 26 of Aardenburg clearly shows there is a margin
or space between the “extending portions” and the “peripheral edge.” Id.
The Examiner responds:
Aardenburg shows the extending portions refers to the pyramid­
like piercing object (9 pointed at the piercing object) having three
sides and each side having one edge in connection with the
supporting surface of base plate 20. The connection forms outer
boundary edges of the supporting surface. It is noted that the
outer boundary edges refers to peripheral edges. The pyramid­
like piercing objects are extending outwardly and upwardly from
the peripheral edges of the supporting surface.
Ans. 14 (emphasis added). Appellant replies that “Aardenburg’s ‘extending
portions’ are set radially inward of the supporting surface peripheral edge.”
Reply Br. 3.
Appellant’s contentions are persuasive. Figure 26 of Aardenburg
shows that disk body 20 has a circular shape with a circular perimeter or
peripheral edge. We agree with Appellant that, as shown in annotated
Figure 26 of Aardenburg, there is a margin or space between the “extending
portions” and the actual peripheral edge of disk body 20. See Final Act. 12.
That is, the “extending portions” are located radially inward from the
peripheral edge of disk body 20. We agree with Appellant that the
“extending portions” in Aardenburg found by the Examiner do not extend
outwardly from the peripheral edge of the supporting surface of disk body
20.
Appellant further contends that Aardenburg teaches a circular
supporting surface, which thus provides only a single “peripheral edge,”
whereas the claimed device includes plural “peripheral edges.” Appeal Br.
11. As such, Appellant contends, Aardenburg fails to teach or suggest
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Appeal 2017-003706
Application 13/263,778
“extending portions that extend outwardly from peripheral edges of said
supporting surface,” as claimed. Id. (emphasis added). Appellant also
contends the Examiner has not provided a plausible reason why one skilled
in the art would have modified Aardenburg to arrive at the claimed
invention. Id.
We understand that the Examiner proposes to modify the main portion
of disk body 20 in Aardenburg to have a square shape and, thus, include
peripheral edges. Final Act. 3^4. According to the Examiner, this
modification would have been an obvious matter of design choice. Id. at 4.
However, the proposed modification of disk body 20 shown in Figure 26 of
Aardenburg to have a square shape instead of a circular shape implicitly
acknowledges where the peripheral edge of disk body 20 is actually located,
as discussed above. We also agree with Appellant that the Examiner has not
provided an adequate reason with a rational underpinning to modify
Aardenburg to result in the claimed device. Thus, we do not sustain the
rejection of claim 16, or dependent claims 17—23, as unpatentable over
Aardenburg.
Independent claims 24 and 25 both recite “a main portion that
includes said supporting surface and extending portions that extend
outwardly from peripheral edges of said supporting surface" Appeal Br.
17—18 (Claims App. (emphasis added)). The Examiner’s findings and
reasoning with regard to these claims are similar to those for claim 16. See
Final Act. 6—10. Hence, we do not sustain the rejection of claims 24 and 25
as unpatentable over Aardenburg for the same reasons as for claim 16.
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Appeal 2017-003706
Application 13/263,778
DECISION
We reverse the rejection of claims 16—25.
REVERSED
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