Ex Parte TANDownload PDFPatent Trial and Appeal BoardFeb 15, 201915021417 (P.T.A.B. Feb. 15, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 15/021,417 03/11/2016 JINGWEITAN 24737 7590 02/20/2019 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus A venue Suite 340 Valhalla, NY 10595 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. 2013P00177WOUS01 7829 EXAMINER WILLIAMS, LELA ART UNIT PAPER NUMBER 1792 NOTIFICATION DATE DELIVERY MODE 02/20/2019 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): patti. demichele@Philips.com marianne.fox@philips.com katelyn.mulroy@philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JING WEI TAN Appeal2019-001304 Application 15/021,417 Technology Center 1700 Before JAMES C. HOUSEL, LILAN REN, and MERRELL C. CASHION, JR., Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-19. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision refers to the Specification ("Spec.") filed March 11, 2016, the Examiner's Final Office Action ("Final") dated December 11, 2017, Appellants' Appeal Brief ("Appeal Br.") filed May 18, 2018, the Examiner's Answer ("Ans.") dated September 28, 2018, and Appellants' Reply Brief ("Reply Br.") filed November 26, 2018. 2 Appellant is the Applicant, Koninklijke Philips N.V., which is identified in the Appeal Brief as the real party in interest (Appeal Br. 3). Appeal2019-001304 Application 15/021,417 STATEMENT OF THE CASE The invention relates to a method and apparatus for controlling a roasting process of coffee beans (Spec. 1 :5). Appellant discloses that, although it was known that the surface color of coffee beans is an important indicator to determine the roasting level of the coffee beans, surface color alone is insufficient to determine the roasting degree because coffee beans with the same surface color may have different core or inner part color due to different bean type or roasting profile (id. at 1 :26-31 ). Therefore, Appellant discloses a method, apparatus, and coffee machine for controlling a roasting process of coffee beans, wherein the method comprises sampling first and second batches of coffee beans during roasting, detecting the surface color of the first batch of coffee beans, grinding the second batch of coffee beans and detecting the color of the ground beans, and controlling the roasting process at least partially based on the detected color of the surface and the inner part of the sampled coffee beans (id. at 2:7-13). According to Appellant, doing so permits automatic adjustment of the roasting profile during the roasting process with high accuracy and limited user effort (id. at 2: 14--16). Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the subject matter on appeal. 1. A method for controlling a roasting process of coffee beans, comprising steps of: - sampling a first batch of coffee beans and a second batch of coffee beans from said coffee beans during roasting; - detecting a surface colour of the first batch of coffee beans; - grinding the second batch of coffee beans and detecting a powder colour of the second batch of coffee beans after grinding; and 2 Appeal2019-001304 Application 15/021,417 - controlling the roasting process at least partially based on the detected surface colour of the first batch of coffee beans and the detected powder colour of the second batch of coffee beans. Independent claim 10 recites an apparatus for controlling a roasting process of coffee beans comprising a sampling unit, a grinding unit, a detection unit, and a control unit. 3 REJECTIONS The Examiner maintains, and Appellants request our review of, the following grounds of rejection under 35 U.S.C. § 103: 1. Claims 1-10 and 14 as unpatentable over Mergili4 in view of Scarsella, 5 and further in view of Wasserman; 6 3 We note claim 10 recites various "units," each preceded by a functionally descriptive term, e.g., sampling, grinding, detection, and control, and succeeded by a functional description set forth in a "configured to" clause. Neither the Examiner nor Appellant indicate whether the question of 3 5 U.S.C. § 112(±) has been addressed, nor are we able to find any discussion of this question in the record. Although Appellant are entitled to a presumption that § 112(±) is not implicated where the term "means" is not used, that presumption can be overcome where it is shown that the term used, in this case "unit," is a nonce word used in the same fashion as "means." In accordance with MPEP 2181 (I), upon further prosecution, the Examiner may wish to evaluate whether there is sufficient corresponding structure for each of the "units" recited in claim 10. 4 Mergili et al., DE 19645306, published November 13, 1997. The Examiner relies, without objection, on an English machine translation dated January 5, 2017 ("Mergili"). 5 Scarsella et al., US 4,072,765, issued February 7, 1978 ("Scarsella"). 6 Wasserman et al., US 6,207,211 Bl, issued March 27, 2001 ("Wasserman"). 3 Appeal2019-001304 Application 15/021,417 2. Claims 11-13 as unpatentable over Mergili in view of Scarsella, and further in view of Wasserman and West; 7 and 3. Claims 15-19 as unpatentable over Mergili in view of Scarsella, and further in view of Wasserman and Buschmann. 8 ANALYSIS The Examiner finds that Mergili discloses a method for controlling a roasting process of coffee beans based on the surface color of the coffee beans during the roasting process (Final 2). The Examiner finds Mergili discloses that the degree of roasting may be controlled continuously on the basis of the surface color of the roasting coffee beans without removing the beans or interrupting the roasting process (id.). In addition, the Examiner finds Mergili fails to disclose grinding coffee beans and obtaining the color of the ground beans (id. at 3). Nonetheless, the Examiner finds Scarsella discloses a method of roasting coffee, wherein the roasting is expressed by the color from fine grinding of air-cooled roasting coffee (Final 3). The Examiner concludes that it would have been obvious "to also consider the color of coffee grinds during roasting and to control the roasting process based on said color, as taught by Scarsella, in the invention of Mergili, to achieve a coffee product with a high amount of coffee aromas and flavors" (id.). With regard to sampling of the coffee beans, the Examiner finds Wasserman teaches a coffee roasting method wherein samples of beans are taken from processing for analysis (Final 3). The Examiner concludes that it would have been obvious to sample a portion of the coffee beans in 7 West, US 5,526,437, issued June 11, 1996. 8 Buschmann, US 2014/0106038 Al, published April 17, 2014. 4 Appeal2019-001304 Application 15/021,417 Mergili' s process, as modified by Scarsella, during processing to ensure the beans were roasting within desired parameters (id.) Appellant argues that Mergili, Scarsella, and Wasserman, individually or in combination, fail to teach or suggest any control of the roasting process based at least in part on a detected powder or grind color of the coffee beans during the roasting process (Appeal Br. 14). Appellant contends that Mergili teaches away from sampling and grinding of coffee beans during the roasting process (id. at 15-16). In particular, Appellant asserts that Mergili teaches detecting the surface color of coffee beans during the roasting process without sampling and grinding (id. at 15). Appellant also contends that Scarsella grinds and detects the color of the ground coffee beans only after the roasting process is complete (id. at 16). As such, Appellant contends that Scarsella fails to teach or suggest sampling and grinding of coffee beans during the roasting process for controlling the process (id.). Appellant also contends that Wasserman fails to teach sampling of coffee beans during the roasting process for controlling the process (id.). Appellant's arguments are persuasive of reversible error. There is no dispute that Mergili fails to teach sampling and grinding of coffee beans during the roasting process, detecting the color of the ground beans, and controlling the roasting process based, at least in part, on the detected ground bean color. Mergili teaches an improved method for controlling the coffee roasting process that does not require frequent sample taking or interruption of the process (Mergili 2, 3rd ,r). However, Mergili discloses that sample taking during the roasting process was known for controlling the process (id. at 2, 2d i-f). The disclosure of an alternative, albeit inferior, solution does not amount to a teaching away. DePuy Spine, Inc. v. 5 Appeal2019-001304 Application 15/021,417 Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). However, the problem with the combination of applied prior art here is there is no teaching to sample and grind coffee beans during the roasting process, detect the surface color of the beans as well as their grind color, and control the roasting process based, at least in part, on the detected colors. As Appellant contends, Scarsella and Wasserman fail to teach these features (Reply Br. 10-11 ). Scarsella merely determines the color of the ground roasted coffee at the end of the roasting process (Scarsella 2:47-68, 4:3-9). Scarsella does not suggest that the color of ground coffee beans sampled during the roasting process may be used to control the process. Likewise, Wasserman merely samples and grinds coffee beans at a specific predetermined transition point in the roasting process and at the end of the roasting process to determine that the roasted beans have roasted to a desired roast color in each of the two steps of the roasting process (Wasserman 1:55---67, 2:50---65). The Examiner does not find that Wasserman teaches controlling the roasting process based, at least in part, on the detected color of the sampled and ground coffee beans. Because there is no teaching or suggestion in the applied prior art to sample and grind coffee beans during the roasting process, detect the color of the ground coffee, and control the roasting process based, at least in part, on the detected color of both the surface of the sampled coffee beans and the ground coffee beans, we cannot say that the Examiner has carried the burden of establishing a prima facie case of obviousness of the claimed invention. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Only impermissible hindsight serves as a 6 Appeal2019-001304 Application 15/021,417 guide to arrive at the claimed invention. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."); In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) ("hindsight" is inferred when the specific understanding or principal within the knowledge of one of ordinary skill in the art leading to the modification of the prior art in order to arrive at Appellant's claimed invention has not been explained). "[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention." Metal craft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017). We note that the obviousness rejection of claim 10 relies on the same prior art combination as applied against claim 1 and, likewise, suffers from the same deficiencies as discussed above. In particular, we find no teaching or suggestion for providing a sampling unit providing coffee beans to grinding and detection units, and a control unit configured to control the roasting process based, at least in part, on the detected color of the surface of sampled coffee beans and the detected color ground sampled coffee beans. Moreover, we note that the Examiner does not rely on either West or Buschmann to remedy the deficiencies in the rejection of claim 10. Accordingly, we will not sustain the Examiner's decision to reject claims 1 and 10, and claims 2-9 and 11-19 which depend, respectively, therefrom. DECISION Upon consideration of the record, and for the reasons given above and in the Appeal and Reply Briefs, the decision of the Examiner rejecting 7 Appeal2019-001304 Application 15/021,417 claims 1-19 under 35 U.S.C. § 103 as unpatentable over the combined teachings of Mergili, Scarsella, and Wasserman, alone or further combined with West or Buschmann, is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation