Ex Parte Giordano et al

Patent Trial and Appeal Board

Jun 30, 2016

12860157 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/860, 157 08/20/2010 Samuel A. Giordano
23644 7590 07/05/2016
Barnes & Thornburg LLP (CH)
P.O. Box 2786
Chicago, IL 60690-2786
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.
27726-113384 9446
EXAMINER
NGO,LIENM
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
Patent-ch@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMUEL A. GIORDANO, BURTON L. HART, and
JOHN T. KNEPLER
Appeal2014-006980
Application 12/860,157
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Samuel A. Giordano et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's final decision rejecting claims 1-15. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
Appeal2014-006980
Application 12/860,157
CLAIMED SUBJECT MATTER
The claims are directed to "a system which provides a count-up timer
operating in relation to beverage freshness." Spec. i-f 2. Claims 1 and 8,
reproduced below, are illustrative of the claimed subject matter:
1. A beverage dispensing system which includes a server, a
sensing system coupled to the server for detecting a quantity of
beverage retained in the server, a display coupled to the sensing
system, and a count-up timer coupled to the system, the count-
up timer being operable to begin counting the time from the start
of filling of the beverage server with beverage and operable to
being reset only after uncoupling the server from the sensing
system, sensing the server is empty and detecting filling of the
beverage server to a predetermined quantity of beverage.
8. A method for sensing a quantity of beverage in a beverage
server compnsmg,
providing a beverage server,
providing a timer coupled to the server,
operating the timer to begin counting the time from filling
of the beverage server with a predetermined quantity of beverage
to a first predetermined time,
displaying the time being counted on a display using a first
active indicia to display the time counted from filling to reaching
the first predetermined time,
continuing counting from the first predetermined time to a
second predetermined time while displaying the time being
counted using a second active indicia which is different from the
first active indicia, and
stopping the counting upon reaching the second
predetermined time and displaying the second predetermined
time.
REFERENCES RELIED ON BY THE EXAMINER
Doorhy
Woods
Chow
US 7 ,000,468 B2
US 7,874,243 B2
US 2006/0027597 Al
2
Feb.21,2006
Jan. 25, 2011
Feb.9,2006
Appeal2014-006980
Application 12/860,157
REJECTIONS
I. Claims 11-13 and 15 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
II. Claims 1-15 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
III. Claims 1-6 and 11-13 1 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Doorhy and Chow.
IV. Claims 7-10, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Doorhy, Chow, and Woods.
ANALYSIS
Rejection I
Claims 11 and 12
Claim 11 recites, in part, "wherein the step of detecting filling
comprises filling for at least a minimum time whereby filling for less than
the minimum time does not satisfy the requirement of detecting filling of the
beverage server with a predetermined quantity of beverage."
Claim 12 recites, in part, "wherein the step of detecting filling
comprises detecting the rate of filling and if the rate is greater than a
predetermined maximum rate then the filling does not satisfy the
requirement of detecting filling of the beverage server with a predetermined
quantity of beverage."
1 Although the Examiner includes claim 15 in the discussion of Rejection III
(but not in the heading for Rejection III), we understand this to be an
inadvertent error in that claim 15 depends from claim 8, which was rejected
under Rejection IV. See Final Act. 4--5. Accordingly, we treat claim 15 as
being rejected under Rejection IV.
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As to claim 11, the Examiner takes the position that one of ordinary
skill in the art would not "understand what is a minimum time required," as
recited and would not know whether "the step of detecting filling [does] not
satisfy filling less than the minimum time." Ans. 7. As to claim 12, the
Examiner takes the position that one of ordinary skill in the art would not
"understand what is a predetermined maximum rate required," and whether
"the step of detecting filling [is] not satisf[ied] if the rate of filling is greater
that the predetermined maximum rate." Id.
Appellants assert that paragraph 27 of the Specification provides an
example "to demonstrate that a 'minimum time' is substantially the time to
dispense an amount of freshly brewed coffee into a server during the
brewing process," and discloses that "it may take 3 to 6 minutes during the
brewing process to dispense a gallon of fresh coffee into a server." Reply
Br. 3. Appellants also assert that paragraph 33 discloses that "'a rate
dependent refill can be used to reset the timer."' Id. Appellants thus argue
that "one of ordinary skill in the art would understand from Appellants'
disclosure that filling the beverage server for a 'minimum time' provides
some assurance that freshly brewed coffee has been provided to the server,"
and is a basis for resetting the timer. Id. at 4. Appellants argue that, by
contrast, "[a] failure to fill the beverage server for at least a 'minimum time'
(or faster than a maximum rate) will prevent the start of the count-up
freshness timer." Id. Appellants therefore posit that "it is evident that
Appellants invented and were in possession of the subject matter" of claims
11 and 12. Id. at 4--5.
Paragraph 27 of Appellants' Specification discloses a refill based on a
volume per unit time, namely, a gallon per approximately 3-6 minutes.
Spec. i-f 27. Appellants use such a rate-dependent refill to prevent other than
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Application 12/860,157
fresh beverage being placed in the server. Id. Based on this disclosure, one
of ordinary skill in the art would understand how much time and what rate is
required to refill a particular server, and also would be able to determine an
elapsed time. By the same token, one of ordinary skill in the art would
understand whether the elapsed time is less than a minimum time required
for filling, and whether the rate is greater than a maximum rate required for
filling. As such, we agree with Appellants that paragraph 27 of the
Specification supports the disputed claim limitations. Accordingly, we do
not sustain the Examiner's rejection of claims 11 and 12 as failing to comply
with the written description requirement.
Claims 13 and 15
Claims 13 and 15 each recite, in part, "displaying the level of
beverage in the beverage server so that the level may be viewed by the
operator but not by the customer."
The Examiner takes the pos1t10n that the Specification does not
disclose "what is required for the beverage level displaying to [be] view[ ed]
by the operator but not by the customer." Ans. 8
Appellants assert that "one of ordinary skill in the art would
understand from Appellants' disclosure why it is desirable for the operator
but not the customer to view the level of beverage in the beverage server."
Reply Br. 6 (citing Spec. i-f 28). Appellants also assert that, based on
paragraph 28, "one of ordinary skill in the art would know how to display
'the level of beverage in the beverage server so that the level may be viewed
by the operator but not by the customer' as recited in claims 13 and 15." Id.
(emphasis added).
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Paragraph 28 of the Specification discloses that indicia that indicate
the level of the beverage in the server "may be designed to provide
information to the operator while not making the information intuitively
clear to a customer," that "[i]n this regard, it may be desirable to veil some
information so that the operator knows to brew another quantity of
beverage," and that "such veiling may be useful so as to not allow a
customer to determine a certain level of beverage." Spec. i-f 28. Although
the term "veil" is often used to mean conceal, based on the context in
Appellants' Specification, it is used by Appellants to mean "to make not
readily understandable." See also id. i-f 29, wherein Appellants' use the
terms "obfuscate" and "misinterpretation" with respect to "veiling."
Because there is a difference between not being viewed and being viewed
but not understood, we agree with the Examiner that the original disclosure
does not convey with reasonable clarity to those of skill in the art that, as of
the filing date, the inventors were in possession of the invention recited in
claims 13 and 15. Therefore, we sustain the Examiner's rejection of claims
13 and 15 as failing to comply with the written description requirement.
Rejection II
Claim 1
Claim 1 recites, in part, that the count-up timer is "operable to being
reset only after uncoupling the server from the sensing system, sensing the
server is empty and detecting filling of the beverage server to a
predetermined quantity of beverage."
The Examiner takes that position that it is unclear "[ w ]hat is required
for or how to prevent the timer being operable to reset only after" these
criteria are met, and "how to sense the server is empty and how to detect[]
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filling the beverage server to a predetermined quantity of beverage without
the sensing system." Ans. 8.
Appellants assert that paragraph 26 discloses that "it may be
undesirable to allow an operator of the equipment to reset the timer without
providing verification that fresh beverage is actually dispensed to the server
24," and that this "disclosure explains that the reset steps help to ensure that
fresh beverage is provided, hence the need for a timer that is reset only after
uncoupling, sensing the server is empty and detecting filling as recited in
claim 1." Reply Br. 7. Appellants point out that paragraphs 31-33 of the
Specification disclose uncoupling, how to sense the server is empty, and
how to detecting filling to a predetermined quantity of beverage. Appeal Br.
7.
We agree with Appellants that one of ordinary skill in the art would
understand what is being claimed. See Reply Br. 7. Paragraph 26 of
Appellants' Specification discloses that "sensing system 20 can be
configured to require removal or uncoupling 90 of the sensing system 20
from the server 24." Spec. i-f 26. Paragraph 32 discloses that "[t]he emptied
condition can be sensed by the sensing system once it is recoupled 98 with
the server," and that a false emptied condition "can be avoided by providing
an appropriately long dwell time for indicating the emptied container
condition." Id. i-f 32. Paragraph 33 discloses that "sensors may be placed in
different level of the server and monitored for contact or other activation
within a generally predetermined time indicating an appropriate refill cycle."
Id. i-f 33. As such, one of ordinary skill in the art would understand what is
required for a reset and how the sensing system is configured to operate. In
view of this, we do not sustain the indefiniteness rejection of claim 1.
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Claims 2, 3, 7, 13 and 142
Claim 2 is an independent claim directed to a method for sensing a
quantity of beverage, and recites, in part, "resetting the timer to begin
counting the time from filling of the beverage server with a predetermined
quantity of beverage only after, sensing the server is empty, and detecting
filling of the beverage server with a predetermined quantity of beverage."
The Examiner takes the position that it is unclear "what steps of the
method for sensing a quantity of beverage in a beverage server" are required,
and "what is required to do the step of setting the timer only after sensing the
server is empty and detecting filling of the beverage of the beverage server
with a predetermined quantity of beverage." Ans. 9. The Examiner also
takes the position that it is unclear whether "a quantity of beverage" is the
same as "a predetermined quantity of beverage."
Appellants assert that the steps of claim 2 include "providing a
beverage server" and "providing a timer coupled to the server," and that
these steps "are proper method steps that one of ordinary skill in the art
would know how to perform." Reply Br. 8. Appellants argue that the
Examiner "does not offer any reason why one of ordinary skill in the art
would not know how to perform these steps." Id. Appellants also argue that
the resetting is disclosed in paragraph 26 of the Specification. Id. at 9.
Appellants further assert that the terms "a quantity of beverage" and "a
predetermined quantity of beverage" are not the same. Appellants point out
that at least paragraphs 13 and 33 of the Specification use these terms with
different meanings. Appeal Br. 8-9.
2 Although the Examiner does not separately discuss claims 3, 7, 13,
and 14, we understand these claims to be rejected based on their dependence
from claim 2. See Final Act. 3--4.
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Application 12/860,157
As discussed supra, paragraph 26 of the Specification discloses a reset
and paragraphs 32 and 33 disclose what is required for the reset. As such,
we agree with Appellants that based on this disclosure, one of ordinary skill
in the art would understand what is required for a reset. Because Appellants
consistently use the term "a quantity of beverage" to mean any level of
beverage (see Specification i-f 13; see also Appeal Br. 7-8) and consistently
use the term "a predetermined quantity of beverage" to mean a specific level
(see Specification i-f 33; see also Appeal Br. 8), one of ordinary skill in the
art would understand that the terms "a quantity of beverage" and "a
predetermined quantity of beverage" are not the same. In view of the above,
we do not sustain the indefiniteness rejection of claim 2 and of claims 3, 7,
13, and 14 depending therefrom.
Claim 4
The Examiner's position is that "it cannot be determined what is
required to perform the step of 'preventing resetting until sensing system has
been uncoupled from the server."' Final Act. 3.
Appellants assert that paragraph 31 of the Specification discloses
uncoupling and that "from, for example, paragraph 0031 one of ordinary
skill in this art would have understood the resetting and uncoupling, i.e.,
would have understood what is claimed." Appeal Br. 8.
Paragraph 31 of the Specification discloses that "the uncoupling may
be a physical or operational (control) uncoupling" and that for uncoupling to
occur, "the system must acknowledge that the sensing activity has ceased, at
least for some predetermined period of time." Spec. i-f 31. As such, we
agree with Appellants that one of ordinary skill in this art would have
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understood the resetting and uncoupling requirements of claim 4.
Accordingly, we do not sustain the indefiniteness rejection of claim 4.
Claims 5, 6, 11, and 12
The Examiner takes the position that "it cannot be determined what is
required to perform the step of 'preventing resetting of the timer."' Final
Act. 3. The Examiner also states that it is unclear "whether [in claim 5] 'a
predetermined quantity of beverage"' is the same as "'a predetermine
quantity of beverage' in claim 2." Id. at 3--4.
Appellants assert that claim 5 adds the third requirement for resetting
as discussed with claim 1. Appeal Br. 9. Appellants also assert that the
different terms were previously discussed in claim 2. See Id. at 9--10.
We agree with Appellants that one of ordinary skill in the art would
understand what is being claimed. See Appeal Br. 9. As discussed supra
with respect to claim 1, paragraph 26 of the Specification discloses
uncoupling, paragraph 32 discloses an emptied condition, and paragraph 33
discloses filling with a predetermined quantity. From this disclosure, one of
ordinary skill in the art would understand what these terms mean and what is
required to perform or prevent a reset of the timer. Furthermore, based on
Appellants' consistent use the terms "a quantity of beverage" and "a
predetermined quantity of beverage," each subsequent use would be the
same as the initial use and one of ordinary skill in the art would understand
which term is being used. In view of the foregoing, we do not sustain the
indefiniteness rejection of claims 5, 6, 11, and 12.
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Claims 8 and 15 3
The preamble of claim 8 recites, "[a] method for sensing a quantity of
beverage in a beverage server comprising." The Examiner takes the position
that, "[i]t cannot be determined what is required to perform for the method
for sensing a quantity of beverage." Final Act. 4
Appellants assert that each of the recited "steps is supported in
Applicants' disclosure and one of ordinary skill in this art would have
understood what is claimed." Appeal Br. 9 (emphasis added). Appellants
assert that paragraph 13 discloses beverage system 20 and how beverage
system 20 "is used to detect a level or quantity of beverage." Id. Appellants
also assert that "it does not matter what 'predetermined quantity of
beverage' is assigned to the claim 8 operating step, one of ordinary skill in
the art would understand how and when to operate the timer after a
predetermined quantity of beverage has been introduced into the server."
Reply Br. 11.
Although the individual steps recited in the body of claim 8 may be
clear (and supported), it is not apparent how the stated goal of "sensing a
quantity of beverage" is met by or even related to the recited process steps.
Specifically, it is unclear how the preamble relates to the steps because,
unlike claim 2, which has the same preamble, the steps do not include
sensing or any other term related to level or quantity. Thus, Appellants'
contention that the recited steps are clear and supported does not address
the Examiner's rejection. Moreover although paragraph 13 of the
Specification discloses that "beverage sensing system 20 is to be broadly
interpreted to include by way of illustration and not [limited to] inductive,
3 Because the Examiner does not separately discuss claim 15, we
understand claim 15 to be rejected based on its dependence from claim 8.
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conductive, acoustic, optical, magnetic, weight or any other type of system
which is used to detect at least the level or quantity of beverage 28," claim 8
does not recite a beverage sensing system, and as such, this paragraph by
itself is insufficient to relate the preamble to the steps of claim 8. Further,
the Examiner's rejection is based on whether claim 8 is indefinite, not
whether the method of sensing in the preamble of claim 8 is enabled by the
Specification and finds written descriptive support therein. Accordingly,
Appellants' arguments regarding the alleged clarity of claim 8 are not
persuasive, and we sustain the indefiniteness rejection of claim 8 and of
claim 15 depending therefrom.
Claims 9 and 10
For dependent claim 9, aside from the above-noted issue regarding
independent claim 8, the Examiner takes the position that it is unclear
"whether 'a predetermined quantity of beverage' in line 2 is the same with 'a
predetermined quantity of beverage' in claim 8." Final Act. 4. Further, for
dependent claim 10, the Examiner takes the position that it is unclear
"whether 'a display' in line 2 is the same [as] 'a display' in claim 8." Id.
Appellants assert that "reference in claim 9 to a predetermined
quantity of beverage is a reference to the predetermined quantity of beverage
in claim 8[,] and this is a proper reference," and that "reference in claim 10
to a display is a reference to the display in claim 8[,] and this is a proper
reference." Appeal Br. 10.
We agree with Appellants that claims 9 and 10 properly refer back to
claim 8, because claim 9 refers back to "filling the beverage server" as
initially recited in claim 8, and claim 10 refers back to "the step" of
displaying recited in claim 8 and includes the language required by that step.
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Thus, although we sustain the Examiner's rejection of independent claim 8
as indefinite, we do not sustain the indefiniteness rejection of dependent
claims 9 and 10 for the additional reasons presented by the Examiner that are
specific to these claims.
Rejection III
Claim 1
The Examiner finds that Doorhy discloses most of the features of
claim 1 including a timer 94 coupled to the system, but that the timer is not a
count-up timer. Final Act. 4--5 (citing Doorhy, col. 5, 11. 45-55 and col. 7, 11.
1-3). The Examiner relies on Chow for teaching "a timer coupled to a
beverage system being a reset to count down or to count up as well known in
the art." Id. at 5 (citing Chow i-f 26). The Examiner concludes that "it would
have been obvious to one having ordinary skill in the art at the time the
invention was made to provid[e] the invention ofDoorhy et al., with a count-
up timer for determmmg the freshness of the beverage to be dispensed." Id.;
see also Ans. 10.
Appellants argue that claim 1 requires that the timer is operable to
being reset only after three criteria are met, namely, "uncoupling the server
from the sensing system, sensing the server is empty and detecting filling of
the beverage server to a predetermined quantity of beverage." Appeal Br.
11. Appellants assert that Chow's timer as disclosed at paragraph 26 of
Chow does not disclose these criteria and that the timer of Doorhy is not a
timer operable to being reset only after uncoupling the server from the
sensing system, sensing the server is empty and detecting filling of the
beverage server to a predetermined quantity of beverage as recited in claim
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1." Id.; see also Reply Br. 15. Appellants thus assert that "the office action
does not provide a prima facie basis for the rejection." Id.
In the Answer, the Examiner asserts that "the functions (counting,
filling, sensing, detecting) as claim 1, to program and to perform the method
as claims 2---6, 11 and 12, and to display not viewing or veil from the
customers as claims 13 and 15 are well known within one of ordinary skill in
the art." Ans. 11 (emphasis added).
In reply, Appellants argue that the Examiner's assertion that certain
functions are well known includes "no analysis and no identification of prior
art establishing what is alleged to be well known," and as such, "[t]his
unsupported assertion evidences that the rejection is not sustainable." Reply
Br. 16.
We agree with Appellants on this issue. Although the Examiner
asserts that the functions as recited in claim 1 are well known, the Examiner
does not adequately explain of how the timer of either Doorhy or Chow is
operable to be reset only after performing the functions recited in claim l or
whether it would have been obvious to further modify the combination of
Doorhy and Chow to include this feature. Nor does the Examiner make any
findings as to whether either Doorhy or Chow are capable of uncoupling the
server from the sensing system, sensing the server is empty and detecting
filling of the beverage server to a predetermined quantity of beverage in
order to reset the timer. Accordingly, because the Examiner's rejection has
not addressed all the limitations recited in claim 1, we do not sustain the
obviousness rejection of claim 1.
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Claims 2-6 and 11-13
The Examiner takes the position that because Doorhy discloses
microcontroller 102 and selector 96, "it would have been obvious to one
having ordinary skill in the art to use the invention of Doorhy in view of
Chow et al. to program and to perform the method as claims 2---6, 11 and
12." Final Act. 5.
Appellants argue that that the Examiner has provided "no reasoning
for the conclusion, just the bare conclusion of obviousness," and thus, "the
rejection does not provide the required prima facie basis." Id.; see also
Reply Br. 15-16.
We agree with Appellants that the Examiner has not established a
prima facie case of obviousness. The mere presence of a microcontroller
does not establish that such microcontroller would operate as recited in
claim 2. Moreover, the Examiner does not adequately explain why it would
have been obvious to operate the microcontroller in such a manner.
Specifically, the Examiner makes no statement regarding a rationale "to
program and to perform the method as [recited in] claims 2-6, 11, and 12."
Final Act. 5. Accordingly, the Examiner does not set forth a prima facie
case ofunpatentability for claims 2---6 and 11-13, and we do not sustain this
rejection.
Re} ection IV
Claims 7 and 14
Claims 7 and 14 depend from claim 2. For the reasons discussed
supra in Rejection III, we do not sustain the Examiner's rejection of claims
7 and 14.
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Claim 8
Independent claim 8 recites, in part,
displaying the time being counted on a display using a first active
indicia to display the time counted from filling to reaching the
first predetermined time, continuing counting from the first
predetermined time to a second predetermined time while
displaying the time being counted using a second active indicia
which is different from the first active indicia.
The Examiner relies on Woods as "disclos[ing], in figs. 2, 4 and 5, a
count-up timer for a beverage system comprising an indication to display the
time to a first predetermined time using first indicia and display the time
from the first predetermined time to the second predetermined time using a
second indicia." Final Act. 5. The Examiner concludes that,
Id.
it would have been obvious to one having ordinary skill in the art
at the time the invention was made to modify the invention of
Doorhy with the indication, as taught by Woods, to display the
time to a first predetermined time using first indicia for a warning
of the approaching time and display the time from the first
predetermined time to the second predetermined time using a
second indicia for indicating the time of disposing.
Appellants argue that "[ e Jach period of time (in Woods) is [thus] only
for a single beverage and Woods' disclosure of plural times is simply an
individual time for each of plural beverages." Appeal Br. 16. Appellants
thus assert that "[ t ]here is no disclosure in Woods of a first and second
predetermined time for a beverage." Id.
We do not agree with Appellants' arguments. Although Woods
discloses plural beverages, for the Figure 5 embodiment, each beverage
includes "signaling member 340, 342, 344 [that] may indicate whether the
beverage in the matched carafe is fresh, will be fresh for only an additional
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preset period of time (warning signal), or when the beverage is no longer
fresh (end of life signal), and may need to be disposed of." Woods, col. 9, 11.
55---60; Fig. 5; see also Final Act. 5. Woods also discloses that "a signaling
member may be a separate light," or could be "provided as part of (timer)
display panel 116." Id. at col. 6, 11. 23-29. Appellants do not adequately
explain why the warning signal (first indicia) and the end of life signal
(second indicia) for Woods' Figure 5 that is part of a display do not meet the
recited limitations. Accordingly, we sustain the Examiner's rejection of
claim 8 as unpatentable over Doorhy, Chow, and Woods.
Claim 9
Claim 9 requires resetting the timer "only after sensing uncoupling of
the server from a sensing system." The Examiner does not explain how the
timer of either Doorhy or Chow is reset only after sensing uncoupling of the
server from a sensing system. Nor does the Examiner make any findings as
to whether either Doorhy or Chow is capable of sensing uncoupling the
server from the sensing system. The Examiner's use of the teachings of
Woods does not remedy the deficiencies ofDoorhy and Chow. Because the
Examiner's rejection has not addressed all the limitations recited in claim 9,
we do not sustain the obviousness rejection of claim 9.
Claim 10
Claim 10 recites, in part, that "displaying the time being counted on a
display using a first active indicia displays the time in hours and minutes
separated by a flashing colon," and that "using a second active indicia
displays the time being counted with flashing hours, flashing minutes and a
flashing colon separating the flashing hours and flashing minutes."
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Appellants assert that "there is no disclosure in any of Doorhy, Chow
and Woods of the first and second active indicia (i.e., hours and minutes
separated by a flashing colon - first time period and flashing hours, flashing
minutes and a flashing colon - second time period) as recited in claim 10."
Appeal Br. 16. Appellants argue that the Examiner "does not address the
limitations of claim 10 and thus does not provide a prima facie basis for this
rejection." Id. at 16-17.
Although Woods discloses a time readout on a display panel, the
Examiner does not explain adequately how Woods' warning signal includes
time in hours and minutes separated by a flashing colon and where Woods'
discloses an end of life signal that includes time being counted with flashing
hours, flashing minutes and a flashing colon separating the flashing hours
and flashing minutes. Nor does the Examiner explain adequately why it
would have been obvious to provide such features. As such, we agree with
Appellants that because the Examiner does not adequately address the
1. • ' '. ,.. 1 • -1 f\ ,1 T"""1 • 1 ' • 1 1 • ,.. • 1 •
nmnauons or cia1m l u, me 1::1,Xammer nas nm prov1aea a pnma rac1e oasis
for the rejection of claim 10. Therefore, we do not sustain the Examiner's
rejection of claim 10.
Claim 15
Claim 15 recites, in part, "displaying the level of beverage in the
beverage server so that the level may be viewed by the operator but not by
the customer."
The Examiner takes the position that "the location of a displayer is an
obvious matter of design choice for displaying as user's desire." Final Act.
5.
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Appellants assert that whether the level may be viewed by the
operator but not by the customer, "is not mere design choice, but an
important functional requirement." Appeal Br. 13.
In response, the Examiner states,
Note that, as appellant's arguments in pages 4-10 in the current
Appeal Brief, to operate the functions (counting, filling, sensing,
detecting) as claim 1, to program and to perform the method as
claims 2-6, 11 and 12, and to display not viewing or veil from the
customers as claims 13 and 15 are well known within one of
ordinary skill in the art.
Ans. 11 (emphasis added).
The Examiner's reliance upon design choice as a basis to modify
Doorhy is in error. Design choice may be an acceptable rationale for an
obviousness rejection when a claimed device merely arranges known
elements in a configuration recognized as functionally equivalent to a known
configuration. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975). However,
in the present case, the Examiner has not provided evidence that a display
displaying the level of beverage in the beverage server so that the level may
be viewed by the operator but not by the customer as recited in claim 15 is a
known alternative to display 28 shown in Doorhy. Thus, we do not sustain
the Examiner's rejection of claim 15 as unpatentable over Doorhy, Chow,
and Woods.
DECISION
The decision of the Examiner to reject claims 11 and 12 as failing to
comply with the written description requirement is reversed.
The decision of the Examiner to reject claims 13 and 15 as failing to
comply with the written description requirement is affirmed.
19
Appeal2014-006980
Application 12/860,157
The decision of the Examiner to reject claims 1-7 and 11-14 as
indefinite is reversed.
The decision of the Examiner to reject claims 8-10 and 15 as
indefinite is affirmed.
The decision of the Examiner to reject claims 1-6 and 11-13 as
obvious over Doorhy and Chow is reversed.
The decision of the Examiner to reject claims 7, 9, 10, 14, and 15 as
obvious over Doorhy, Chow, and Woods is reversed.
The decision of the Examiner to reject claim 8 as obvious over
Doorhy, Chow, and Woods is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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