Ex Parte FISCHER et al

Patent Trial and Appeal Board

Apr 24, 2018

13687045 (P.T.A.B. Apr. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/687,045 11128/2012
26587 7590 04/24/2018
MCNEES WALLACE & NURICK LLC
100 PINE STREET
P.O. BOX 1166
HARRISBURG, PA 17108-1166
FIRST NAMED INVENTOR
Daniel FISCHER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
26571-0027 7401
EXAMINER
CHEN,KUANGYUE
ART UNIT PAPER NUMBER
3742
MAILDATE DELIVERY MODE
04/24/2018 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
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL FISCHER, CHRISTOF SEGER, and
MARCEL W. HUEPPI
Appeal2017-007817
Application 13/687,045
Technology Center 3700
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Daniel Fischer et al. ("Appellants") 1 appeal under 35 U.S.C. § 134(a)
from the Examiner's decision in the Final Action (dated Apr. 22, 2016,
hereinafter "Final Act.") rejecting claims 1-11. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellants' Appeal Brief (filed Dec. 19, 2016, hereinafter
"Appeal Br.") the real parties in interest are the inventors, Daniel Fischer,
Christof Seger, Marcel W. Hueppi and the assignee, Eugster/Frismag AG
Electrohaushaltgerate. Appeal Br. 1.
Appeal2017-007817
Application 13/687,045
INVENTION
Appellants' invention relates to "a brewing apparatus for extracting a
portion capsule." Spec. 1, 1. 10.
Claim 1, the sole independent claim, is shown below and is
representative of the claimed invention:
1. A brewing apparatus for extracting a portion capsule,
comprising a first brewing chamber element and a second
brewing chamber element, wherein the first or the second
brewing chamber element is movable in an axial direction
between a loading position, in which the first and the second
brewing chamber elements are spaced apart from each other, and
an extraction position, in which the first and the second brewing
chamber elements form a substantially closed brewing chamber,
characterized in that, upon movement of the first and/or the
second brewing chamber element from the loading position into
the extraction position, the portion capsule is first perforated by
the at least one first perforation means of the first brewing
chamber element and then is perforated by at least one second
perforation means of the second brewing chamber element, the
first brewing chamber element has a perforation element which
comprises a base surface and at least one perforation means
formed on the peripheral region of the base surface in the
circumferential direction, the at least one perforation means has
a linear cross section which is bent along the circumference of
the base surface to protrude perpendicularly from the peripheral
region of the base surface, the at least one perforation means
being positioned at a constant radius about a central point of the
base surface, the at least one perforation means cooperates with
an edge region of the portion capsule to ensure a more reliable
perforation operation, wherein liquid flows at angles through the
portion capsule to increase the interaction distance and
interaction time between the liquid and contents of the portion
capsule.
2
Appeal2017-007817
Application 13/687,045
REJECTIONS
I. Claims 1-11 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
II. Claims 1, 4---6, and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cortese (US 2003/0070554 Al, pub. Apr. 17,
2003, hereinafter "Cortese '554") and Aardenburg (WO
2008/023057 A3, pub. Feb. 28, 2008).
III. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Cortese '554, Aardenburg, and Ozanne (WO 2007/042415
Al, pub. Apr. 19, 2007).
IV. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Cortese '554, Aardenburg, and McKnight (US 4,158,329,
iss. June 19, 1979).
V. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Cortese '554, Aardenburg, and Cortese (US 6,584,888 B2,
iss. July 1, 2003, hereinafter "Cortese '888").
VI. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Cortese '554, Aardenburg, Favre et al. (US 2006/0174769
Al, pub. Aug. 10, 2006, hereinafter "Favre"), and LeBaron et
al. (US 5,241,219, iss. Aug. 31, 1993, hereinafter "LeBaron").
VII. Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cortese '554, Aardenburg, and Cortese (US
6, 792,980 B 1, iss. Sept. 21, 2004, hereinafter "Cortese '980").
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Appeal2017-007817
Application 13/687,045
OPINION
Rejection I
The Examiner finds that the meaning of the limitation "and/ or" in
claim 1 is unclear. See Final Act. 2. Also with respect to claim 1, the
Examiner finds that the relationship between the limitation "at least one
perforation means" and the limitation "at least one first perforation means"
is likewise unclear. Final Act. 3.
Appellants proposed to amend claim 1 to overcome the indefiniteness
rejection in After-Final amendments, dated Sept. 20, 2016 and Oct. 21,
2016, but the Examiner did not enter either amendment. See Advisory
Actions (dated Sept. 26, 2016 and Nov. 1, 2016). Appellants assert that the
Examiner's refusal to enter the amendment is in error. Appeal Br. 17.
However, refusal of an Examiner to enter an amendment, in whole or in part,
is a petitionable matter, not an appealable matter, and is not within the
jurisdiction of the Board. See In re Mindick, 371F.2d892, 894 (CCPA
1967).
In the Appeal Brief, Appellants do not set forth any other substantive
arguments with respect to the indefiniteness rejection. See Appeal Br. 16-
1 7. Accordingly, we sustain the indefiniteness rejection of claims 1-11.
Rejection II
Claim 1 recites, in relevant part, "at least one perforation means
formed on the peripheral region of the base surface in the circumferential
direction, the at least one perforation means has a linear cross section."
Appeal Br. 19 (Claims App.).
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Appeal2017-007817
Application 13/687,045
The Examiner finds that an ordinary and customary meaning of the
terms "circumferential" and "linear" is "neighboring" and "continuous,"
respectively. Final Act. 5 (citing Merriam-Webster Online: Dictionary and
Thesaurus, hereinafter "Merriam-Webster Dictionary"). Based on these
definitions, the Examiner then determines that needles 47 of Cortese '554
are "formed on the peripheral region of the base surface in the
circumferential direction" and "ha[ ve] a linear cross section." Id. (citing
Cortese '554, Figs. 1, 2).
Appellants contend the Examiner's interpretation of the terms
"circumferential" and "linear" is unreasonably broad. Appeal Br. 4--5.
Specifically, Appellants argue that "defining 'circumferential' as
'neighboring' is not proper" because the Merriam-Webster Dictionary
defines the term "circumferential" as: "1. the perimeter of a circle" or "2. the
external boundary or surface of a figure or object: periphery[.]" Id. at 5.
Appellants further assert that the Examiner's interpretation of the term
"linear" is also improper because none of the various definitions in the
Merriam-Webster Dictionary includes "continuous." Id. Thus, according to
Appellants, as the Examiner's interpretation of the terms "circumferential"
and "linear" is not reasonable, Cortese'554 fails to disclose
Id.
i) a perforation element which comprises a base surface and at
least one perforation means formed on the peripheral region of
the base surface in the circumferential direction, or ii) the at
least one perforation means has a linear cross section which is
bent along the circumference of the base surface to protrude
perpendicularly from the peripheral region of the base surface.
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Appeal2017-007817
Application 13/687,045
In the Answer, the Examiner responds that the dictionary definitions
in the Final Action "was an error." Examiner's Answer 11 (dated Mar. 1,
2017, hereinafter "Ans."). Nonetheless, the Examiner takes the position that
"Cortese '554 teaches exactly the at least one perforation means 47 has a
linear cross section; (the linear cross section of perforation means 47 as
shown under Figs. 1-2, i-f 0026)." Id.
Claims are to be given their broadest reasonable interpretation
consistent with the Specification, reading claim language in light of the
Specification, as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In
this case, we agree with Appellants that an ordinary and customary meaning
of the term "linear" is "(1) : of, relating to, resembling, or having a graph
that is a line and especially a straight line : straight (2) : involving a single
dimension." Appeal Br. 5 (emphasis added). 2 Such an interpretation is
consistent with Appellants' Specification, which describes that "first
perforation means 5 are designed as perforation points 5' which, in the
projection in the axial direction 6, have virtually a linear cross section 36."
Spec. 19, 11. 8-10. For example, Appellants' Figure 2a depicts linear cross-
section 36 as a line. Accordingly, in light of the ordinary and customary
meaning of the term "linear" and of Appellants' Specification, a person of
ordinary skill in the art would readily understand the term "linear" to entail a
line.
Cortese '554 discloses "a number of substantially cylindrical needles
47." Cortese '554, para. 23, Fig. 1. As an artisan must be presumed to
2 See also www.merriam-webster.com/dictionary/linear (last accessed on
Apr. 19, 2018).
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Appeal2017-007817
Application 13/687,045
know something about the art apart from what the references disclose, the
skilled artisan would readily recognize that the cross section of a cylinder
protruding in the axial direction is a circle. See In re Jacoby, 309 F.2d 513,
516 ( CCP A 1962 ). The Examiner does not explain adequately how the
circular cross-section of cylindrical needles 47 of Cortese '554 forms a
"linear cross section," as called for by claim 1.
Accordingly, the Examiner's conclusory finding in the Answer that
"Cortese '554 teaches exactly [that] the at least one perforation means 47
has a linear cross section," is speculative. As the Examiner does not rely on
the disclosure of Aardenburg to remedy the deficiency of Cortese '554, we
find that the Examiner's legal conclusion of obviousness is not supported by
sufficient factual evidence, and thus, cannot stand. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967).
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 1, 4--6, and 8 as unpatentable
over Cortese '554 and Aardenburg.
Rejections III-VII
The Examiner's use of the Ozanne, McKnight, Cortese '888, Favre,
LeBaron, and Cortese '980 disclosures does not remedy the deficiency of the
Examiner's combination of Cortese '554 and Aardenburg discussed supra.
See Final Act. 8-16.
Therefore, for the same reasons as discussed above, we also do not
sustain Rejections III-VII.
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Appeal2017-007817
Application 13/687,045
DECISION
The Examiner's decision to reject claims 1-11 as indefinite is
affirmed.
The Examiner's decision to reject claims 1-11 as unpatentable under
35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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