Ex Parte Fond et al

Board of Patent Appeals and Interferences

Dec 9, 2008

10305023 (B.P.A.I. Dec. 9, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte OLIVIER FOND,
JEAN-PIERRE PLEISCH,
ROLAND ROSSIER,
JACQUES SCHAFFER and
ALFRED YOAKIM
____________

Appeal 2008-3600
Application 10/305,023
Technology Center 1700
____________

Decided: December 9, 2008
____________

Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
JEFFREY T. SMITH, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-6 and 8-24. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM the Examiner's decision.
Appeal 2008-3600
Application 10/305,023

Statement of the Case

Appellants claim a sachet 1 for preparing a beverage comprising:
a compact roast and ground coffee cake 5 having opposed surfaces
and a peripheral edge 4 generally normal to the opposed surfaces, wherein
one of the opposed surfaces is substantially convex and configured for
ensuring leaktightness in an extraction chamber that is configured for
injecting water into the sachet and extracting the coffee; and
an outer sheet 2, 3 of a flexible sheet material that is impermeable to
oxygen and water vapor (Figs. 1-2; claim 1), wherein the sheet material
comprises a multilayer structure that includes an outer layer of plastic, an
inner layer of plastic, and a central layer of aluminum (claim 18).
Representative independent claims 1 and 18 read as follows:
1. A sachet for preparation of a beverage, comprising

a compact roast and ground coffee cake having first and second cake
opposed surfaces extending within a peripheral cake edge, the first opposed
surface being substantially convex and configured for ensuring leaktightness
in an extraction chamber that is configured for injecting water into the sachet
and extracting the coffee, the peripheral edge having a peripheral surface
that is generally normal to the opposed surfaces; and

an outer sheet of a flexible sheet material that is impermeable to
oxygen and water vapour, the outer sheet containing and impermeably
sealing the cake therein, the outer sheet comprising first and second sheet
members disposed adjacent the first and second opposed surfaces,
respectively, and sealed at a sealing zone adjacent the peripheral edge.

18. A sachet for preparation of a beverage, comprising:

a compact roast and ground coffee cake having first and second cake
opposed surface extending to a peripheral case edge; and
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an outer sheet of a flexible material that is impermeable to oxygen and
water vapour, the outer sheet containing and impermeably sealing the cake
therein, wherein the outer sheet material comprises a multilayer structure
that includes:

an outer layer made of plastic,

an inner layer made of plastic, and

a central layer made of an aluminum material and disposed
between the outer and inner layers.

The references set forth below are relied upon by the Examiner as
evidence of obviousness:
Yates US 2,186,087 Jan. 9, 1940
Petrozzo US 3,373,677 Mar. 19, 1968
Gidge US 3,445,237 May 20, 1969
Hudson US 3,511,666 May 12, 1970
Fasano US 3,607,297 Sep. 21, 1971
Schmidt US 3,812,273 May 21, 1974
Molenaar US 3,937,134 Feb. 10, 1976
Illy ('694) US 4,254,694 Mar. 10, 1981
Illy ('894) US 4,555,894 Dec. 3, 1985
Rossi US 4,747,250 May 31, 1988
Dinos US 4,983,410 Jan. 8, 1991
Rehman US 5,012,629 May 7, 1991
Gruenbacher US 5,298,267 Mar. 29, 1994
Hesser GB 939 934 Oct. 16, 1963
Bognar CH 495 138 (Swiss) Oct. 15, 1970
(as translated)
Jacobs Café CH 636 311 A5 (Swiss) May 31, 1983
(as translated)
Shah GB 2 183 459 A Jun. 10, 1987
Belville EPA 0 229 920 A1 Jul. 29, 1987
Illy ('432) EPA 0 272 432 A1 Jun. 29, 1988

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Blanc EPA 0 457 708 A1 Nov. 21, 1991
(as translated)
Favre WO 92/07775 May 14, 1992
(as translated)

The Wiley Encyclopedia Packaging Technology, pp. 317-325, 338-341,
346-351, 453-464, and 668-675 (1986).

The Examiner has made the following rejections under 35 U.S.C.
§ 103(a):
Claims 1-6, 10-15, and 18-24 are rejected over the combination of
Fasano, Belville, and Jacobs Café, wherein any one of these three references
is applied as a primary reference in further combination with Bognar, Rossi,
Illy '432, Illy '894, Illy '694, Blanc, Schmidt, Favre, and Wiley;
Claim 8 is rejected over the references applied against claim 1 and
further in view of Hudson, Gidge, and Rehman;
Claim 9 is rejected over the references applied against claim 1 and
further in view Dinos, Gruenbacher, Shah, Hesser, and Yates;
Claim 16 is rejected over the references applied against claim 1 and
further in view of Petrozzo; and
Claim 17 is rejected over the references applied against claim 1 and
further in view of Molenaar.

Issues
Have Appellants shown error in the Examiner's conclusion that it
would have been prima facie obvious to combine the applied references in
such a manner as to yield the claimed invention; and, if not, have
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Appellants presented evidence of nonobviousness which outweighs the
reference evidence of obviousness?
Findings of Fact
Fasano discloses a packet (i.e., sachet) for preparation of a beverage
such as coffee comprising upper and lower foils of aluminum or plastic or
other air-impervious material which are hermetically sealed together,
thereby forming a pocket containing a solid substance for preparing the
beverage such as powdered coffee (col. 1, ll. 34-54, col. 2, ll. 63-66).
Fasano does not disclose the claim 1 limitation that the packet contains
coffee in the form of "a compact roast and ground coffee cake having first
and second cake opposed surfaces extending within a peripheral cake edge,
the first opposed surface being substantially convex and configured for
ensuring the leaktightness in an extraction chamber that is configured for
injecting water into the sachet and extracting the coffee, the peripheral edge
having a peripheral surface that is generally normal to the opposed surfaces."
Fasano also does not disclose the claim 18 limitation "a compact roast and
ground coffee cake" or "an outer sheet . . . [comprising] a multilayer
structure" that includes inner and outer layers of plastic with a central layer
of aluminum material disposed therebetween.
Belville discloses a package (i.e., sachet) containing a coffee tablet
and comprising flexible walls formed from any conventional, gas-
impermeable, sheet-like material such as a multi-layer film including a thin
metallic layer on a polymeric substrate (Abstract, 9 last ¶). Belville does not
disclose that the coffee tablet includes the claim 1 limitation "first opposed
surface being substantially convex and configured for ensuring leaktightness
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in an extraction chamber that is configured for injecting water into the sachet
and extracting the coffee, the peripheral edge having a peripheral surface
that is generally normal to the opposed surfaces." Belville also does not
disclose that the multi-layer package film includes inner and outer layers of
plastic having a central aluminum layer therebetween as required by claim
18.
Jacobs Café discloses a prior art package (i.e., sachet) containing
densified ground coffee in tablet form (Translation 4, second ¶) and further
discloses a package (i.e., sachet) specifically designed for use in pressure
brewing systems comprising package material of plastic films or metal foils
containing ground coffee densified into tablet form wherein the package
material is perforated and the coffee tablet is disintegrated prior to the
brewing operation (Translation Abstract and pages 6-7; Figs. 1-4). Jacobs
Café does not disclose that the coffee tablet includes an opposed surface
which is "substantially convex" as required by claim 1. As clarification,
Figure 4 of Jacobs Café shows an opposed surface having a convex shape,
but this shape is formed after the coffee tablet has been disintegrated.
Jacobs Café also does not disclose the multi-layer structure required by
claim 18.
Packaged ground coffee having an opposed surface that is
substantially convex and a peripheral surface that is generally normal to the
opposed surfaces is known in the prior art as evinced by Bognar (Figs. 2, 5,
6), Rossi (Figs. 1-2), Illy '432 (Figs. 1-3), Illy '894 (Figs. 9-10), Illy '694
(Fig. 1), and Blanc (Figs. 3, 4, 7).
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The prior art further includes multi-layer material comprising
aluminum and/or plastic for packaging coffee as evinced by Belville
(discussed above), Favre (Figs. 12a-12b; paragraph bridging Translation
19-20), and Schmidt (Figs. 4-5; col. 2, ll. 39-52).
Wiley discloses packaging for foods generally which comprises a
multi-layer structure having inner and outer layers of plastic with a central
aluminum layer therebetween (e.g., para. bridging 349-50).
Principles of Law
"When a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same field
or a different one." KSR Int'l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740
(2007). In determining whether there was an apparent reason to combine
known prior art elements in the fashion claimed, "the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." Id., 127 S. Ct. at 1741.
"A nexus between the merits of the claimed invention and evidence of
secondary considerations is required in order for the evidence to be given
substantial weight in an obviousness decision." Ruiz v. A.B. Chance Co.,
234 F.3d 654, 668 (Fed. Cir. 2000) (quoting Simmons Fastener Corp. v. Ill.
Tools Works, Inc., 739 F.2d 1573, 1575 (Fed. Cir. 1984)). Put another way,
commercial success or other secondary considerations may presumptively be
attributed to the claimed invention only where "the marketed product
embodies the claimed features, and is coextensive with them." Ormco Corp.
v. Align Tech. Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006) (quoting Brown
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& Williamson Tobacco Corp. v. Phillip Morris, Inc., 229 F.3d 1120, 1130
(Fed. Cir. 2000)).
Analysis
Initially, we observe that Appellants discuss many of the commonly-
rejected dependent claims without presenting, under a separate subheading, a
reasonably specific explanation of why the dependent claim feature is
thought to be patentable over the applied prior art. See, for example, the
discussion of dependent claim 2 on page 14 of the Appeal Brief. Such
discussions are not considered to be an argument for separate patentability of
the commonly rejected dependent claims in question pursuant to the
requirements of 37 C.F.R. § 41.37(c)(1)(vii).
Appellants characterize the claimed sachet as being for use in a coffee
brewing system which relies on pressurized extraction as opposed to some
(though not all) of the applied references which brew coffee in a gravity-
feed, filter brewing system. Appellants argue that, "[t]here would be no
reason to look to the other references concerning filter brewing, for example,
to improve the pressurized extraction of the present invention" (App. Br.
12). This argument is unpersuasive for a number of reasons.
First, Appellants have not established that the claimed sachet is in any
way limited to use in a pressure extraction system. To the contrary, the
language of independent claims 1 and 18 defines a sachet without regard to
the type of system in which it is to be used. Specifically, claim 18 contains
no recitation at all concerning system type. While claim 1 recites "in an
extraction chamber that is configured for injecting water into the sachet and
extracting the coffee," this recitation encompasses an extraction chamber in
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which water in injected by a gravity-feed filter brewing system.
Second, even if the claimed sachet is limited for use in a pressurized
extraction rather than a gravity-feed system, the argument under
consideration still would be unpersuasive. This is because Appellants have
merely alleged without establishing that no reason exists for looking to
references concerning gravity-feed filter brewing systems when seeking to
improve prior art sachets including those used in pressurized extraction
systems. Moreover, this allegation is contrary to the established legal
principle that design incentives and other market forces can prompt
variations of a prior art device (e.g., a sachet) based on teachings either in
the same field of endeavor or a different one.
For these reasons, Appellants have not shown error in the Examiner's
conclusion that it would have been obvious for one with ordinary skill in this
art to provide the coffee-containing package (i.e., sachet) of Fasano, Belville
or Jacobs Café with a coffee cake having an opposed surface which is
substantially convex and with a peripheral edge which is generally normal to
the opposed surfaces in view of Bognar, Rossi, Illy '432, Illy '894, Illy '694,
and Blanc which evince that coffee cakes having these features are known in
the prior art. Likewise, Appellants have shown no error in the Examiner's
conclusion that it would have been obvious to configure such a coffee cake
"for ensuring leaktightness in an extraction chamber" as required by claim 1.
On the other hand, this last mentioned obviousness conclusion is reasonable
on its face since leaktightness in an extraction chamber would be necessary
to maximize the effectiveness of the brewing operation. Finally, appellants
have shown no error in the Examiner's conclusion that it would have been
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obvious to provide the package of Fasano, Belville, or Jacobs Café with an
outer sheet having a multi-layer structure of the type defined by claim 18 in
view of the combined teachings of Belville, Schmidt, Favre, and Wiley
which evince that such multi-layer structures are known in prior art
packaging for foods generally and coffee specifically.
In summary, the applied references establish that the features recited
in claims 1 and 18 are known in the prior art and that it would have been
prima facie obvious to combine these features and predictably use them
according to their established functions.
In support of their nonobviousness position, Appellants proffer two
declarations under 37 C.F.R. § 1.132 by Alfred Yoakim signed February 14,
2002 (first Yoakim Declaration) and February 25, 2005 (second Yoakim
Declaration).
According to Appellants (App. Br. 13), the first Yoakim Declaration
indicates that the claim 1 convex shape facilitates leaktightness and that such
an advantage would have been surprising based on the teachings of Jacobs
Café. However, this Declaration is silent as to why a leaktightness
advantage would have been surprising over the other applied references and
is silent as to why leaktightness would not have been a desirable and
expected feature of a coffee package or sachet designed to maximize
brewing effectiveness as discussed above. Additionally, the first Yoakim
Declaration statements are based on a coffee cake wherein both opposed
surfaces have a convex shape (Decl. 2), and none of the argued claims is so
limited.
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Appellants also rely on the first Yoakim Declaration as evidence of
commercial success (App. Br. 22-23). The commercial success statements
in the first Yoakim Declaration (Decl. 5-6) are not supported by objective
evidence and, perhaps more importantly, do not establish a nexus between
the merits of the claimed invention and the alleged commercial success. In
this latter regard, we point out that any commercial success enjoyed by the
claimed sachet may be due solely to commercial success of the specific
pressure extraction system for which the claimed sachet has been designed.
Appellants rely on the second Yoakim Declaration as showing
unexpected results for the multi-layer structure required by claim 18 (as well
as other claims so limited) (App. Br. 19-22). According to Declarant, these
unexpected results relate to more desirable openings formed in a multi-
layered structure having an inner layer of OPP, an aluminum central layer,
and an outer layer of PET as compared to single layer sheets of aluminum
and plastic respectively (Decl. 2-3). This second Yoakim Declaration, like
the first, does not provide objective evidence in support of the
nonobviousness indicia statements and does not establish a nexus between
these statements and the claimed sachet. Concerning this last mentioned
deficiency, we observe that the Declaration does not specify details of the
multi-layer structure (e.g., layer thicknesses) and that Appellants have
identified no claim which possesses all such details (e.g., the materials and
thicknesses of the multi-layer structure discussed in the Declaration).
Appellants also present separate arguments for each of separately
rejected claims 8, 9, 16, and 17 (App. Br. 23-28). However, these arguments
are unpersuasive for reasons analogous to those discussed above.
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Specifically, the arguments regarding claims 8 and 9 broadly allege that the
applied references contain no teaching or suggestion of the features required
by these claims but do not specifically identify error in the Examiner's
obviousness rationale (cf., App. Br. 24-25 with Ans. 10-11). Moreover, the
arguments regarding claims 16 and 17 are defectively based on the incorrect
proposition that prior art teachings relating to gravity-feed filter brewing
systems may not be properly combined with those relating to pressure
extraction systems.
Conclusions of Law
For the above stated reasons, Appellants have failed to show error in
the Examiner's conclusion that it would have been prima facie obviousness
to combine the applied references in such a manner as to yield the claimed
sachet and have failed to present evidence of nonobviousness which
outweighs the Examiner's reference evidence of obviousness.
Therefore, we sustain each of the § 103 rejections advanced by the
Examiner in this appeal.
Order

We affirm the decision of the Examiner.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

cam
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