Ex Parte Rivera

Patent Trial and Appeal Board

May 22, 2017

12960496 (P.T.A.B. May. 22, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/960,496 12/04/2010 Adrian Rivera 140/072 7343
27612 7590
AVERILL & GREEN
14831 E. Whittier Blvd.
Suite 206
WHITTIER, CA 90605
05/24/2017 EXAMINER
DUNIVER, DIALLO IGWE
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
05/24/2017 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):
kgreen @ averillandgreen.com
rgarcia@ averillandgreen.com
agreen@ averillandgreen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADRIAN RIVERA
Appeal 2015-005802
Application 12/960,496
Technology Center 3700
Before: JOHN C. KERINS, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1—5, 8, 9, 14, 15, 17—27, and 29. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2015-005802
Application 12/960,496
CLAIMED SUBJECT MATTER
The claims are directed to “a single serving brewing material holder.”
Spec. 12. Claim 1, reproduced below with emphasis added, is illustrative of
the claimed subject matter:
1. A packaging material for forming beverage pods, the
packaging material comprising:
a receptacle made from water permeable material, said
receptacle comprising;
a downward concave cup having a base, pleated
walls, and an upper opening and shaped to receive and hold a
brewing material; and
a pleated annular rim circling the downward
concave cup forming a top closed outside perimeter of the
receptacle; and
a generally flat cover hingedly attached to an outer edge
of the annular rim, said cover is configured to cover the upper
opening and the annular rim of the receptacle, wherein;
the packaging material is made from:
a smaller diameter flat first portion forming the flat
cover; and
a larger diameter flat second portion forming the
receptacle, wherein forming the downward concave cup of the
receptacle from the larger diameter flat second portion creates
the pleated walls in the downward concave cup and the pleated
annular rim; and
the annular rim and edge of the cover are configured to
reside between a lid and body of a holder to seal the packaging
material during brewing, the packaging material insertable and
removable from the holder for reuse of the holder.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
US 4,706,555
US 4,800,089
appeal is:
Nakamura
Scott
2
Nov. 17, 1987
Jan. 24, 1989
Appeal 2015-005802
Application 12/960,496
Melton US 6,202,542 B1 Mar. 20, 2001
Lazaris US 2002/0148356 A1 Oct. 17, 2002
Schmed US 6,499,388 B2 Dec. 31,2002
Hale US 2003/0222089 A1 Dec. 4, 2003
Hu US 6,832,542 B2 Dec. 21,2004
REJECTIONS
(I) Claims 14, 15, 17, and 18 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
(II) Claims 1, 3—5, 8, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Scott and Lazaris.
(III) Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Scott, Lazaris, and Melton.
(IV) Claims 14, 15, 18, and 29 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Fond and Scott.1
(V) Claim 17 is rejected under 35 U.S.C. 103(a) as unpatentable
over Fond, Scott, and Hu.
(VI) Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Scott, Lazaris, and Hale.
(VII) Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Scott and Lazaris.2
1 The Final Action lists the rejection of claim 29 as unpatentable over Fond
and Scott separately from the rejection of claims 14, 15, and 18 as
unpatentable over Fond and Scott. See Final Act. 7, 23.
2 The Final Rejection lists this rejection (Rejection (VII)) separately from the
rejection of claims 1, 3—5, 8, and 9 as unpatentable over Scott and Lazaris
(Rejection (II)). See Final Act. 3,14. Rejections (II) and (VII) differ insofar
as Rejection (VII) relies on the teachings of a patent Lazaris incorporates by
reference, Sylvan, U.S. 5,840,189, issued Nov. 24, 1998.
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Application 12/960,496
(VIII) Claims 23 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Scott, Lazaris, and Fond.
(IX) Claim 25 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Scott, Lazaris, and Nakamura.
(X) Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lazaris, Scott, and Schmed.
(XI) Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lazaris, Scott, Schmed, and Fond.
OPINION
Rejection (I)
Independent claim 14 recites, in part, “a body permanently opening to
release brewed drink through the opening avoiding any element of a coffee
maker entering the opening.” Appeal Br. 59 (Claims App.). The Examiner
finds that it is unclear whether the opening recited in claim 14 is the opening
of the recited concave cup or in the recited body. Final Act. 2. Claims 15,
17, and 18, which depend from claim 14, are likewise rejected as indefinite.3
Id.
Appellant does not address Rejection (I). See Appeal Br. 6—56.
Accordingly, this rejection is summarily affirmed.
Rejection (II)
The Examiner finds that Scott discloses most of the features recited in
independent claim 1, including (i) a receptacle including a cup having
pleated walls, (ii) a pleated annular rim circling the cup and forming a top
3 Claim 29 depends from claim 14, but was not included in Rejection (I).
See Appeal Br. 62 (Claims App.); Final Act. 2.
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Application 12/960,496
closed perimeter, and (iii) a generally flat cover. Final Act. 3. The
Examiner determines that “Scott does not explicitly disclose a hinge[,]
however[,] it would be obvious to have a hinge due to the glue attaching the
cover.” Id.
Appellant argues, “[t]he rejection further asserts that the pleated body
1 of Scott is both a wall and a rim of the wall. Based on the doctrine of
claim differentiation, separate distinct elements must be interpreted as
separate elements.” Appeal Br. 14.
In response, the Examiner states,
Per the dictionary, the term “rim” is defined as the upper or outer
edge of an object, typically something circular or approximately
circular. Since Scott, pleated wall is cover by a covering, it is
clear to the examiner that the top of the pleated wall forms a rim
and thus Scott discloses the limitation of claim 1.
Ans. 4. Thus, the Examiner finds that the top of the pleated walls in Scott
meets the requirement in claim 1 for a “pleated annular rim.”
Under the broadest reasonable interpretation, the Board’s construction
“cannot be divorced from the specification and the record evidence,” In re
NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011), and “must be consistent
with the one that those skilled in the art would reach,” In re Cortright, 165
F.3d 1353, 1358 (Fed. Cir. 1999). “Where a claim lists elements separately,
‘the clear implication of the claim language’ is that those elements are
‘distinct component[s] ’ of the patented invention.” Becton, Dickinson and
Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010).
Claim 1 recites that the cover is attached to an outer edge of the
annular rim. This implies that the annular rim also has an inner edge, i.e.,
that the annular rim has two edges. An annular rim having both inner and
outer edges does not comport with the Examiner’s construction of “rim” as
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Application 12/960,496
an edge of top of the pleated wall. Further, claim 1 recites that formation of
the cup “creates the pleated walls in the downward concave cup and the
pleated annular rim.” Thus, claim 1 refers to the rim as something other
than a portion of the wall(s). Appellant’s Specification states, “The filter
paper cup is formed by forming pleats in walls and a rim around the tops of
the wall. Preferably, a heat seal filter paper is used and the pleats in the
walls and rim are adhered by the heat to retain the shape.” Spec. 1 5. Thus,
in accordance with Appellant’s argument, the Specification describes the
walls and rim as distinct components. Consequently, we determine that the
Examiner’s interpretation of claim 1 is unreasonably broad with respect to
the requirement for “a pleated annular rim circling the downward concave
cup forming a top closed outside perimeter of the receptacle.”
The Examiner’s overly broad interpretation of claim 1 led to the
finding that Scott, by disclosing a pleated receptacle, discloses a pleated
annular rim as recited. Scott discloses a pleated wall, but no pleated annular
rim distinct from the pleated wall. See Scott, Figs. 1—4. The Examiner’s use
of Lazaris does not make up for this deficiency. Accordingly, we reverse the
Examiner’s rejection of claim 1, and claims 3—5, 8, and 9 depending
therefrom, as unpatentable over Scott and Lazaris.
Rejections (III)—(XI)
Independent claims 14 and 26 recite a feature substantially similar to
the one discussed above regarding claim 1, i.e., a pleated annular rim, and all
of claims 2—5, 8, 9, 15, 17—25, 27, and 29 depend from one of claims 1, 14,
and 26. Appeal Br. 57—62 (Claims App.). The Examiner’s rejections of
claim 14 as unpatentable over Fond and Scott, Rejection (IV), and 26 as
unpatentable over Lazaris, Scott, and Schmed, Rejection (X), rely on the
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Application 12/960,496
same overly broad claim construction and findings of fact discussed above
regarding the rejection of claim 1 as unpatentable over Scott and Lazaris.
See Final Act. 7—10, 17—21. Accordingly, for the same reasons discussed
above regarding Rejection (II), we reverse Rejections (III)-(XI).
DECISION
(I) The Examiner’s decision to reject claims 14, 15, 17, and 18 as
indefinite is affirmed.
(II) The Examiner’s decision to reject claims 1, 3—5, 8, and 9 as
unpatentable over Scott and Lazaris is reversed.
(III) The Examiner’s decision to reject claim 2 as unpatentable over
Scott, Lazaris, and Melton is reversed.
(IV) The Examiner’s decision to reject claims 14, 15, 18, and 29 as
unpatentable over Fond and Scott is reversed.
(V) The Examiner’s decision to reject claim 17 as unpatentable over
Fond, Scott, and Hu is reversed.
(VI) The Examiner’s decision to reject claims 19 and 20 as
unpatentable over Scott, Lazaris, and Hale is reversed.
(VII) The Examiner’s decision to reject claims 21 and 22 as
unpatentable over Scott and Lazaris is reversed.
(VIII) The Examiner’s decision to reject claims 23 and 24 as
unpatentable over Scott, Lazaris, and Fond is reversed.
(IX) The Examiner’s decision to reject claim 25 as unpatentable over
Scott, Lazaris, and Nakamura is reversed.
(X) The Examiner’s decision to reject claim 26 as unpatentable over
Lazaris, Scott, and Schmed is reversed.
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Application 12/960,496
(XI) The Examiner’s decision to reject claim 27 as unpatentable over
Lazaris, Scott, Schmed, and Fond is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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