Ex Parte Hester et alDownload PDFPatent Trial and Appeal BoardJul 28, 201612762077 (P.T.A.B. Jul. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 121762,077 04/16/2010 David A. Hester 138352 7590 08/01/2016 Greenberg Traurig (MARS) 500 Campus Drive, Suite 400 Florham Park, NJ 07932 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. 020595-031000/DIV 2602 EXAMINER ALEXANDER, REGINALD ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 08/01/2016 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): NJDocket@gtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID A. HESTER, GLENN HARRISON, JOHN C. COOKE, and JON W. SHAW Appeal2014-005486 Application 12/762,077 1 Technology Center 3700 Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and BRUCE T. WIEDER, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 20, 22, 24, 26, and 27 under 35 U.S.C. § 103(a) as unpatentable over Wittenborg (US 4,388,338, iss. June 14, 1983) and Long (US 5,154,327, iss. Oct. 13, 1992). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appellants, "[t]he real party in interest for this appeal is MARS, Inc." Appeal Br. 2. Appeal2014-005486 Application 12/762,077 Claimed Subject Matter Claim 20, the sole independent claim, is representative of the subject matter on appeal and is reproduced below with added emphasis. 20. A liquid injection nozzle for a beverage making apparatus compnsmg: a liquid injection nozzle having an inlet and an outlet and an internal bore extending between the inlet and the outlet; the length of the internal bore being in the range of from about 1 cm to about 10 cm, the cross-sectional area of the outlet is from about 0.2 to about 5 mm2, and the internal bore has a continuous taper between the inlet and the outlet, the taper between the inlet and the outlet having an angle of greater than 0° and up to 10°; wherein the configuration of the nozzle provides a jet of water that causes foaming of a mixture in the beverage making apparatus to produce a foamed liquid beverage comprising a liquid layer and a foam layer. ANALYSIS The Examiner found that Wittenborg' s nozzle 4 has "a continuously tapered bore which extends from an inlet to an outlet of the nozzle, wherein the taper of the bore is from 3 to 15 degrees." Non-Final Act. 2. As correctly pointed out by the Appellants, although Wittenborg discloses a range of 3 to 15 degrees, that range is directed to "the angle of direction of liquid outflow from nozzle 4 with respect to [a] vertical [axis]," rather than an internal bore taper. See Appeal Br. 4--5 (citing Wittenborg, col. 2, 11. 26- 33). As such, we determine that the Examiner erred in finding that Wittenborg' s disclosure corresponds to the requirement of claim 20 directed to a nozzle having an internal bore with a continuous taper between an inlet and an outlet at an angle of greater than 0° and up to 10°. 2 Appeal2014-005486 Application 12/762,077 In the Answer, the Examiner added a finding that "[t]he taper of the Long bore is shown to be within the claimed angle range." Ans. 3. As such, it appears that the Examiner may, in the alternative, be attempting to rely on the Long patent to teach a nozzle having an internal bore with a taper between an inlet and an outlet at an angle of greater than 0° and up to 10°. However, we note that the Examiner fails to support this alternative finding with a citation to Long's disclosure and fails to provide an explanation concerning how Long's disclosure teaches the claimed angle range. Further, even if we were to agree with the Examiner's alternative finding that Long teaches the claimed angle range, which we do not, we note that the Examiner does not provide an adequate reason to modify the internal bore of Wittenborg' s nozzle 4 in light of the Long's teaching of the claimed angle. In the Answer the Examiner states, "[t]he modification of the claimed nozzle bore is shown to [sic] old and well known in the art of nozzles by the Long reference." Ans. 3 (emphasis added). This statement does not suggest a modification of the internal bore of Wittenborg' s nozzle in light of the Long's teachings, which is required to properly reject claim 20 under 35 U.S.C. § 103(a). Additionally, in the Non-Final Action (mailed April 30, 2013) the Examiner states, "[i]t would have been obvious to one skilled in the art to modify the bore of Wittenborg with that taught in Long, in order to increase the speed at which a fluid exits the nozzle." Non-Final Act. 3. At the time this statement was made the alternative finding was not a part of the Examiner's rejection as it was provided in the Answer (mailed June 27, 2014). Moreover, this statement stems from a finding that "Long discloses that it is old and well known to form the internal bore of an injection nozzle with a continuous taper between an inlet and outlet of the bore." Non-Final 3 Appeal2014-005486 Application 12/762,077 Act. 3. And, modifying the internal bore of Wittenborg's nozzle 4 to have a continuous taper for the reason that it would "increase the speed at which a fluid exits the nozzle," does not adequately explain why a person of ordinary skill in the art would modify the internal bore of Wittenborg' s nozzle to be at a particular angle or angle range. Accordingly, the Examiner's reason to modify the internal bore of Wittenborg's nozzle 4 in light of the Long's teaching of a continuous taper does not provide an adequate reason to modify the internal bore of Wittenborg's nozzle 4 in light of the Long's teaching of the claimed angle. Thus, for the foregoing reasons we do not sustain the Examiner's rejection of independent claim 20 and dependent claims 22, 24, 26, and 27 as unpatentable over Wittenborg and Long. DECISION We REVERSE the Examiner's decision rejecting claims 20, 22, 24, 26, and 27. REVERSED 4 Copy with citationCopy as parenthetical citation