Ex Parte Hilbrich

Board of Patent Appeals and Interferences

Jul 1, 2009

10047852 (B.P.A.I. Jul. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL A. HILBRICH
____________

Appeal 2009-005397
Reissue Application 10/047,8521
Patent 6,016,740
Technology Center 3700
____________

Decided: July 01, 20092
____________

Before JENNIFER D. BAHR, ROMULO H. DELMENDO, and JOHN C.
KERINS, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-8, 10-12, 14-21, and 23-28 (Appeal Brief filed August 4, 2008,
hereinafter “App. Br.,” at 5; Examiner’s Answer mailed September 16,

1 This application is a reissue application of United States Patent 6,016,740
(hereinafter ‘740 Patent) issued to Appellant on January 25, 2000 from
Application 08/977,997 filed on November 25, 1997.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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2008, hereinafter “Ans.,” at 2; Final Office Action mailed February 13,
2008). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellant’s invention relates to a filtering device for an espresso-type
coffee maker (col. 2, ll. 40-42). Referring to two prior art documents,
Appellant states that the invention is founded on the discovery “that paper
coffee filters [e.g., MR. COFFEE® paper filters available in commerce] can
remove substantially the C [cafestol] and K [kahweol], which have been
known to elevate serum, cholesterol, triglycerides, and liver enzymes in
humans, in coffee beverages by filtering both the oils and small particulate
grounds which have been found to house C and K (Specification, col. 2, ll.
30-34; col. 1, ll. 29-34, 41-45, 58-61; col. 3, ll. 52-55).
Claim 1 on appeal reads as follows:
1. A filtering device for an espresso-type coffee maker
of the type having a spout to deliver heated water under high
pressure to finely ground coffee beans to brew coffee
therefrom, and a receptacle to receive brewed filtered coffee,
means defining a flow path between said finely ground beans to
said receptacle, comprising:
a [metallic] permanent filter in said path of heated coffee
passing to the receptacle which filter has an opening sized to
filter out the fine espresso coffee grounds having a size of 0.3
mm or less; and
at least one layer of filter paper in the path of the heated
coffee passing to the receptacle, the at least one layer of filter
paper having a filter thickness sufficient to effectively remove
and trap lipids from the heated coffee.
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(App. Br. 14, Claims Appendix.)

The Examiner relied upon the following as evidence of
unpatentability (Ans. 2-3):
Krebs 4,052,318 Oct. 4, 1977
Smith, et. al. (“Smith”) 5,403,605 Apr. 4, 1995
Giuliano 5,490,447 Feb. 13, 1996

Appellant relied upon the following as rebuttal evidence (App. Br.
12):
Herrick, et. al. (“Herrick”) 5,190,653 Mar. 2, 1993
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. claims 1, 4, 5, 7, 8, 10-12, 14-18, 21, 23-25, 27, and 28 as
unpatentable over the combined teachings of Smith and
Giuliano (Ans. 3-4); and
II. claims 2, 3, 6, 19, 20, and 26 as unpatentable over the combined
teachings of Smith, Giuliano, and Krebs (id. at 5).

ISSUES
The Examiner found that Smith discloses a filter device for various
types of coffee makers (e.g., an espresso-type coffee maker) including a
filter element 42, which may be a paper filter element, and a foraminous
support sheet 44, which corresponds to the recited permanent filter, having
openings and preferably made of stainless steel (Ans. 3-4). With respect to
the recited opening size of the permanent filter of 0.3 mm or less (claim 1),
the Examiner found that Giuliano discloses permanent filters having
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openings of 0.3 mm or less (id. at 4). The Examiner concluded from these
teachings that “[i]t would have been obvious to one skilled in the art to
modify the permanent filter [i.e., the foraminous support sheet] of Smith
with that taught in Giuliano, in order to prevent the passage of coffee
grounds particles and any other harmful particles produced from the brewed
coffee” (id.). According to the Examiner, one of ordinary skill in the art
would have known that the opening size of the permanent filter is one of
several variables that affect brew rate and brew strength (id. at 6-7).
Appellant, on the other hand, contends that neither Smith nor Giuliano
“discloses or suggests the combined use of a paper filter and a permanent
filter to remove harmful lipids from brewed espresso-type coffee” (App. Br.
11). According to Appellant, “there is no indication in Smith that the
foraminous support 44 functions to filter any of the coffee grounds” (id.).
Appellant further asserts that Smith teaches away from the claimed
permanent filter opening size because “Smith explicitly discloses that the
foraminous support sheet 44 has openings with a diameter of 1 mm to 2.5
mm” and “that the foraminous support sheet should contain the maximum
open area consistent with strength so as not interfere with the rate at which
the coffee can be brewed” (id. at 12).
Thus, the issues arising from the contentions of the Examiner and
Appellant are:
(1) Has Appellant shown reversible error in the Examiner’s factual
finding that Smith’s paper filter element would remove and trap lipids as
required by claim 1?
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(2) Has Appellant shown reversible error in the Examiner’s factual
finding that Smith’s foraminous support sheet 44 would act as a “permanent
filter” as recited in claim 1?
(3) Has Appellant shown reversible error in the Examiner’s factual
finding that Smith does not teach away from the opening size of the
“permanent filter” recited in claim 1?

FINDINGS OF FACT
1. Appellant’s Specification acknowledges that prior art filtering
devices for espresso machines include “finely fenestrated
metallic filter on top of which are situated coffee grounds, 0.3
millimeters in size or less (particle size)” (col. 1, ll. 17-19).
2. Appellant’s Specification further admits that it was known that
such prior art metallic filters are incapable of filtering
compounds such as cafestol (C) and kahweol (K), which have
been known to cause elevated serum, cholesterol, triglycerides,
and liver enzymes (col. 1, ll. 17-34).
3. Appellant’s Specification also acknowledges a prior art
document, the title of which suggests that paper filter removes
cholesterol-raising substances from boiled coffee (col. 1, ll. 58-
61).
4. Appellant’s Specification informs one skilled in the relevant art
that the harmful compounds are removed by action of the paper
filter (col. 3, ll. 62-66; col. 4, ll. 19-24).
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5. Appellant’s Specification does not limit the type (e.g., thickness
or porosity) of paper filter that may be used (col. 3, ll. 52-55).
6. Figure 1 of the subject application is reproduced below:

Figure 1 depicts an embodiment of the claimed filtering device
incorporated into an espresso-type coffee maker including a
paper filter 30 “removably placed on top of” a metallic filter 18
(col. 3, ll. 20-22, 32-33, 50-51).
7. Smith’s Figure 1 is reproduced below:
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Smith’s Figure 1 depicts a brewing device capable of brewing
coffee comprising, inter alia, a filter assembly 40 including a
filter element 42 and a foraminous support sheet 44 (col. 2, ll.
43-45; col. 2, l. 60 to col. 3, l. 2; col. 4, ll. 38-41).
8. Smith teaches that filter element 42 may be paper (col. 3, ll. 7-
8).
9. Smith further discloses that filter element 42 have microscopic
holes (e.g., 12-60 microns) (col. 4, ll. 42-45).
10. According to Smith, “coffee will preferably be of a grind with
an average particle size within the range of from 300 to 850
microns [0.3 to 0.85 mm]. . . .” (col. 3, ll. 30-32).
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11. Smith states that foraminous support sheet 44 is “preferably of
stainless steel, which offers strength to support filter element
42, and rubber seal 48” (col. 4, ll. 38-41).
12. Smith refers to a then copending application (“Case No.
19609”) for further details on the apparatus (col. 2, l. 60 col. 3,
l. 2).
13. It is undisputed that Herrick is the patent document that issued
from “Case No. 19609,” as identified in Smith, and in fact
United States Patent and Trademark Office (PTO) records show
that the attorney docket number in the file of the Herrick patent
is “19609.”
14. Herrick discloses (col. 3, ll. 22-32; italics added):
The filter assembly 40, in addition to filter element
42, includes foraminous support sheet 44, and annular
Seal 48. Foraminous support sheet 44, preferably of
stainless steel offers strength to support filter element 42.
It should contain the maximum open area consistent with
strength. For example, an at least 0.25 millimeters thick
sheet can have holes 46 (preferably circular) covering
from 8 to 80 percent of its surface. The openings in these
holes are typically from 1 to 2.5 millimeters in diameter
and spaced from 1.25 to 5 millimeters apart from center
to center.
15. Appellant has not relied on any evidence (e.g., declaration
evidence including comparative experimental data)
demonstrating that the opening size recited in claim 1 provides
an unexpected result.

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PRINCIPLES OF LAW
On appeal to this Board, Appellant must show that the Examiner
reversibly erred in finally rejecting the claims. Cf. In re Kahn, 441 F.3d 977,
985-986 (Fed. Cir. 2006); see also 37 C.F.R. § 41.37(c)(1)(vii).
It is well settled that the United States Patent and Trademark Office
(PTO) is obligated to give claim terms their broadest reasonable
interpretation, taking into account any enlightenment by way of definitions
or otherwise found in the specification. In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he PTO must give claims their
broadest reasonable construction consistent with the specification . . . .
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.”). “[A]s applicants
may amend claims to narrow their scope, a broad construction during
prosecution creates no unfairness to the applicant or patentee.” ICON
Health, 496 F.3d at 1379.
“A patent applicant is free to recite features of an apparatus either
structurally or functionally . . . Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk.” Schreiber, 128 F.3d
at 1478 (internal citation omitted). When the PTO has reason to believe that
a functional limitation asserted to be critical may in fact be an inherent
characteristic of the prior art, it possesses the authority to shift the burden of
proof to applicant or patent owner to prove otherwise. Id.; accord In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255
(CCPA 1977). Whether the rejection is based on inherency under 35 U.S.C.
§ 102 or on obviousness under 35 U.S.C. § 103, jointly or alternatively, the
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burden of proof is the same, and its fairness is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior art
products. Best, 562 F.2d at 1255.
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
A reference “teaches away” if a person of ordinary skill in the art
would have been discouraged or led to a divergent path from the one taken
by the inventors. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

ANALYSIS
Appellant relies on the same set of arguments for both rejections. In
addition, Appellant does not present any argument in support of the separate
patentability of any particular claim. Accordingly, we address the two
rejections together, with particular focus on representative claim 1. See 37
C.F.R. § 41.37(c)(1)(vii).
We start with claim construction. Claim 1 recites that the filter paper
has “a filter thickness sufficient to effectively remove and trap lipids from
the heated coffee.” Neither the claim nor the Specification, however, places
any limitation on any filter thickness or any degree of lipid removal. Rather,
the Specification would have indicated that any paper filter would remove
lipids to some extent (Facts 1-5). Absent sufficient basis to limit claim
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scope, we are obligated to construe claim 1 to read on any filter paper
thickness and any degree of lipid removal.
Thus, contrary to Appellant’s belief (App. Br. 11), we find no basis to
state that Smith’s filter assembly including filter element 42 made of paper
would be incapable of removing lipids from heated coffee. Indeed,
Appellant’s Specification indicates to one skilled in the relevant art that
lipids would in fact be removed to some extent by any paper filter element
(Facts 1-5). Under these circumstances, the burden of proof was shifted to
Appellant to prove that Smith paper filter element would not remove lipids
to some extent as required claim 1. Appellant failed to discharge this burden
of proof. See, e.g., Best, 562 F.2d at 1255.
We also find no merit in the Appellant’s argument (App. Br. 11) that
Smith’s foraminous support sheet 44 is not a “permanent filter” as recited in
claim 1. It is undisputed that Smith teaches a filter assembly 40 including a
filter element 42, which may be made of paper, disposed on top of a
foraminous support sheet 44 made of stainless steel (Facts 7, 8, and 11).
While one of ordinary skill in the art might have ordinarily understood that
the coffee grounds in Smith are filtered by filter element 42 because it is
upstream of the foraminous support sheet 44, this is exactly the same
arrangement shown in Appellant’s Figure 1 (Fact 6). Thus, to the extent that
Smith’s filter assembly is arranged in the same or similar way as Appellant’s
only disclosed embodiment, Smith’s foraminous support sheet 44 can also
be considered a “permanent filter” depending on the size of the coffee
grounds and the size of the perforations in the foraminous support sheet 44,
as will be discussed below.
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Appellant urges that Smith teaches away from using a foraminous
support sheet 44 with the claimed opening sizes (App. Br. 12). We disagree.
Smith leaves it up to the person having ordinary skill in the art to determine
the suitable ranges of support thicknesses and openings (Facts 11-14).
While Herrick discloses an exemplary opening size that is larger than the
opening size recited in claim 1 for a given thickness, neither Smith nor
Herrick limits the opening size or the thickness of the support sheet in any
way (Facts 11-14). The exemplary, non-limiting disclosures in the prior art
can hardly be said to constitute a teaching away from the claimed invention.
As pointed out by the Examiner (Ans. 6-7), a person having ordinary
skill in the art would have known that the opening size of Smith’s
foraminous support sheet 44 is a result-effective variable that affects, in
addition to support strength for the filter element 42, brew rate and brew
strength. It has long been an axiom of patent law that it is not inventive to
discover the optimum or workable ranges of result-effective variables by
routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.
2003) (“The normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a
disclosed set of percentage ranges is the optimum combination of
percentages.”); In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.”).
Because Appellant has failed to direct our attention to any secondary
considerations of nonobviousness such as unexpected results (Fact 15), we
uphold the Examiner’s obviousness rejections.
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CONCLUSION
On this record, Appellant has failed to demonstrate any reversible
error in the Examiner’s factual findings that: Smith’s paper filter element
would remove and trap lipids as required by claim 1; Smith’s foraminous
support sheet 44 would act as a “permanent filter” as required by claim 1;
and Smith does not teach away from the opening size of the “permanent
filter” recited in claim 1.

DECISION
The Examiner’s decision to reject (i) claims 1, 4, 5, 7, 8, 10-12, 14-18,
21, 23-25, 27, and 28 as unpatentable over the combined teachings of Smith
and Giuliano and (ii) claims 2, 3, 6, 19, 20, and 26 as unpatentable over the
combined teachings of Smith, Giuliano, and Krebs 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)(1)(v).
AFFIRMED

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