Ex Parte Hoover

Patent Trial and Appeal Board

Nov 30, 2017

12287911 (P.T.A.B. Nov. 30, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/287,911 10/15/2008 George H. Hoover 6095-00013 1231
26753 7590 12/04/2017
Andrus Intellectual Property Law, LLP
100 EAST WISCONSIN AVENUE, SUITE 1100
MILWAUKEE, WI 53202
EXAMINER
JACYNA, J CASIMER
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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):
patentdocketing @ andruslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE H. HOOVER
Appeal 2016-006802
Application 12/287,911
Technology Center 3700
Before STEVEN D.A. McCARTHY, ERIC C. JESCHKE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006802
Application 12/287,911
STATEMENT OF THE CASE
Appellant George H. Hoover1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision, as set forth in the Final Office Action dated April
30, 2015 (“Final Act.”), rejecting claims 8, 9, 13, 14, 23—25, and 29. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a method of dispensing an undoctored
fountain beverage in a beverage dispenser. Claim 8, the only independent
claim on appeal, is reproduced below with disputed limitations italicized for
emphasis:
8. A method of dispensing an undoctored fountain beverage with
a beverage dispenser having a dispense nozzle, comprising the
steps of:
delivering a premixed beverage base for a pre-formulated
proprietary product line consisting of an acid and a sweetener
combination common to all products in said proprietary product
line to the beverage dispenser;
delivering diluent for the premixed beverage base to the
beverage dispenser;
delivering flavors to the beverage dispenser;
delivering colors to the beverage dispenser; and
operating the beverage dispenser to dispense premixed
beverage base and diluent from the dispense nozzle to dispense
at least one of flavor and color at or near the nozzle to constitute
a distinct individual, undoctored beverage of a product line.
1 Appellant identifies IMI Cornelius, Inc. as the real party in interest.
Appeal Brief, dated November 30, 2015 (“Br.”), at 3.
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Application 12/287,911
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Haskayne
Raniwala
Crisp
US 6,463,753 B1 Oct. 15, 2002
US 6,742,552 B2 June 1, 2004
US 7,032,780 B2 Apr. 25, 2006
US 2007/0205220 A1 Sept. 6, 2007
US 7,757,896 B2 July 20, 2010
Rudick
Carpenter
REJECTIONS
The Examiner made the following rejections:
1. Claims 8, 9, 13, 14, 23—25, and 29 stand rejected under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement.
2. Claims 23—25 stand rejected under 35 U.S.C. § 112, fourth
paragraph, as being of improper dependent form for failing to further limit
the subject matter of the claim upon which it depends, or for failing to
include all the limitations of the claim upon which it depends.
3. Claims 8 and 23—25 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over Rudick.
4. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rudick and Haskayne.
5. Claims 13 and 29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rudick and Crisp.
6. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rudick and Raniwala.
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7. Claims 8, 9, 23—25, and 29 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
being unpatentable over Carpenter.
Appellant seeks our review of these rejections.
DISCUSSION
Rejection 1: The Rejection of Claims 8, 9, 13, 14, 23—25, and 29
as Failing to Comply With the Written Description Requirement
With respect to the rejection of claims 8, 9, 13, 14, 23—25, and 29, the
Examiner finds that “[claiming the [beverage] base to consist of an acid and
a sweetener common to all products in the product line is new matter not
supported by the originally filed disclosure.” Final Act. 2; see Ans. 6—7.
The rejection turns on the meaning of the “beverage base” as recited in the
claims.
Relying on certain portions of the Specification (e.g., pp. 7—13) and
the declaration of George Hoover, Appellant argues that a person of ordinary
skill in the art would understand that the Specification defines the claimed
“beverage base” as consisting only of the combination of an acid and a
sweetener. Br. 9; see generally Br. 9—13. According to Appellant, the
Specification discloses, in part, that (1) the “beverage base, when mixed
with a diluent such as carbonated water, includes everything common to a
branded beverage except those items that the customer can select, such as
flavor, color and special additives” (Br. 10 (quoting Spec. 11:7—9)); (2) "the
ingredients of the beverage base, except color and flavor, are included in
all of the beverages of the product line, so that individual beverages of the
product line can be constituted by appropriate additions to the beverage base
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Application 12/287,911
of diluent, flavor and color” (Br. 10 (quoting Spec. 13:5—11)); and (3)
“[ijnstead of using a beverage syrup that when mixed with diluent yields a
product or brand specific beverage, a ‘generic’ beverage base be [sic] is
issued, which beverage base is common to and found in all products in a line
of products carrying a common brand, and which has all of the product
attributes of the products in the branded line except color and flavor” (Br.
11 (citing Spec. 7:12—13:1)). Mr. Hoover’s declaration states that “a person
familiar with beverage distribution systems and beverage ingredients would
understand, after reading the Specification . . ., that the disclose beverage
base for a pre-formulated proprietary product line may consist of an acid and
sweetener combination common to all products in said proprietary product
line.” Hoover Decl. 14 (emphasis added).
In response to Appellant’s argument, the Examiner explains that,
while the Specification and Mr. Hoover’s declaration disclose that the
beverage base does not include color and flavor, Appellant does not identify
any portion of Mr. Hoover’s declaration or the Specification which defines
the beverage base as consisting “only” of an acid and sweetener. Ans. 6—8.
The Examiner is correct—the claim as amended is open-ended in a manner
that does not exclude the presence of other components in the beverage base.
Appellant also contends that the Examiner erred by failing to consider
properly Mr. Hoover’s declaration. See, e.g., Br. 12. In response to
Appellant’s argument and Mr. Hoover’s declaration, however, the Examiner
cited two prior art patents—Rudick and Carpenter—that show that persons
of ordinary skill in the art defined a beverage base as consisting of a
sweetener, an acid, and other components, and excluding color and flavor.
Ans. 7 (citing Rudick 136 (“base product may include sweetener, acid, and
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other common components” and excludes color and flavor (| 37)) and
Carpenter 3:39-41 (“base product may include sweetener, acid, and other
common components” and excludes color and flavor (3:54—56)). Thus, a
beverage base consists of more than only an acid and sweetener, as proposed
by Appellant. The Examiner’s proposed definition of “beverage base” is
consistent with the usage of the term in the Specification. Nevertheless,
because the Examiner’s definition implies that one of ordinary skill in the art
would have understood the term “beverage base” encompasses the
combination of a sweetener, an acid, and other components, but not color
and flavor, the term “beverage base” is supported by the Specification.
In view of the common usage of the “beverage base,” the written
description rejection of claims 8, 9, 13, 14, 23—25, and 29 is not sustained.
Rejection 2: The Rejection of Claims 23—25
Under 35 U.S.C. § 112, Fourth Paragraph
Because Appellant does not address this rejection of claims 23—25, the
rejection is summarily sustained.
Rejections 3—6: The Rejections of
Claims 8, 9, 13, 14, 23—25, and 29 Based on Prior Art
In response to Rejection 3, Appellant argues claims 8 and 23—25 as a
group. Appeal Br. 13—16. We select independent claim 8 as the
representative claim, and claims 23—25 stand or fall with claim 8. 37 C.F.R.
§ 41.37(c)(l)(iv).
In response to Rejections 4—6, Appellant does not present any
arguments directed to the patentability of dependent claims 9, 13, 14, and 29
over Rudick, Haskayne, Crisp, and/or Raniwala. We understand that
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Appellant relies on the same arguments presented for independent claim 8,
from which claims 9, 13, 14, and 29 depend. Br. 9.
Appellant contends that the Examiner’s findings that Rudick discloses
all of the limitations of claim 8 are erroneous for several reasons. First,
Appellant contends that, in a July 2014 interview, the Examiner “agreed that
the prior art of record did not teach the claimed amendment. . . .” Br. 14
(internal citation and quotations omitted). In response, the Examiner
explains that Rudick (and Carpenter) disclose the limitations in claim 8, the
Examiner’s statement of allowability in the July 2014 interview was an
oversight, and the Examiner’s oversight was corrected and the notice of
allowability was withdrawn in the Non-Final Office Action dated November
24, 2014. Ans. 8 (citing Rudick 136 and Carpenter 3:39-41). Appellant’s
argument is not persuasive.
Second, Appellant argues that Rudick’s beverage base is not premixed
because Rudick’s individual ingredients, such as sweeteners, acids, and
other common ingredients, are mixed in device 200. Br. 14. In response,
the Examiner correctly explains that the base products are premixed at
ingredient combination chamber 110 prior to being delivered to the agitator
120 and beverage dispenser 130. Ans. 8 (citing Rudick 136). In addition,
because Rudick also discloses that the acid, sweetener, and other common
components forming the beverage base may be stored in “a conventional
bag,” the individual ingredients forming the beverage base are premixed.
See, e.g., Rudick 136. Appellant’s argument is not persuasive.
Third, Appellant argues that the Examiner does not properly establish
that Rudick inherently discloses a beverage base. Br. 15—16. As discussed
above, Rudick expressly discloses the base product contains acid, sweetener,
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and other common products, as recited in claim 8. Appellant’s argument is
not persuasive.
Fourth, Appellant argues that the Examiner does not articulate a
rationale to modify Rudick to use a pre-mixed beverage base. Br. 16. As
discussed above, Rudick expressly discloses the base product contains acid,
sweetener, and other common products, as recited in claim 8. Appellant’s
argument is not persuasive.
For the reasons above, the rejection of claim 8 is sustained. Claims 9,
13, 14, 23—25, and 29 fall with claim 8.
Rejection 7: The Rejection of Claims 8, 9, 23—25, and 29
as Anticipated By or, in the Alternative, Unpatentable Over Carpenter
Appellant argues claims 8, 9, 23—25, and 29 as a group. Appeal Br.
16—18. We select claim 8 as the representative claim, and claims 9, 23—25,
and 29 stand or fall with claim 8. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant contends that the Examiner’s rejection is erroneous for
several reasons. First, Appellant argues that Carpenter’s beverage base is
not premixed because Carpenter’s “macro-ingredient base discloses only
individual ingredient sources 140 but does not disclose a source that has a
premixed beverage base” and “Carpenter’s disclosure keeps the acid and the
sweetener separated.” Br. 16. Appellant also argues that the “Final Action’s
allegation that Carpenter’s individual ingredients could be turned into a
beverage base consisting of an acid and a sweetener would change
Carpenter’s principal of operation of keeping ingredients separated.” Br. 18.
In response, the Examiner correctly explains that “the base ingredients
are stored within the computing system 400 and are thereby preselected, or
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preformulated within [system] 400 and premixed within the module 190 as
shown in figure 2 which module 190 of figure 2 includes mixing fins 220,
230 which will premix the base prior to delivery to the dispenser 180.” Ans.
9-10 (citing Carpenter Fig. 2, 3:39-41). In addition, because Carpenter also
discloses that the acid, sweetener, and other common components forming
the beverage base may be stored in “a conventional bag-in-box container,”
the individual ingredients forming the beverage base are premixed. See,
e.g., Carpenter 3:39-42. Appellant’s argument is not persuasive.
Second, Appellant argues that Carpenter does not render the claimed
beverage base obvious because Examiner does not provide “any explanation
of why the claimed beverage base ‘necessarily flows’ from Carpenter” or
“any rationale for modifying Carpenter to embody the claimed invention.”
Br. 17. Carpenter expressly discloses the base product contains acid,
sweetener, and other common products, as recited in claim 8. See, e.g.,
Carpenter 3:40-42. Appellant’s argument is not persuasive.
For the reasons above, the rejection of claim 8 is sustained. Claims 9,
23—25, and 29 fall with claim 8.
DECISION
For the above reasons, the Examiner’s rejection of claims 8, 9, 13, 14,
23—25, and 29 under 35 U.S.C. § 112, first paragraph, is REVERSED.
The Examiner’s rejection of claims 23—25 under 35 U.S.C. § 112,
fourth paragraph, is AFFIRMED.
The Examiner’s rejections of claims 8, 9, 13, 14, 23—25, and 29 under
35 U.S.C. §§ 102(e) and 103(a) are AFFIRMED.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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