Ex Parte Magg et al

Patent Trial and Appeal Board

Oct 22, 2012

10587226 (P.T.A.B. Oct. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHANN MAGG, ANDREAS MAYR,
and MICHAEL STEFFL
____________

Appeal 2010-009483
Application 10/587,226
Technology Center 3700
____________

Before STEVEN D.A. McCARTHY, MICHELLE R. OSINSKI, and
JILL D. HILL, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge HILL.

Opinion Dissenting filed by Administrative Patent Judge McCARTHY.

HILL, Administrative Patent Judge

DECISION ON APPEAL
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Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 17, 23-27, 29, 31-34, and 36. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
REJECTION
Appellants seek review of the Examiner’s rejection of claims 17, 29,
31, and 32 under 35 U.S.C. § 102(b) as anticipated by Fiori (US 3,030,874,
iss. Apr. 24, 1962), Ans. 3-4; the Examiner’s rejection of claims 23-27 and
36 under 35 U.S.C. § 103(a) as unpatentable over Fiori and Endo (US
3,561,349, iss. Feb. 9, 1971), Ans. 3-4; and the Examiner’s rejection of
claims 33 and 34 under 35 U.S.C. § 103(a) as unpatentable over Fiori and
Bambi (US 5,598,764, iss. Feb. 4, 1997), Ans. 4.
ANALYSIS
The claimed subject matter relates to a two-part coffee machine
brewing chamber.
Claims 17 and 32 are the independent claims on appeal. Claim 17 is
illustrative of the subject matter on appeal and is reproduced below with the
key disputed limitation emphasized:
17. A brewing chamber of a coffee machine
using a coffee pad, the brewing chamber
comprising:
a top part having openings allowing water to
be delivered to the brewing chamber, and an outer
seal; and
a bottom part,
wherein the top part is formed as a single
monolithic piece of elastic material.

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The Rejection of Claims 17, 29, and 32
Appellants argue claims 17, 29, and 32 as a group on the basis of
claim 17. App. Br. 7-8. We select claim 17 as the representative claim. See
37 C.F.R. § 41.37(c)(1)(vii). Claims 29 and 32 will stand or fall with claim
17.
The Examiner finds that Fiori discloses a brewing chamber
comprising: a top part 30 having openings 76 for the passage of water, (col.
4, ll. 45-49), and an outer seal in the form of a deformable periphery, (col. 2,
ll. 59-64 and fig. 1); and a bottom part 48 containing a coffee pad and
accepting the top part upon expansion, (col. 3, ll. 14-16 and fig. 2); wherein
the top part 30 is formed as a single monolithic piece of elastic material,
(col. 4, ll. 58-60 and fig. 1). Ans. 3- 4. Appellants argue that band 36
cannot form “an outer seal” as recited in claim 17 if the diaphragm 30 is
considered to be the recited top part and the base 48 is considered to be the
claimed bottom part. App. Br. 7-8.
Claim 17 does not recite what is sealed by the “outer seal.” See, e.g.,
Spec. 2, ll. 25-27; Spec. 3, ll. 30-32; and Spec. 8, ll. 19-23. Also, neither the
Examiner nor Appellants proffer a definition for the term “seal,” and
Appellants’ Specification does not provide a formal definition of the term
“seal.” In determining the ordinary and customary meaning of the term
“seal” as viewed by a person of ordinary skill in the art, it is appropriate to
consult a general dictionary definition for guidance. Comaper Corp. v.
Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). The ordinary meaning of
“seal” includes: “a tight and perfect closure (as against the passage of gas or
water).” MERRIAM-WEBSTER DICTIONARY, available at
http://www.merriam-webster.com/dictionary/seal (last visited Oct. 1, 2012).
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Nothing in the Specification is inconsistent with this usage of the term
“seal.” Accordingly, the Examiner’s finding that Fiori discloses an outer
seal is supported by the reference.
We therefore sustain the rejection of claims 17, 29, and 32 under 35
U.S.C. § 102(b).
The Rejection of Claim 31
Claim 31 depends from claim 30. The Examiner objects to claim 30
as being dependent upon a rejected base claim, but states that claim 30
would be allowable if rewritten in independent form including all limitations
of the base claim and any intervening claims. (Final Office Action mailed
August 10, 2008 at 3). The Examiner has not articulated any reasoning with
any rational underpinning to support the conclusion that the subject matter of
claim 31, including without limitation subject matter incorporated into claim
31 by reference from claim 30, would have been obvious. We therefore
cannot sustain the rejection of claim 31 under 35 U.S.C. § 102(b).
The Rejection of Claims 23-27 and 36
With respect to claim 23, Appellants do not advance any argument
suggesting that claim 23 might be patentable over Fiori and Endo if claim 17
is anticipated by Fiori. App. Br. 8. We therefore sustain the rejection of
claim 23 as unpatentable over Fiori and Endo.
Appellants argue claims 24-26 as a group on the basis of claim 24.
App. Br. 9-10, Reply. Br. 7-8. We select claim 24 as the representative
claim. See 37 C.F.R. § 41.37(c)(1)(vii). Claims 24-26 stand or fall together.
With respect to claim 24, the Examiner finds that Endo discloses the use of
concentrically arranged ribs 22 on a top part 2 of a brewing chamber, and
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that the ribs 22 provide an improved seal between the top part 2 and a coffee
package 16 in the brewing chamber, as the coffee within the package
expands upon contact with hot water as shown in Endo’s fig. 7. Ans. 3; see
also col. 2, ll. 58-75. The Examiner concludes that it would have been
obvious to one skilled in the art to provide the top part 30 of Fiori with the
ribs 22 of Endo to provide an improved seal between the top part and the
coffee pad during the entry of hot water. Ans. 3. The Examiner's Answer
states that the spaces between the concentric ribs 22 of Endo correspond to
the claimed gaps. Ans. 5.
Appellants argue that the Examiner’s interpretation of the recited
“gaps” is contrary to the language of claim 24, because all circularly-
arranged ribs necessarily have spaces between them or they would not be
circularly arranged ribs. Reply Br. 3. If there were no spaces between
circularly arranged ribs, then they would together form one large circular
protrusion, not a plurality of ribs. Id. Applicants argue that "circularly
arranged ribs provided with gaps" clearly means that at least two ribs are
provided and each of those ribs has gaps in it so that the rib does not form a
complete circle. Id.
Appellants’ proposed interpretation of the term “provided with gaps”
includes language that is not recited in claim 24. In a patentability context,
claims are to be given their broadest reasonable interpretation. Limitations
are not to be read into the claims from the specification. In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993). Appellants’ arguments are not
commensurate with the scope of the claim language, and we decline to read
Appellants’ suggested limitations into the claim.

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Appellants also contend that:
there would have been no reason to improve the seal between
diaphragm 30 and coffee pad 72 of Fiori. Since the purpose of
the ribs 22 of Endo is to improve the seal between downwardly
facing wall 2 and the coffee package, it would not have been
obvious to combine ribs 22 of Endo with diaphragm 30 of Fiori.

App. Br. 9.

The Examiner’s proposed reason for modifying the structure
described by Fiori, to improve the seal between the top part and the coffee
pad (Ans. 3), is disclosed by Endo. Endo advocates the use of annular ribs
“so that as the coffee expands the upper surface of the package conforms to
these ribs, improving the seal.” Endo, col. 2, ll. 60-63. The Examiner also
finds that “[t]he spacing of the Endo ribs allows for the formation of seals at
more than just one location with the coffee package.” Ans. 5. The
Examiner articulated persuasive reasoning with some rational underpinning
supportive of the legal conclusion of obviousness. See KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007); In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006).
We therefore sustain the rejection of claim 24-26 under 35 U.S.C.
§ 103(a).
Claims 27 and 36 recite “the openings are [or being] arranged in the
gaps.” The Examiner states that it would be “assumed” that Fiori as
combined with Endo’s gaps would contain openings in the gaps between the
ribs because the top part of Fiori has “so many openings.” Ans. 5.
Appellants argue that the purpose of ribs 22 of Endo is to improve a seal
with the coffee package (col. 2, lines 60-63), and that “to provide openings
between the ribs would frustrate this purpose by inhibiting any sealing
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feature of the ribs.” Reply Br. 4. Indeed, Endo does not disclose openings
in the gaps. The Examiner’s finding that the combination of Fiori and Endo
would disclose openings arranged in gaps appears to be speculative. The
existence of Fiori’s “many openings” is not sufficient evidence or scientific
reasoning to establish by a preponderance of the evidence that Fiori and
Endo teach openings specifically arranged in the gaps between the ribs.
Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the
general evidentiary standard for proceedings before the Office). The
rejection of claims 27 and 36 under 35 U.S.C. § 103(a) is therefore not
sustained.
The Rejection of Claims 33 and 34
Claim 33 recites “the top part of the brewing chamber includes a
push-off element disposed near a central portion of the top element, the
push-off element bulging downwardly from the top part and providing a
downwardly biasing force against the coffee pad to separate the coffee pad
from the top part during removal of the coffee pad.” Claim 32, from which
claim 33 depends, recites the top part being “a single monolithic piece of
elastic material.”
The Examiner finds that Bambi discloses the use of a centrally
located, flexible bulging element 9H for contacting a filter cartridge in a
brewing chamber, and concludes that it would have been obvious to one
skilled in the art to form the top part of Fiori with the bulging member taught
in Bambi, in order to provide a compression force onto the beverage pad.
Ans. 4.
Fiori’s canister apparatus 10 includes a canister drawer 46 and a
diaphragm 30. Fiori, col. 2, ll. 47-50 and col. 3, ll. 10-12. Fiori teaches
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positioning a filter bag 72 containing beverage producing ingredients 74 in
the canister drawer 46. Fiori, col. 4, ll. 16-18. The diaphragm 30 is
composed of rubber, an elastic material. Fiori, col. 4, ll. 58-60. During
operation of the canister apparatus 10, fluid pressure flexes the diaphragm
30 such that the diaphragm 30 flexes downwardly into sealing engagement
with the peripheral edges of the wall 50 surrounding the canister drawer 46.
Fiori, col. 4, ll. 60-70.
Bambi describes an espresso coffee machine including a finely
perforated metal disk 9H which “cups slightly downward.” Bambi, col. 2, ll.
41-46 and fig. Bambi’s coffee machine also includes a coffee pad in the
form of a filter 11C filled with coffee powder 13. Bambi, col. 2, ll. 51-54.
Bambi teaches that the coffee powder 13 “is held between the filter 11C and
the perforated disk 9H.” Bambi, col. 2, ll. 51-54.
Appellants argue that the top part of claim 33 is formed as a single
monolithic piece of elastic material, and the push-off element forms part of
the monolithic top part, and therefore that combining screw 9F of Bambi
with diaphragm 30 of Fiori would not result in a single monolithic piece of
elastic material as claimed. App. Br. 10-11.
The Examiner counters that:
[a] view of the sole figure in Bambi and a disclosure at column
2, leads to the assumption that element 9H, which is cupped
downwardly, provides a downward force to filter 11C as it is
placed thereupon during use. This arrangement meets the
structural and functional requirements of Appellants’ claims 33
and 34. While Bambi discloses the use of a screw to support
element 9H, it is its teaching of a bulging arrangement on a top
part of a brewing chamber that is required. Bambi teaches that
having a centrally disposed, downwardly bulging push-off
element could solve a particular problem. The Fiori reference if
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provided with such an element or forming such an element,
would serve to solve the particular problem.
Ans. 5-6.
One of ordinary skill in the art familiar with the teachings of Fiori and
Bambi would have had reason to modify Fiori’s diaphragm 30 to form
monolithically within the diaphragm 30 a downwardly cupped or bulging
“push-off element.” More specifically, Bambi would have suggested that
modifying the diaphragm 30 to form such a push-off element might have
improved the ability of the diaphragm 30 to hold the beverage producing
ingredients 74 between Fiori’s filter bag 72 and diaphragm 30 in the same
way that Bambi’s downwardly cupped disk 9H held the coffee powder 13
between Bambi’s filter 11C and disk 9H. Ans. 5-6.
Appellants do not appear to respond to the reasoning set forth on
pages 5-6 of the Examiner’s Answer. In particular, the reasoning articulated
by the Examiner on pages 5-6 of the Answer does not depend on
incorporating the screw 9F described by Bambi into Fiori’s diaphragm 30.
Ans. 5-6. Appellants do not suggest that implementing the modification
proposed by the Examiner would have been beyond the level of ordinary
skill in the art or that the results of the modification might have been
unpredictable.
The Examiner correctly found that Bambi’s perforated metal disk 9H
meets the structural and functional requirements of claim 33. See Ans. 5-6.
Bambi’s teaching that the coffee powder 13 “is held between the filter 11C
and the perforated disk 9H” (Bambi, col. 2, ll. 51-54) provides the Examiner
reason to believe that Bambi’s perforated disk 9H provides a downwardly
biasing force against the coffee pad, that is, against the coffee powder 13.
The Examiner’s reason to believe that Bambi’s perforated disk 9H provides
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a downwardly biasing force against the coffee pad placed a burden on the
Appellants to produce evidence to rebut the belief. Despite this, Appellants
failed either to argue in the Reply Brief that the Examiner lacked sufficient
reason for belief or to re-open prosecution to present rebuttal evidence.
Appellants allege that adding Bambi’s screw 9F to Fiori’s diaphragm 30
would block the discharge openings 76 in the diaphragm 30 and frustrate the
main purpose of Fiori’s device. Forming Fiori’s diaphragm 30 with a
downwardly cupped or bulging “push-off element” such as Bambi’s
perforated disk 9H would not frustrate Fiori’s main purpose. For the
foregoing reasons, we sustain the rejection of claim 33 under § 103(a) as
being unpatentable over Fiori and Bambi.
Claim 34 recites the “coffee machine according to claim 33, wherein
the push-off element is substantially hemispherical in a stress-relieved
state.” App. Br. 11. The Examiner does not appear to find that either Fiori
or Bambi teaches a coffee machine meeting this limitation. Neither does the
Examiner articulate any proposed reason why one of ordinary skill in the art
might have modified the diaphragm 30 described by Fiori to meet this
limitation. Ans. 4-6. We do not sustain the rejection of claim 34 under
§ 103(a) as being unpatentable over Fiori and Bambi.

DECISION
We affirm the Examiner’s rejection of claims 17, 29, and 32 under 35
U.S.C. § 102(b) as anticipated by Fiori.
We reverse the Examiner’s rejection of claim 31 under 35 U.S.C. §
102(b) as anticipated by Fiori.
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We affirm the Examiner’s rejection of claims 23-26 under 35 U.S.C.
§ 103(a) as unpatentable over Fiori and Endo.
We reverse the Examiner’s rejection of claims 27 and 36 under 35
U.S.C. § 103(a) as unpatentable over Fiori and Endo.
We affirm the Examiner’s rejection of claim 33 under 35 U.S.C.
§ 103(a) as unpatentable over Fiori and Bambi.
We reverse the Examiner’s rejection of claim 34 under 35 U.S.C.
§ 103(a) as unpatentable over Fiori and Bambi.

AFFIRMED-IN-PART

Klh
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McCARTHY, Administrative Patent Judge, dissenting.
I join my colleagues’ decision sustaining the rejection of claims 17, 29
and 32 under 35 U.S.C. § 102(b) as anticipated by Fiori; and sustaining the
rejection of claim 33 under § 103(a) as being unpatentable over Fiori and
Bambi. I part with my colleagues as to the rejection of claims 24-26 under
35 U.S.C. § 103(a) as being unpatentable over Fiori and Endo.
The Appellants argue claims 24-26 as a group. (See App. Br. 9).
Representative claim 24 recites a brewing chamber with a top part having an
elevated structure which “includes circularly arranged ribs provided with
gaps.” (Claim 36 similarly recites a coffee machine with a top part
“including circularly arranged ribs provided with gaps.”) The Examiner
finds that the ribs 22 depicted in Figures 2 and 3 of Endo “have gaps
between them that are defined by the space between concentric ribs.” (Ans.
5). The Appellants argue that the term “circularly arranged ribs provided
with gaps” is limited to circularly arranged ribs having gaps in the ribs.
(App. Br. 9). The disagreement between the Examiner and the Appellants
turns on the scope of the term “provided with gaps” as recited in the phrase
“circularly arranged ribs provided with gaps” in claim 24.
The Appellants do not identify any formal definition or clear
disclaimer in the Specification which might resolve whether the Examiner’s
interpretation is unreasonably broad. Therefore, it is appropriate to look to
the ordinary usage of the term. In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007). Since neither the Examiner nor the Appellants
appear to argue that the term “provided with gaps” has a specialized
meaning within the pertinent art, it is appropriate to look to a general
purpose dictionary for guidance. See Phillips v. AWH Corp., 415 F.3d 1303,
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1314 (Fed. Cir. 2005)(en banc). The ordinary meaning of the term gap is “a
break in a barrier” or “a small cleft or notch.” (WEBSTER’S THIRD NEW
INT’L DICTIONARY (G&C Merriam 1971)(“gap,” defs. 1a and 2)). These
definitions are consistent with the Appellants’ interpretation of the phrase
“circularly arranged ribs provided with gaps” as limited to circularly
arranged ribs with gaps in the ribs.
The same general purpose dictionary also defines the word “gap” as a
“separation in space: an intervening distance.” (WEBSTER’S THIRD NEW
INT’L DICTIONARY (G&C Merriam 1971)(“gap,” def. 4a)). Were the use of
this definition in construing the phrase “circularly arranged ribs provided
with gaps” reasonable, the phrase might be sufficiently broad to encompass
any circularly arranged ribs having separations in space between the ribs.
Nevertheless, it is appropriate to look to intrinsic evidence surrounding a
claim term, such as whether the claim term is consistent with the disclosure
of the Specification and how the claim term interacts with other language
within the claim, for guidance as to the reasonableness of an interpretation of
the claim term. See Renishaw PLC v. Marposs SpA, 158 F.3d 1243, 1250
(Fed. Cir. 1998)(“A claim interpretation is persuasive, not because it follows
a certain rule, but because it defines terms in the context of the whole
patent.”); cf. Phillips (“In sum, extrinsic evidence [such as dictionary
definitions] may be useful . . ., but it is unlikely to result in a reliable
interpretation of patent claim scope unless considered in the context of the
intrinsic evidence.”).
The dictionary definitions of the term gap as “a break in a barrier” or
“a small cleft or notch” are consistent with the disclosure in the
Specification. The Appellants point out that Figures 7A and 7B of the
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underlying application depict circularly arranged ribs 65 with gaps 66 in the
ribs 65. (See Reply Br. 3). Page 8, lines 10-15 of the Specification refer to
the gaps 66 as “gaps.” The Specification does not use the term “gaps” to
refer to the spaces between the circularly arranged ribs 65. While Figures
7A and 7B depict a particular embodiment, it is appropriate to look to a
particular embodiment appearing in the Specification or drawings for
guidance in claim interpretation where the claim itself includes a “hook”
(such as the recitation “provided with gaps”) associating a feature of the
particular embodiment with a limitation of the claim. See Renishaw at 1252
(Fed. Cir. 1998).
On the other hand, an interpretation of the phrase “circularly arranged
ribs provided with gaps” sufficiently broad to encompass any circularly
arranged ribs having separations or spaces between the ribs would imply that
the recitation “provided with gaps” serves no purpose in claim 24. The
Appellants point out that “[a]ll circularly arranged ribs necessarily have
spaces between them or they would not be circularly arranged ribs. If there
were no spaces between circularly arranged ribs, then they would together
form one circular protrusion, not a plurality of ribs.” (Reply Br. 3).
Therefore, if the term “circularly arranged ribs provided with gaps” were
interpreted so broadly as to encompass circularly arranged ribs having gaps
between the ribs, the term “provided with gaps” would not further limit the
recited circularly arranged ribs as a practical matter. The Examiner did not
respond to this argument. Since Appellants propose a reasonable
interpretation which would give effect to the term “provided with gaps,” an
interpretation which concludes that the phrase “circularly arranged ribs
provided with gaps” is sufficiently broadly to encompass any circularly
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arranged ribs having separations between the ribs is unreasonably broad in
the context of claim 24. See, e.g., Stumbo v. Eastman Outdoors, Inc., 508
F.3d 1358, 1362 (Fed. Cir. 2007)(stating that our reviewing court disfavors
any claim interpretation which would render a claim term superfluous).
Under Appellants’ reasonable interpretation of claim 24, the term
“circularly arranged ribs provided with gaps” is limited to circularly
arranged ribs with gaps in the ribs. The Examiner does not find that either
Fiori or Endo describes a brewing chamber of a coffee machine meeting this
limitation. Neither does the Examiner articulate a persuasive reason why it
would have been obvious to modify Fiori’s diaphragm 30 to meet this
limitation notwithstanding the absence of a relevant teaching in either Fiori
or Endo. Therefore, I would not sustain the Examiner’s rejection of claims
24-26 under § 103(a) as being unpatentable over Fiori and Endo.

SDAM