Ex Parte Koeling et al

Patent Trial and Appeal Board

Aug 3, 2016

11629838 (P.T.A.B. Aug. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111629,838 12/17/2007 Hendrik Cornelis Koeling
26371 7590 08/05/2016
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
097298-0161 7942
EXAMINER
SIMMS JR, JOHN ELLIOTT
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
08/05/2016 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENDRIK CORNELIS KOELING and
GUSTAAFFRANSBROUWER
Appeal2014-007594
Application 11/629,838
Technology Center 3700
Before JAMES P. CAL VE, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 5-36, and 39. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
Appeal2014-007594
Application 11/629,838
THE INVENTION
Appellants' invention relates to beverage dispensers. Spec. 1.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A system for preparing portions of a beverage suitable for
consumption, the system comprising:
an apparatus for preparing the beverage, and
a closed and form-retaining holder removably received in the
apparatus, which holder is at least filled with a product to be
dissolved and/or to be diluted,
the apparatus being provided with:
a liquid device for dispensing a fluid under pressure,
comprising at least one liquid or at least one liquid and a gas,
a receiving space in which the holder is received, and
at least one probe provided with at least one channel which,
on the one side, is in fluid communication with the liquid device and
which, on the other side, terminates in a first outflow opening of the
probe,
one wall of the holder being manufactured from a fluid-tight
material while, on a first side of the holder, the wall is manufactured
such that it can be punctured,
the apparatus being designed for puncturing the wall on the first
side and for moving the probe and the holder relative to each other
so that in use, the probe can pierce through the first side of the
holder, whereupon the first outflow opening reaches into the holder,
opening means for obtaining, in use, an outlet opening at the
holder for dispensing the ready beverage while, in use, the fluid is
supplied by the liquid device to the at least one channel for
generating at least one jet of the fluid from the first outflow opening
of the probe in the holder for dissolving and/or diluting the product
whereupon the ready beverage flows from the at least one outlet
opemng,
wherein the apparatus is provided with control means, while the
apparatus is configured to set, under control of the control means, at
least one setting of the jet in a predetermined manner, as desired
from a plurality of setting possibilities for determining, in advance,
characteristic properties of the ready beverage, the at least one
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Application 11/629,838
setting of the jet comprising the direction of the at least one jet, the
position of the at least one jet, the flow rate of the at least one jet, the
flow velocity of the at least one jet and/or the number of the jets;
wherein the apparatus is configured to set, under control of the
control means, the vertical position of the probe within the holder
and the angle of the probe with respect to the holder from a plurality
of setting possibilities, for setting the direction of the at least one jet
in the predetermined manner;
wherein the probe is provided with a second outflow opening,
while the apparatus is designed to generate, under control of the
control means, in a settable manner, with the aid of the first outflow
opening, a first jet of the fluid in the holder and to generate, with the
aid of the second outflow opening a second jet of the fluid; and
wherein the probe is designed to close off or release, under the
control of the control means, the first outflow opening in a settable
manner and to close off or release the second outflow opening in a
settable manner.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Stasse us 3,292,527 Dec. 20, 1966
Osiadacz us 3,971,088 July 27, 1976
Newman us 4,909,136 Mar. 20, 1990
Fond us 5,398,596 Mar. 21, 1995
Chen us 6,012,613 Jan. 11, 2000
Beaulieu us 6, 142,063 Nov. 7, 2000
Wong US 2002/0029694 Al Mar. 14,2002
Boyd WO 02/28241 Al April 11, 2002
Laigneau WO 2004/006740 A2 Jan.22,2004
Bruin US 6,769,352 B2 Aug. 3, 2004
Green US 6,786,134 B2 Sept. 7, 2004
Jones US 2004/0194629 Al Oct. 7, 2004
Denis art US 7,650,831 B2 Jan.26,2010
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Appeal2014-007594
Application 11/629,838
The following rejections are before us for review:
1. Claims 1, 6, 7, 8, 14, 20, 23, 32, 33, 34, and 36 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Denisart, Laigneau, and
Osiadacz.
2. Claims 1, 5, 6, 7, 8, 14, 18, 19, 20, 21, 22, 23, 24, 30, 31, 32, and
36 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Green,
Laigneau, and Osiadacz.
3. Claims 9, 10, 12, 13, 17, 25, and 26, are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Green, Laigneau, Osiadacz, and Boyd.
4. Claim 11 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Green, Laigneau, Osiadacz, Boyd, and Bruin.
5. Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Green, Laigneau, Osiadacz, and Beaulieu.
6. Claims 16 and 39 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Green, Laigneau, Osiadacz, and Newman.
7. Claim 27 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Green, Laigneau, Osiadacz, Beaulieu, and Stasse.
8. Claim 28 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Green, Laigneau, Osiadacz, Beaulieu, Stasse, and Chen.
9. Claim 29 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Green, Laigneau, Osiadacz, and Wong.
10. Claims 33, 34, and 35 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Green, Laigneau, Osiadacz, and Fond.
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Appeal2014-007594
Application 11/629,838
OPil'.rION
Unpatentability Grounds of Rejection Over
both the Denisart combination and the Green combination
Claim 1
With respect to the first ground of rejection of claim 1, the Examiner
finds that the combination of Denisart and Laigneau discloses all of the
limitations of claim 1, except for the limitation directed to setting the angle
of the probe in relation to the holder. Final Action 2--4. With respect to the
second ground of rejection, the Examiner finds that the combination of
Green and Laigneau discloses all of the limitations of claim 1, except for the
limitation directed to setting the angle of the probe in relation to the holder.
Id. 4--7.
With respect to both the first and second grounds of rejection, the
Examiner relies on Osiadacz as disclosing a system that operates to pivot
probes and set angles of probes. Id. 3, 7. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
the invention was made to provide both the Denisart/Laigneau combination
and the Green/Laigneau combination with controls to set the angle of the
probe, as taught by Osiadacz, to provide angle adjustable probes. Id. at 3, 7.
According to the Examiner, a person of ordinary skill in the art would have
done this to enhance the characteristic properties of a beverage, which the
Examiner characterizes as a predictable result. Id.
Appellants traverse the rejection by arguing that Osiadacz is non-
analogous art to the claimed invention. Appeal Br. 12. Appellants argue,
and the Examiner does not dispute, that Osiadacz is not from the same field
of endeavor as the claimed invention. Id.; Ans. 2. Appellants also argue
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Application 11/629,838
that Osiadacz is not reasonably pertinent to the particular problem with
which the inventors are involved. Appeal Br. 12.
Appellants argue that the problem faced by the inventors was how to
modify the characteristics of a beverage produced from concentrate without
modifying the concentrate itself. Id. at 13. As an example, Appellants direct
our attention to paragraph 3 of the Specification which explains that it may
be preferable to produce one beverage with froth and another beverage with
little or no froth. Id. (citing Spec. 3). Appellants accuse the Examiner of
improperly focusing on the solution to the problem, namely, angling the
probe, instead of focusing on the problem itself, which Appellants
characterize as the capability of altering the properties of a beverage. Id.
at 14.
In response, the Examiner states that the prior art from Appellants'
field of endeavor teaches all of the features of the claimed beverage system
except for setting the angle of a probe for injecting fluid into a product.
Ans. 2. The Examiner characterizes the problem faced by the inventor as
modification of the movement of the probe to improve the effectiveness of
the delivery of the fluid to a food product. Id. at 3. The Examiner states that
Osiadacz addresses the problem by providing the feature, e.g., the angled
probe that is claimed by Appellants. Id. The Examiner states that a person
of ordinary skill in the art would have been aware of apparatus for delivering
fluid to a food product by inserting a probe with a fluid flow channel. Id.
The Examiner maintains the position that the purpose of Osiadacz is to
deliver fluid, through a penetrating probe, into a food product. Id.
According to the Examiner, Osiadacz' teaching of an angled probe readily
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Application 11/629,838
relates to the pu1 vose of Appellants' invention, namely to deliver fluid
through a penetrating probe, into a beverage mix.
In reply, Appellants reiterate their position that the Examiner's
reliance on Osiadacz misapplies the law of analogous art. Reply Br. 2.
Appellants' Specification teaches that a beverage dispenser may alter
the properties of a dispensed beverage by altering the angle at which
pressurized fluid is injected into a holder that contains beverage concentrate.
As the apparatus can set, i.e. can vary, under control of the
control means, at least one of the above-mentioned settings at
wish from a plurality of setting possibilities, presently, in a
predetermined manner, specific characteristic properties of the
beverage can be determined while here, specifically, properties
of the beverage are involved which not only depend on the
product to the dissolved and/or to be diluted as such. In case
the product involves a lemonade, it can be arranged such that
the jet strikes on a sidewall of the holder at an angle which
deviates strongly from a normal of the sidewall at the location
the jet strikes. As a result, little or no froth will be formed in
the ready beverage. If, by contrast, it is intended that froth is
formed, the jet can strike on a sidewall of the holder for
instance at least virtually perpendicularly, or it can be provided
that the jet strikes on an amount of ready beverage which is
already present in the holder and which has not yet drained
from the holder via the outlet opening. It is also conceivable
that the amount of froth be varied by varying the flow velocity
of the at least one jet and/or the flow rate of the at least one jet.
Also, the number of jets can be varied for varying the
characteristic properties of the beverage. As, after use, the
form-retaining holder can be replaced with a new holder,
contamination can be prevented. This holds in particular when,
in use, the at least one probe does not directly contact the
product, i.e. does not reach into the product. More particularly,
it holds that the apparatus is designed to set, under control of
the control means, the position of the probe within the holder at
wish from a plurality of setting possibilities, for setting the
direction of the at least one jet in the predetermined manner.
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Application 11/629,838
Spec. 3. Thus, the Specification explains that increasing or decreasing the
amount of froth produced in a beverage is the result of an interaction of the
relative angle of the fluid jet relative to the sidewall of the holder. Id.
To be considered within the prior art for purposes of the obviousness
analysis, a reference must be analogous. Circuit Check Inc. v. QXQ Inc.,
795 F.3d 1331, 1335 (Fed. Cir. 2015); Innovention Toys, LLC, v. MGA
Entertainment, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011).
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem ad-dressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). "A reference is
reasonably pertinent if, even though it may be in a different field from that
of the inventor's endeavor, it is one which, because of the matter with which
it deals. lrn.?:icallv would have commended itself to an inventor's attention in
; .__, .,
considering his problem." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
"If a reference disclosure has the same purpose as the claimed invention, the
reference relates to the same problem, and that fact supports use of that
reference in an obviousness rejection." Id.
Osiadacz is directed to a meat tenderizing system. Osiadacz,
Abstract. Osiadacz exhibits a needle manifold with a plurality of generally
parallel injection needles. Osiadacz, col. 1, 11. 61---66. The injection needles
are coupled to volumetric cylinders that pump tenderizing fluid through the
needles into an animal carcass. Id. at col. 3, 11. 33---65. Since the animal
carcass has irregular contours, the needle manifolds pivot so that the
injection needles can be injected into the carcass at a desired angle. Id. at
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Application 11/629,838
col. 7, 11. 1-30. It also appears that the needles pivot so that they may be
inserted into the meat carcass at an angle that is approximately normal to the
outside contour of the carcass. See id. at Fig. 6.
We agree with Appellants that Osiadacz is not reasonably pertinent to
the problem faced by the inventors. Although Osiadacz does disclose food
injection needles (or probes) that pivot so as to assume a plurality of angles,
there is nothing in Osiadacz that suggests to a person of ordinary skill in the
art that redirection of a fluid jet angle relative to a beverage concentrate
holder will alter the characteristics of a dispensed beverage. In particular,
there is no teaching regarding the interaction between an angled, directed jet
of fluid with the walls of a beverage concentrate holder and/or the contents
of a beverage concentrate holder. Thus, a person trying to improve a
beverage dispenser would not be inclined to look to Osiadacz' meat
tenderizer to solve a problem regarding the characteristics of a dispensed
beverage (e.g., to generate froth). Furthermore, the Examiner provides no
evidence or technical reasoning to support the conclusion that angling a
pressurized jet of fluid within a beverage concentrate holder produces a
result that is so predictable that no teaching regarding the interaction of the
fluid jet with the wall of the holder and its contents is necessary to suggest
using the probe angle teaching of Osiadacz in the proposed combination.
For the reasons set forth above, we do not sustain the Examiner's
rejections of claim 1 under either the Denisart grounds or the Green grounds.
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Appeal2014-007594
Application 11/629,838
Unpatentability Grounds of Rejection
over all remaining claims
Claims 5-36, and 39
Claims 5-36 depend, directly or indirectly from claim 1. Claims App.
Claim 39 is an independent claim. Id. As with the rejection of claim 1, the
Examiner's rejections of each and all of these claims rely on Osiadacz as
satisfying the angled probe limitations of these claims. Final Action 4--13.
Consequently, the rejections of these claims all suffer from the same
infirmity that we have identified above with respect to claim 1. For the same
reasons articulated above with respect to claim 1, we do not sustain the
obviousness rejections of claims 5-36, and 39.
DECISION
The decision of the Examiner to reject claims 1, 5-36, and 39 is
REVERSED.
REVERSED
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