Ex Parte Noble et al

Patent Trial and Appeal Board

Apr 20, 2016

12692314 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/692,314 01122/2010
7590
Phillip M, Pippenger
Miller, Matthias & Hull
suite 2350
One North Franklin Street
Chicago, IL 60606
04/20/2016
FIRST NAMED INVENTOR
Ken Noble
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.
29605/16002 1607
EXAMINER
SMITH, CHAIM A
ART UNIT PAPER NUMBER
1792
MAILDATE DELIVERY MODE
04/20/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEN NOBLE and SAMANTHA PESKI1
Appeal2014-005316
Application 12/692,314
Technology Center 1700
Before PETER F. KRATZ, KAREN M. HASTINGS, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-7 and 15-17 in the above-identified application. We
have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Sturm Foods, Inc.
Appeal Br. 3.
Appeal2014-005316
Application 12/692,314
BACKGROUND
Appellants' invention relates to "soluble coffee products that include
compressed coffee particles." Spec. iJ 1. Independent claim 1 is
representative:
1. A soluble coffee product comprising a mixture of
freeze dried roasted coffee, micro-milled roasted coffee and
coffee oil, the mixture being formed of compressed
particles, each having a particle size between 4 mesh and 25
mesh.
Appeal Br. App. A 12 (emphasis added). Claims 15, 16, and 17 are also
independent. Id. at 13.
The Examiner maintains the following grounds of rejection:
I. Claims 1, 2, and 4 under 35 U.S.C. § 103(a) as being unpatentable
over EP 0 928 561 Al [hereinafter Gilbert] (published July 14, 1999), in
view of US 3,769,032 [hereinafter Lubsen] (issued Oct. 30, 1973) as further
evidenced by Michael Sivetz, 2 Coffee Processing Technology 13, 24
(1963), US 3,655,397 [hereinafter Parliament] (issued Apr. 11. 1972), and
EP 0 220 889 A2 [hereinafter Lascelles] (published May 6, 1987), and
further in view of US 2,931,727 [hereinafter Kraut] (issued Apr. 5, 1960).
Answer 2-5.
II. Claims 5-7 under 35 U.S.C. § 103(a) as being unpatentable over
Gilbert, in view of Lubsen as further evidenced by Sivetz, Parliament, and
Lascelles, and further in view of Kraut and US 5,840,189 [hereinafter
Sylvan] (issued Nov. 24, 1998). Answer 5-6.
III. Claims 3 and 15-17 under 35 U.S.C. § 103(a) as being
unpatentable over Gilbert, in view of Lubsen as further evidenced by Sivetz,
Parliament, and Lascelles, and further in view of Kraut and
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Application 12/692,314
US 2006/0216377 Al [hereinafter Milon] (published Sept. 28, 2006).
Answer 6-8.
All the claims are argued as a group. See Appeal Br. 9-10.
Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv)
(2013), we limit our discussion to claim 1, and all the claims stand or fall
together.
DISCUSSION
Upon consideration of the evidence on this appeal record and each of
Appellants' contentions raised in the Appeal Brief, we determine that a
preponderance of the evidence supports the Examiner's conclusion that the
subject matter of Appellants' claims is unpatentable over the applied prior
art. We sustain the Examiner's§ 103 rejections for essentially the reasons
set out by the Examiner in the Answer. We add the following for emphasis.
The Examiner finds, in particular, that Kraut teaches a soluble coffee
product comprising compressed particles of a fines fraction that is close in
size to the 4 mesh upper size limit required by claim 1. Final Action 3. The
Examiner calculates the approximate size by noting that Kraut teaches the
production of pellets of size%" or about mesh 2.5, "which would allow for
moistened particles of a slightly smaller size or close to mesh 3 (0.279")."
Id. The Examiner then finds that the moistened particles would be expected
to shrink on drying, so that the resulting dry particles would be "close to the
claimed size of 4 mesh." Id. The Examiner determines that reaching the
size range required by claim 1 is merely a matter of scaling, and "the exact
particle size would be a result effective variable and subject to routine
experimentation to the ordinarily skilled artisan" because Kraut teaches that
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Application 12/692,314
particle size represents a tradeoff between extraction rate and brewing
problems such as channeling. Id. at 4.
Appellants argue that Kraut discloses compression and particle size in
two distinct embodiments, and that it is improper for the Examiner to show
obviousness by combining features of the two embodiments. See Appeal Br.
9-10 (citing Ex parte Cucerzan, Appeal No. 2009-008190, 2011 WL
1661470 (BPAI 2011)). Appellants characterize the first embodiment as "to
compress the fines as they are with no additional ingredients and no
wetting," and the second embodiment as "to add a binder agent (e.g., dried
coffee) to the fines, wet the mixture, and extrude it." Id. at 9. According to
Appellants, Kraut does not state that the particles formed by compression
alone have any particular size. Reply Br. 1. Appellants argue that "Kraut
does not teach a coffee product that is both compressed and sized per the
claims' stated limitations." Appeal Br. 10.
We are not persuaded that the Examiner erred in combining Kraut's
teachings about compression with its teachings about particle size. Although
it may be inappropriate to pick and choose elements from different prior art
embodiments in the context of a rejection under 35 U.S.C. § 102, the same
rule does not apply in the context of a 35 U.S.C. § 103 rejection. See, e.g.,
In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Therefore, we look to what
Kraut as a whole teaches to one of ordinary skill in the art at the time of
filing.
"A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective." In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). As indicated above,
Kraut recognizes that extraction rate and brewing problems are affected by
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Application 12/692,314
particle size. Accordingly, substantial evidence supports the Examiner's
finding that particle size is a result-effective variable.
Moreover, it is well settled that it would have been obvious for a
person of ordinary skill in the art to develop workable or even optimum
ranges for result-effective parameters. In re Woodruff, 919 F.2d 1575, 1577
(Fed. Cir. 1990) (where the difference between the claimed invention and
the prior art is some range, the applicant must show that the particular range
is critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range); see also In re Boesch, 617 F.2d 272,
276 (CCPA 1980).
Kraut teaches that in order to prevent pressure drop problems during
percolation associated with the presence of "fines" in a coffee grind, the
fines fraction may be formed "into pellets having a size substantially larger
than the course particles of the grind." Kraut 1:70-72. Kraut teaches two
ways of producing such particles from the fines fraction: ( 1) the fines may
be "pelletized under pressure by themselves," or (2) "the fines can have
blended therewith a small quantity of dried coffee extract which when
moistened provides a bond for the fines." Id. 2:20-23. In reference to using
moistened particles with a binder, Kraut teaches that the moistened mixture
"is readily extruded through % " die holes or thereabout" and then "cut into
pellet lengths in the order of%" to Y2"," after which the pellets are cooled
and dried. Id. at 2:62-65.
Kraut's teachings about size are not solely applicable to the extrusion
method. Kraut states that "[t]his fines fraction can be pelletized by means of
a variety of apparatus such as an extruding die, a tableting press and the
like." Id. at 2:53-55. Pressing and extruding through a die are thus
presented as alternative ways of "forming the 'fines' fraction of a coffee
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grind into pellets having a size substantially larger than the course particles
of the grind." Id. at 1 :70-72. The typical coarse particles in a grind,
according to Kraut, are retained by a #24 mesh screen. See id. at 2:47-51.
Thus, whether the particles are produced by pressing or extruding, Kraut
teaches that the particle size should be "substantially larger than" #24 mesh.
A person of ordinary skill in the art would have read Kraut as teaching that
forming particles of the exemplified size, regardless of means, would help
reduce pressure drop problems.
For the above reasons, and those expressed by the Examiner, we
affirm the Examiner's decision to reject claims 1-7 and 15-17.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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