Ex Parte Hester et al

Patent Trial and Appeal Board

Jul 28, 2016

12762077 (P.T.A.B. Jul. 28, 2016)

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