Ex Parte Jarisch et al

Patent Trials and Appeals Board

May 8, 2019

13697297 - (D) (P.T.A.B. May. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/697,297 11/09/2012
29157 7590
K&L Gates LLP-Chicago
P.O. Box 1135
CHICAGO, IL 60690
05/10/2019
FIRST NAMED INVENTOR
Christian J arisch
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.
3712036-01693 1065
EXAMINER
SMITH, CHAIM A
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
05/10/2019 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN JARISCH, ALEXANDRE PERENTES,
STEFAN KAESER, CARLO MAGRI, ARNAUD GERBAULET,
THOMAS KAESER, and DANIEL ABEGGLEN
Appeal2017-007984
Application 13/697 ,297
Technology Center 1700
Before WESLEY B. DERRICK, SHELDON M. McGEE, and
JANEE. INGLESE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE 1
Appellants2 seeks review under 35 U.S.C. § 134(a) from the
Examiner's maintained rejection under 35 U.S.C. § 103(a) of claims 1, 2, 5-
10, and 19 over Y oakim 3 in view of Boyd, 4 as further evidenced by
1 We refer to the Specification filed November 9, 2012 ("Spec."), the Final
Office Action dated June 14, 2016 ("Final Act."), the Appeal Brief filed
January 19, 2017 ("App. Br."), the Examiner's Answer dated April 6, 2017
("Ans."), and the Reply Brief filed May 8, 2017 ("Reply Br.").
2 Nestec S.A. is identified as the real party in interest. App. Br. 2.
3 Yoakim et al., WO 2008/148601 Al, published December 11, 2008.
4 Boyd et al., US 2002/0048621 Al, published April 25, 2002.
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Application 13/697,297
additional references. 5 An oral hearing was held on April 30, 2019. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
CLAIMED SUBJECT MATTER
Appellants' invention relates to a capsule for the preparation of a
beverage comprising a container that contains a beverage ingredient,
wherein the container comprises a code arranged to be read while the
capsule is rotated around an axis traversing the capsule. Spec. Abstract.
Claim I-the sole independent claim on appeal-is illustrative:
1. A capsule for the preparation of a beverage, the capsule
comprising a container configured to house a beverage
ingredient, the container comprises a cup-shaped body having a
flange-like rim, a lid connected to the cup-shaped body, and a
code adapted for being identified or read by an external reader,
the code is arranged on a bottom of the flange-like rim, which
is opposed to the lid, to be read while the capsule is rotated
around an axis of rotation traversing the capsule,
wherein the container comprises a circumference, the
code comprises successive segments that extend substantially
along at least an eighth of the circumference, the cup-shaped
body extends from a bottom end of the cup-shaped body to a
top end of the cup-shaped body where the cup-shaped body
terminates such that a height of the cup-shaped body is the
distance from the bottom end to the top end, the flange-like rim
extends from the top end of the cup-shaped body, and the lid
has a height that is less than the height of the cup-shaped body.
5 The Examiner relies on further references as evidence, specifically: Aker,
US 2010/0078480 Al; Ruchonnet, WO 2005/044067 Al; Halliday et al.,
US 6,698,333 B2; ("Halliday '333"); Halliday et al., US 7,097,074 B2
("Halliday '074"); Hayes et al., US 7,335,387 B2 ("Hayes"); Mahlich,
US 2004/0089158 Al; Evers et al., US 2008/0148948 Al; and Erlandsson et
al., US 2007 /0203587 Al. Final Act. 2.
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Application 13/697,297
App. Br. (Claims Appendix), 21 (emphasis added).
DISCUSSION
On this record, having reviewed the maintained ground of rejection
set forth by the Examiner, Appellants' arguments and evidence, and the
Examiner's response, we are persuaded that the Examiner has failed to
establish the unpatentability of claims. For any ground of rejection, "the
[E]xaminer bears the initial burden ... of presenting a prima facie case of
unpatentability." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). We
add the following.
Y oakim is directed to a method of preparing a beverage using a
capsule containing a food substance in which water is passed through the
substance with centrifugal rotation to force the water through the substance.
Y oakim, Abstract. The Examiner relies on Y oakim as disclosing
a capsule capable of preparing a beverage which capsule would
comprise a container configured to house a beverage ingredient,
the container comprises a cup-shaped body having a flange-like
rim, a lid connected to the body and the capsule is rotated
around an axis of rotation traversing the capsule, wherein the
capsule comprises a circumference.
Final Act. 2 ( emphasis added).
Recognizing that Y oakim does not disclose "a code adapted for being
identified or ready by an external reader," the Examiner relies on Boyd for
"disclos[ing] a capsule ... [for] preparing a beverage which capsule would
comprise a container configured to house a beverage ingredient" and that
"the container would comprise a cup-shaped body having a flange-like rim,
a lid would be connected to the body, and a code (30) capable of being
identified or read." Final Act. 4 (emphasis added). The Examiner further
determines that "Boyd is providing a code arranged on the flange-like rim to
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be identified or read by an external reader for the art recognized purpose of
directing the operation of a coffee machine in accordance with predefined
brewing directives to produce an optimal beverage from a variety of
brewing ingredients which is applicant's reason for doing so as well." Final
Act. 4 ( emphasis added).
"With respect to the code being arranged on a bottom of the flange-
like rim," rather than on the top, the Examiner maintains that "the position
... would not have modified the operation of the capsule" and that "it is not
seen that patentability would be predicated on the code being located on the
bottom of the flange-like rim." Final Act. 4--5 (citing MPEP § 2144.04
VI.C.). The Examiner cites Aker, Ruchonnet, Halliday '333, Halliday '074,
Hayes, Mahlich, Evers, and Erlandsson generally as providing further
evidence "that it was quite old and conventional to arrange a code capable of
being identified or read by an external reader on a container." Final Act. 5.
The Examiner further maintains that "Boyd discloses code arrangements on
a flange-like rim that would be readable from either side of the capsule."
Final Act. 7 (citing Boyd ,r 29, Figs. 2f & 2h).
Appellants contend that Y oakim and Boyd fail to disclose or suggest a
code arranged on the bottom of the flange-like rim, which is opposed to the
lid, and that the Examiner has failed to otherwise establish the requisite
rational underpinning for this limitation because it is not a matter of design
choice. App. Br. 6-12. Appellants highlight that the location of the code
relative to the flange-like rim provides improved functionality-a lowered
risk of the code becoming unreadable if hidden or soiled and improved
reading reliability----compared to that with the code on the top of the rim. Id.
at 11 ( citing Declaration ,r 7).
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As to the Examiner's reliance on "Boyd disclos[ing] code
arrangements on a flange-like rim that would be readable from either side of
the capsule" (Final Act. 7 ( citing Boyd ,r 29, Figs. 2f & 2h); see also Ans. 3),
it fails because claim 1 requires that "the code is arranged on a bottom of the
flange-like rim" ( emphasis added) and not merely that it can be read from
the bottom, i.e., from below the rim. A hole through ( or notch into the edge)
of a flange-like rim are further distinguished on this record by Appellants'
arguments in respect to the rejection of claim 6, which distinguishes "the
code on a bottom of the flange-like rim" from a hole through the rim, as in
Boyd. App. Br. 15. Statements of counsel during oral hearing are also
consistent with the plain meaning of a code being arranged "on a bottom of
the flange-like rim" and Appellants' briefing.
As to the Examiner's reliance on design choice as a rationale, on this
record, we find it misplaced. A modification of prior art teachings may be
merely a matter of design choice under appropriate circumstances. See, e.g.,
ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367 (Fed. Cir.
2016). A reason for the particular placement of a rearranged element is
required to establish unpatentability on the basis of design choice, that is, a
reason why a skilled artisan would have made the specific design choice.
See Cutsforth, Inc. v. MotivePower, Inc., 636 F.3d Appx. 575, 578 (Fed. Cir.
2016) (unpublished). Moreover, design choice is inapplicable where the
rearrangement provides a difference in function or gives unexpected results.
Cf In re Kuhle, 526 F.2d 553, 554--54 (CCP A 1975) (holding unpatentable
claims as a matter of choice because "the particular placement of the
[ electrical] contact provides no novel or unexpected result"); Application of
Rice, 341 F.2d 309,314 (CCPA 1965) (holding claims obvious as a matter
of design choice in the absence of results amounting to a difference in
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function or unexpected results that are traceable to the changes made in the
prior art).
On this record, the changes made in locating the codes on the bottom
of the flange-like rim rather than on the top provides improved functionality,
in that the rim functions to protect the code from soiling, which is not
rebutted by the Examiner. App. Br. 11 ( citing Declaration 7); see generally
Final Act.; Ans. Thus, contrary to the Examiner's position that the code on
the bottom of flange-like rim provides merely the same function of
providing instructions ( or directions) for the operation of a coffee machine
(Ans. 4--5), the arrangement claimed provides a different function. In this
circumstance, it would be improper to limit the function relied on to that of
the code itself without regard to its location and ignore the difference in the
function of the flange-like rim.
The Examiner's further reliance on Boyd simply not being limited to
the code being arranged on the top of a flange-like rim, or to any particular
examples or embodiments, or to any particular shape, is wholly insufficient
to support a prima facie case. Ans. 3 (citing Boyd, claim 3, ,r,r 27, 38,
Fig. 3). "The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not ... resort to speculation, unfounded assumptions
or hindsight reconstructions to supply deficiencies in its factual basis." In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967).
For these reasons, we do not sustain the Examiner's rejection of
claims 1, 2, 5-10, and 19.
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DECISION
The Examiner's rejection of claims 1, 2, 5-10, and 19 under 35 U.S.C.
§ 103(a) is REVERSED.
REVERSED
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