Ex Parte Lassota

Board of Patent Appeals and Interferences

Sep 13, 2009

10969490 (B.P.A.I. Sep. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ZBIGNIEW G. LASSOTA
____________

Appeal 2008-006088
Application 10/969,490
Technology Center 3700
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Decided: September 14, 2009
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Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2008-006088
Application 10/969,490

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STATEMENT OF THE CASE
Zbigniew G. Lassota (Appellant) appeals under 35 U.S.C. § 134
(2002) from the Examiner's decision rejecting claims 1-6 and 28-33. Claims
7-27 and 34-37 have been canceled. We have jurisdiction over this appeal
under 35 U.S.C. § 6 (2002).

The Invention
Appellant's claimed invention is directed to a beverage brewer with a
continuous dispense rate. A size-adjustable valve 60 sits between the hot
water tank and the brewer's spray head 32. Spec. 14:5-7. A controller 18
operates valve 60 with appropriate control signals. Spec. 17:6-9, 20-24.
Claim 1, reproduced below, is illustrative of the claimed invention.
1. In a beverage brewer with a hot water tank,
means for maintaining the hot water at a
preselected temperature and a brew basket for
holding ingredient to be brewed into a beverage by
dispensing the hot water through the ingredient,
the improvement being a rate selectable dispense
system, comprising:
a size adjustable electrically controllable
dispense valve having an inlet and an outlet;
means for connecting the inlet of the valve
to the hot water tank;
means for connecting the outlet of the
dispense valve to the brew basket; and
means for selectively generating different
control signals to adjust the size of the dispense
valve to selectively continuously automatically
pass a preselected quantity of hot water from the
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hot water tank to the brew basket at different
continuous rates during a preselected dispense time
period.

The Rejections
Appellant seeks review of the Examiner's rejection under 35 U.S.C. §
103(a) of claims 1-6 and 28-33 as unpatentable over US Patent 5,375,508 to
Knepler (Dec. 27, 1994) and US Patent 5,129,434 to Whigham (Jul. 14,
1992).

SUMMARY OF DECISION
We AFFIRM.

ISSUES
The Examiner rejected claims 1-6 and 28-33 under § 103(a) by
combining the beverage brewer in Knepler, which has a fixed-sized valve,
with a variable-sized valve, as described in the beverage dispenser in
Whigham. Ans. 3-4. Appellant directs all arguments to independent claims
1 and 28, and does not separately address the dependent claims. Therefore,
the issues presented in this appeal are:
(1) Has Appellant demonstrated that the Examiner failed to properly
combine Knepler and Whigham? In particular, is the valve described
in Whigham suitable for combination with the coffee brewer in
Knepler, as combined by the Examiner?
(2) Has Appellant demonstrated that the Examiner erred in finding that
Knepler and Whigham, in combination, describe a "preselected
dispense time period"?
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(3) Has Appellant demonstrated that the Examiner erred in finding that
Knepler and Whigham, in combination, describe "different control
signals to adjust the size of the dispense valve"?

FACTS PERTINENT TO THE ISSUES
(FINDINGS-OF-FACT (FF))
FF1 The Examiner found that Knepler describes a control circuit 28 for
selectively generating different control signals to adjust a dispense
valve 32, which dispenses hot water from a hot water tank 24 to a
brew basket (infusion assembly) 22. Ans. 3. Valve 32 is opened and
closed by control circuit 28. Col. 10, ll. 10-14; see also FF2, FF4.
FF2 Knepler describes that valve 32 is controlled by control circuit 28 by
different signals that direct valve 32 to fully open or fully close. Col.
10, ll. 10-14, col. 7, noting control functions 21-29 that specify a time
at which the valve is to either open or close. Therefore, valve 32 is, at
all times, either fully open (on), or fully closed (off), such that valve
32 is not continuously adjustable in size.
FF3 The Examiner found that Whigham describes a valve 10, the valve
being electronically controlled by controller 66. Ans. 3. A motor
32/82 moves valve member 30 into various positions, causing various
flow rates of liquid through the valve. Ans. 3; Whigham, figs. 1-3, 5.
Each of figs. 1-3 and 5 show different methods for electronically
controlling the valve 30, using stepper motors, cams, and solenoids.
See Whigham, col. 2, ll. 17-23, 28, 29.
FF4 Knepler describes that, in certain brewing conditions, the infusion
assembly 22 may overflow because hot water inflow exceeds brewed
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beverage outflow. Col. 5, ll. 3-5, 12-19. This problem can be solved
by reducing the flow rate of water into the infusion assembly 22. Col.
3, ll. 58-63. In Knepler, the problem is solved by periodically starting
and stopping the flow of water from the reservoir 24 to the infusion
assembly 22 by periodically opening and closing valve 32. Col. 5, ll.
3-12. This feature is controlled by control circuit 28, which
electronically operates valve 32 according to programmed functions.
Col. 10, ll. 4-23.
FF5 Whigham discloses that a dispenser system having a variable-sized
electronic valve for continuously dispensing a beverage represents an
improvement over an intermittent on-off type dispenser system. Col.
1, ll. 40-44.

PRINCIPLES OF LAW
“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, logically would
have commended itself to an inventor's attention in
considering his problem.” In other words,
“familiar items may have obvious uses beyond
their primary purposes.”
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir.
2007) (citations omitted). Moreover, in making a determination with regard
to obviousness, the inquiry is not limited to looking only at the problem
Appellant was trying to solve. The question is not whether the combination
was obvious to Appellant but whether it was obvious to a person of ordinary
skill in the art. Thus, “[u]nder the correct analysis, any need or problem
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known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).
In obviousness determinations, all of the features of the secondary
reference need not be bodily incorporated into the primary reference. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, the artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment. Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).

ANALYSIS
Issue (1) - The Combination of Knepler and Whigham
The Examiner found that Knepler describes a beverage brewer with a
hot water tank connected to brew basket 22 via valve 32, which is controlled
by means 28 for generating signals to adjust the valve. FF1. Next, the
Examiner ostensibly found that the valve 32 does not adjust the flow rates
continuously, but, rather, intermittently. Ans. 3; see also FF2. However, the
Examiner found that Whigham describes an electronically controllable, size-
adjustable dispense valve 10. Ans. 3; FF3. Therefore, the Examiner
concluded that it would have been obvious to substitute the discrete on/off
electronic valve in Knepler with the continuously variable-sized electronic
valve in Whigham, in order to control the flow rate of the water without
having to start and stop the flow of water. Ans. 4; see also FF5 noting that
the variable-sized valve in Whigham provides a clear alternative solution to
the intermittent on/off overflow solution in Knepler.
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Appellant first argues that a person of ordinary skill in the art would
not look to Whigham's valve for use in the coffee brewer of Knepler,
because Whigham's valve is not in the field of "hot water brewers." Appeal
Br. 17. However, the variable-sized valve in Whigham is useful for
providing a variable flow rate of fluid. See FF3. Knepler describes that the
flow rate of water needs to be variable in coffee brewers, in order to solve
the overflow problems known in the art. See FF4. Therefore, Whigham
directly presents a solution to a problem known in the art of "hot water
brewers." See KSR, 550 U.S. at 420.
Appellant next argues that Whigham's valve cannot be combined with
Knepler's coffee brewer because Whigham's valve is "manually controlled."
Appeal Br. passim; cf. FF3. However, not all aspects of a reference need be
"bodily incorporated" in a combination of references. See Keller, 642 F.2d
at 425. The Examiner's rejection uses the electrically controllable, size-
adjustable valve in Whigham (see FF3) to replace the electrically
controllable, non-size-adjustable valve in Knepler (see FF2). Because
Whigham's valve is electronic and fully controlled by an electronic control
device (see FF3), it is clear that it is not "manual," as Appellant alleges. As
far as Appellant is suggesting that the Examiner need incorporate the manual
push bar described in Whigham, the Examiner need not incorporate the
corpus of Whigham, including unnecessary items like a manual push bar or
an extra mixing valve (see Appeal Br. 19, 20-21), which did not constitute a
part of the Examiner's proposed combination of Knepler and Whigham. See
Lear Siegler, 733 F.2d at 889.
Appellant further argues that Whigham's valve is not combinable with
Knepler's coffee brewer because Whigham's valve does not have anti-liming
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features. Appeal Br. 17. However, no such anti-liming features are required
by claims 1 and 28. It is well established that limitations not appearing in
the claims cannot be relied upon for patentability. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982). In addition, Appellant has provided no factual
evidence that Whigham's valve would not be suitable for the proposed
combination. An attorney's arguments in a brief cannot take the place of
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Finally, Appellant argues that even if combined, the Examiner's
rejection is based on erroneous characterization of the references. Appeal
Br. 14-15 and 21-22. However, Appellant is arguing the references in
isolation, failing to appreciate that the rejection is based on the combination
of references. One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
See Keller, 642 F.2d at 425.

Issue (2) - "Preselected Dispense Time Period"
The Examiner found that Knepler describes a means 28 for selectively
generating different control signals, the signals representing a preselected
time period for dispensing water. FF1; see FF4. Appellant argues that
neither reference describes a "preselected dispense time period." Appeal Br.
15, 20. In particular, Appellant argues that Knepler describes opening and
closing a valve to increase the dispense time period. Id.
Claims 1 and 28 require that i) a preselected quantity of water ii) is
passed at different continuous rates iii) during a preselected dispense time
period. It is important to note that the claims do not require that the quantity
of water equal the entire quantity to be brewed, nor does the claim require
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that the time period equal the entire brew period. Instead, the claims merely
require that, during some time period, some quantity of water is dispensed at
more than one flow rate, the flow rates being continuous. Further, simple
mathematics dictates that volume, time, and flow rate (volume/time) are
related such that knowing any two makes the third known1. Therefore,
given a known volume and flow rate, the time it takes for that volume to
pass at that rate is given. In other words, given a preselected volume and
known flow rates, the time in which that volume takes to flow is also
preselected, de facto.
In Knepler, the flow rates through a valve are two discrete rates (see
FF2, noting that the valve flows at full on or full off) that operate at those
flow rates for a known period of time (see FF2, noting that the period
between each on/off cycle is dictated by functions 21-29). Given the known
flow rates of the valve used, and the known period of time these flow rates
are effective, a known quantity of water will pass through the valve. Each of
these known quantities is "preselected" because their value is selected by the
programming of the coffee brewer, either directly or indirectly.
Therefore, by substituting the discrete on/off valve in Knepler with
the continuously size-adjustable valve in Whigham, the Examiner has
addressed the missing "different continuous rates" limitation of claims 1 and
28. See Ans. 3-4. Therefore, in the combination of Knepler's brewer and
Whigham's valve, when the coffee brewer's programming (appropriately
modified, see Issue (3), infra) decides to slow down the flow rate to prevent

1 Considering all potential variables (friction, pressure, valve travel speed,
multiple flow rates, etc.) would necessarily complicate the relationship, but
make it no less so.
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an overflow, a preselected quantity of water will pass because it will pass
during a preselected "slow" time period, at which the water will pass at the
different, known flow rates.

Issue (3) - "Different Control Signals"
The Examiner found that Knepler describes a means 28 for selectively
generating different control signals. FF1; see FF4. Appellant argues that
Knepler describes only one control signal, not multiple control signals.
Appeal Br. 21-22. However, Knepler clearly describes more than one signal
controlling the valve, one signal to open the valve and one to close the valve.
See FF2, noting, e.g., functions 21 and 22 of Knepler. Further, one of
ordinary skill in the art would have easily made the appropriate
programming changes to handle Whigham's continuously adjustable valve,
to allow the valve to continuously adjust. As noted by Appellant, the
"precise control program of the programmable controller … form[s] no part
of the invention." Spec. 17:6-9. Appellant describes no particular
programming to continuously adjust their size-adjustable valve, making
clear Appellant's position that such programming details are within the level
of ordinary skill in the art2.

2 If such programming were not within the level of ordinary skill in the art,
Appellant would have to provide an enabling written description of such
programming in order to comply with 35 U.S.C. § 112. See, e.g., Hybritech,
Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986)
(citing Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick,
730 F.2d 1452, 1463 (Fed.Cir.1984), "a patent need not teach, and
preferably omits, what is well known in the art").
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CONCLUSION
Appellant has not shown that the Examiner erred in rejecting
independent claims 1 and 28. Specifically, Appellant has not shown that the
Examiner erred in concluding that it would have been obvious to substitute
the on/off electronic valve in Knepler with the continuously variable
electronic valve in Whigham, in order to control the flow rate of the water
without having to start and stop the flow of water. Further, Appellant has
not shown that the Examiner erred in concluding that Knepler and
Whigham, in combination, render obvious a "preselected dispense time
period" or "different control signals." Likewise, Appellant has not shown
that the Examiner erred in rejecting dependent claims 2-6 and 29-33.

DECISION
The Examiner's decision is affirmed as to claims 1-6 and 28-33.
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)(iv) (2007).

AFFIRMED

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James W. Potthast
Law Offices of Potthast & Associates
10606 Doorpath Road
Woodstock, IL 60098