Ex Parte Hansen

Patent Trial and Appeal Board

Feb 28, 2019

13612487 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/612,487 09/12/2012
109813 7590 02/28/2019
Fitch, Even, Tabin & Flannery, LLP
120 South LaSalle Street
Suite 2100
Chicago, IL 60603-3406
FIRST NAMED INVENTOR
Nick Andrew Hansen
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.
9610-102405-US 9761
EXAMINER
LACHICA, ERICSON M
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
02/28/2019 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 NICK ANDREW HANSEN
Appeal2018-005241
Application 13/612,487 1
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant filed an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1--4, 7-15, and 19-21 under 35 U.S.C.
§ 103(a)2 as being unpatentable over Karanikos3 in view ofMann. 4 We
have jurisdiction under 35 U.S.C. § 6(b ). 5
1 Appellant identifies Kraft Foods R&D, Inc., as the real party in interest.
Appeal Brief ("Appeal Br." 3) filed Nov. 13, 2017.
2 A rejection under 35 U.S.C. 112, second paragraph, has been withdrawn by
the Examiner. Examiner's Answer dated Feb. 20, 2018 ("Ans." 3).
3 US 2005/0051478 Al, published Mar. 10, 2005.
4 US 2011/0064852 Al, published Mar. 17, 2011.
5 Our Decision additionally refers to the Specification filed Sept. 12, 2012
("Spec.") and the Reply Brief dated Apr. 20, 2018 ("Reply Br.").
Appeal2018-005241
Application 13/612,487
We REVERSE.
BACKGROUND
The subject matter on appeal relates to a cartridge for the preparation
of a beverage (see, e.g., claims 1 and 15). In use, a piercing element enters
the cartridge to permit introduction of water to brew a beverage, such as
coffee, through a filter within the cartridge. Spec. ,r 2. The invention
concerns a guard element housed within the cartridge that supports the filter
and protects the filter from being damaged during piercing of the cartridge.
Id. ,I 6.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief. Limitations at issue are italicized.
1. A cartridge for preparation of a beverage comprising:
a closed container defining a container volume and
including a body, the body having a closed lower end portion
with a piercing surface and an upper end portion opposite the
closed lower end portion, the body including an annular side
wall;
a filter located in the closed container to divide the
container volume into an ingredient chamber volume and a
filtrate volume, wherein the filter is connected to and extends
downward from the upper end portion of the body;
a base of the filter and a side wall of the filter extending
upward from the base toward the upper end portion of the body;
a beverage medium located in the ingredient chamber
volume; and
a guard element located in the filtrate volume;
wherein the guard element is separately-formed from the
closed container and located within the filtrate volume to define
an outlet zone, the guard element being interposed between the
filter and the outlet zone;
a filter support surface of the guard element;
2
Appeal2018-005241
Application 13/612,487
an inwardly-tapered circuniferential side wall of the
guard element spacing the filter support surface from the
piercing surface of the body closed lower end portion and
radially inward from the side wall of the body, the
circuniferential side wall including a plurality of struts and
apertures between the struts that permit beverage to flow
therethrough;
wherein the guard element is configured to prevent
encroachment of the filter into the outlet zone such that in use
on full extension of a piercing element of a beverage
preparation apparatus the piercing element is enabled to be
placed in fluid communication with the outlet zone without the
piercing element contacting either the guard element or filter;
the filter support surface of the guard element contacts
the base of the filter and provides a uniform clearance distance
between the base of the filter and the piercing surface of the
body.
Independent claim 15 similarly requires a guard element having a
circumferential sidewall with struts and apertures. Each remaining claim
depends from claim 1 or 15.
DISCUSSION
The Examiner finds Karanikos discloses a cartridge for brewing a
beverage that includes, among other things, a closed container, a filter, and a
beverage medium. Ans. 4--5. The Examiner finds Karanikos does not
disclose the guard element of claim 1 but finds Mann discloses a cartridge
for preparing a beverage that includes a guard element. Id. at 5-6. The
Examiner concludes it would have been obvious to modify Karanikos to
incorporate Mann's filter guard to protect Karanikos's filter from damage,
such as from a piercing element. Id. at 7.
The Examiner finds Mann's guard element lacks a circumferential
sidewall including struts and apertures, but concludes it would have been
3
Appeal2018-005241
Application 13/612,487
obvious to provide those structures "to allow liquid to flow out during
extraction" and as "a matter of choice." Id. at 6, 16-17.
Appellant contends, among other things, that the Examiner's proposed
modification to Mann's filter element is not a mere design choice, and the
Examiner's rationale is insufficient to establish a prima facie case of
obviousness for claim 1. Appeal Br. 14.
Appellant's arguments are persuasive. Mann discloses a portion
capsule 1 for producing a beverage that includes a filter element 5 dividing a
cavity 3 of the capsule 1 into a first region for holding raw beverage material
and a second region to hold and collect beverage extract. Mann ,r,r 1, 62.
The filter element 5 has filter openings 17 in a filter surface 50 that permit
beverage extract to pass through and into the second region. Id. ,r 62. Mann
discloses an embodiment in which the filter element 5 includes support
structures 16 in the form of columns 16' that support the filter surface 50
with respect to a bottom so the filter element 5 is more stable with respect to
forces perpendicular to a horizontal plane. Id. ,r,r 70-72.
Modifying Mann's filter element 5 to include a circumferential
sidewall including struts and apertures, as proposed by the Examiner,
involves more than a mere design choice. The Examiner does not point to
evidence to support a finding that one of ordinary skill would have had a
reason to modify Mann's filter element and its support structure to include a
circumferential sidewall including struts and apertures. "[R ]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." KSR Int 'l Co.
4
Appeal2018-005241
Application 13/612,487
v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006).
For the foregoing reasons, we do not sustain the Examiner's§ 103(a)
rejection of claims 1--4, 7-15, and 19-21 over Karanikos and Mann.
DECISION
The Examiner's decision is reversed.
REVERSED
5