Ex Parte Yoakim et al

Board of Patent Appeals and Interferences

Jan 3, 2008

10728342 (B.P.A.I. Jan. 3, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALFRED YOAKIM and PETR MASEK
__________

Appeal 2008-0164
Application 10/728,342
Technology Center 1700
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Decided: January 3, 2008
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Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 2, 4, 5, 10-12, 14-16, 19, and 20. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

INTRODUCTION
Appellants disclose a sealed cartridge, designed to be extracted under
pressure, containing a beverage substance (Specification 1). The cartridge
may be used to produce coffee having a good quality foam thereon
(Specification 1).
Appeal 2008-0164
Application 10/728,342

Claim 1 is illustrative:
1. A sealed cartridge comprising first and second sheet materials joined to
form a space there between, and a beverage-forming substance for preparing
a beverage located in the space between the sheets, with the first material
designed to admit water into the cartridge for extraction of the beverage
from the beverage-forming substance, and the second material having
properties to retain the water or beverage in the cartridge until an
overpressure of between 0.1 to 3 bar is achieved, at which overpressure the
second material will allow the extracted beverage to exit the cartridge,
wherein the first sheet material is selected from the group consisting of
paper, a non-woven fiber, prescored plastic material and combinations
thereof and wherein the second sheet is selected from the group consisting of
filter paper, non-woven fiber material, prescored plastic material and
combinations thereof having a sufficiently tight mesh to retain water or
beverage in the cartridge until the overpressure is reached and allows the
beverage to pass through it by effect of the fluid overpressure alone when
the overpressure of between 0.1 to 3 bar is reached, thus resulting in a delay
effect in the passage of the beverage through the second sheet after water has
been admitted into the capsule.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Favre US 4,136,202 Jan. 23, 1979
Illy US 4,253,385 Mar. 3, 1981
Fond US 5,897,899 Apr. 27, 1999

The rejections as presented by the Examiner are as follows:
1. Claims 1, 2, 4, 5, 11, 12, 14-16, 19, and 20 are rejected under
35 U.S.C. § 112, second paragraph, as failing to particularly point out
and distinctly claim the subject matter which applicant regards as the
invention.
2. Claims 1, 2, 4, 5, 11, 12, 14, 16, 19, and 20 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Fond in view of Favre.
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3. Claims 10 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fond in view of Favre and Illy.

Appellants only argue claim 1. Accordingly, we decide the first two
grounds of rejection on the basis of claim 1. We decide the third ground of
rejection on the basis of dependent claims 10 and 15.

OPINION
35 U.S.C. § 112, SECOND PARAGRAPH, REJECTION

The Examiner finds that claim 1 recites “the capsule,” which lacks
antecedent basis and thus fails to comply with the requirement of § 112,
second paragraph, to particularly point out and distinctly claim the subject
matter which applicant regards as the invention.
Appellants do not contest the § 112, second paragraph, rejection (Br.
12). Rather, Appellants indicate that they will amend the claim to change
“capsule” to “cartridge” to correct the error (Br. 12).
Accordingly, we summarily sustain the Examiner’s § 112, second
paragraph, rejection of claims 1, 2, 4, 5, 11, 12, 14-16, 19, and 20 as failing
to comply with the requirement to particularly point out and distinctly claim
the subject matter which applicant regards as the invention.

35 U.S.C. § 103 REJECTION OVER FOND IN VIEW OF FAVRE
The Examiner finds that Fond discloses all the features recited in
claim 1 except for the need for score lines in the cartridge (i.e., the score
lines in the claimed prescored plastic film) (Ans. 3-4). The Examiner finds
that Fond does not suggest that the inclusion of score lines in the tear face
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Application 10/728,342

would interfere with the functioning of the cartridge (Ans. 4). The Examiner
finds that Favre shows that using score lines is notoriously well known in
the art (Ans. 4). The Examiner concludes that it would have been obvious to
include score lines in the cartridge of Fond in order to reduce the
overpressure required to break the tear face (Ans. 4).
Appellants argue that Fond does not disclose the following claim
feature:
. . .wherein the second sheet is selected from the group consisting of
filter paper, non-woven fiber material, prescored plastic material and
combinations thereof having a sufficiently tight mesh to retain water
or beverage in the cartridge until the overpressure is reached and
allows the beverage to pass through it by effect of the fluid
overpressure alone when the overpressure of between 0.1 to 3 bar is
reached . . .

(Br. 12-13).
Appellants contend that Fond fails to disclose or suggest that the
second material is filter paper, non-woven fiber and/or a prescored plastic
material (Br. 13). Appellants contend that Fond’s tear face (i.e., second
sheet) requires high pressure and relief surface element members 13 to aid in
rupturing the tear face, whereas Appellants’ claimed second sheet allows the
beverage to pass by fluid overpressure alone when the overpressure is
between 0.1 to 3 bar (Br. 12-13). Appellants argue that Fond’s use of paper
fibers in a tear face made of paper fiber and aluminum is directed to a
support or filtering function of the paper fibers, not a delayed opening
function as claimed (Br. 14). Appellants contend that Favre does not cure
the deficiencies of Fond, and both Fond and Favre teach away from using
the claimed lower overpressure in favor of higher pressures (Br. 14).
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We have considered all of Appellants’ arguments and are not
persuaded for the reasons below.
We begin by construing Appellants’ claim 1 and, specifically, the
argued second sheet claim feature. Claim 1 is a product claim directed to a
sealed cartridge (claim 1). The argued second sheet claim feature noted
above contains both structural and functional limitations. Structurally, the
claim requires that the second sheet be made of a mesh material of one of
filter paper, non-woven fiber material, prescored plastic material or
combinations thereof (claim 1). Functionally, the claim requires the mesh be
“a sufficiently tight mesh to retain water or beverage in the cartridge until
the overpressure is reached and allows the beverage to pass through it by
effect of the fluid overpressure alone when the overpressure of between 0.1
to 3 bar is reached” (claim 1). The expression “sufficiently tight mesh” is,
according to the Specification, “understood to mean a low air or water
permeability.” (Specification 3:28-29).
Patentability of a product is based on the product itself. In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985). A functional feature of a claim is
limiting only in so far that it further limits the structure of the product.
We first must determine whether Fond disclose the structural features
of Appellants’ second sheet.
Fond discloses that the tear face (i.e., second sheet) should have the
characteristic of a foil and may be made of aluminum or plastic film (Fond,
col. 5, ll. 49-54). Composite materials including such combinations as
metal/plastic, metal/plastic/paper or plastic/plastic for the tear face are also
acceptable (Fond, col. 5, ll. 54-59). Fond discloses that marks for
weakening (i.e., score lines) are not precluded from use in a wall face (i.e.,
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tear face) of the cartridge (Fond, col. 3, ll. 1-6). Fond further discloses that
the pressure utilized with the cartridge is from above 1 to about 20 bar
(Fond, col. 4, ll. 15-17) and that the tear face should withstand a pressure
above 1 bar, particularly with the range of 2 to 15 bar (Fond, col. 5, ll. 38-
45). Fond discloses that the maximum pressure is not necessarily reached
during the opening of the cartridge and may be reached after opening during
extraction (Fond, col. 4, ll. 40-42).
Favre discloses using lines of weakness (e.g., score lines) to provide
preferential areas for breaking a membrane (i.e., tear face) in a cartridge
(Favre, col. 2, ll. 20-25).
Fond clearly discloses the structural features of the argued claim
feature. Specifically, Fond discloses that a plastic film may be used to form
the tear face and that lines of weakening (e.g., score lines) may be used in
the wall face (i.e., tear face). Appellants do not contest the “mesh” claim
feature with regard to Fond’s plastic film with weakened areas (e.g., score
lines).
Based upon Fond’s and Favre’s disclosures, combining Favre’s lines
of weakness (e.g., score lines) for breaking a membrane (i.e., tear face) in a
capsule for beverage preparation with Fond’s tear face in a cartridge for
beverage preparation is merely the predictable use of prior art elements (i.e.,
lines of weakening) according to their established function (i.e., weakening
the membrane so that the membrane breaks along the lines of weakening).
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct 1727, 1740 (2007).
Moreover, contrary to Appellants’ teaching away argument, we are in
agreement with the Examiner that Fond’s disclosure of a range of suitable
pressures (i.e., 2-15 bar) that overlaps Appellants’ claimed range of 0.1 to 3
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bar and teaching that the tear face withstands a pressure above 1 bar suggest
that the tear face may open due to overpressure at 2 bar, for example (Ans.
6-7). In other words, the Examiner provided factual findings from Fond’s
disclosure that support a determination that it was within the capabilities of
those of ordinary skill in the art to construct a cartridge capable of rupturing
at overpressures within the claimed range. Appellants have not rebutted
these findings.
Furthermore, since Fond discloses the claimed structural features, the
burden shifted to Appellants to demonstrate that Fond’s structure (i.e.,
plastic film with weakened areas (e.g., score lines)) is not capable of
performing the functions recited in the claim. In re Best, 562 F.2d 1252,
1254-55 (CCPA 1977).
Appellants have not proffered any evidence to establish that Fond’s
structure (i.e., the plastic film with weakened areas (e.g., score lines)) is not
capable of performing the claimed functions. Rather, Appellants only argue
that, unlike Appellants’ cartridge that ruptures under fluid pressure alone,
Fond’s cartridge requires high pressures and relief surface elements 13 to
rupture the tear face (Br. 14), without providing evidence that Fond’s plastic
film with weakened areas would not be capable of performing the claimed
functions.
Appellants argue that Fond’s disclosure to form a composite of paper
fibers and aluminum in the tear face indicates that Fond uses the paper fibers
for a different function than Appellants’ function (Br. 14). Appellants refer
to Fond’s disclosure that paper fibers form a network at the tears which is
favorable in keeping the face integrally intact (Br. 14) to support their
differing function argument. However, Appellants have not provided
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evidence that Fond’s composite tear face, which may include prescored
plastic film and paper fibers, would not be capable of performing the
claimed function (i.e., the retarded or delayed opening function indicated by
Appellants in their Brief (Br. 14)) as required. Best, 562 F.2d at 1254-55.
Moreover, Appellants differing function argument regarding Fond’s
use of paper fibers does not establish that Fond’s product having
substantially identical features as claimed would not be capable of
performing the claimed function of delayed opening. It is Appellants’
burden to provide evidence establishing the prior art structure is incapable of
performing the claimed functions. Id. Appellants have not carried their
burden. Id.
Regarding Appellants’ arguments directed at Favre’s disclosures, we
find that the claim features Appellants argue Favre does not disclose are
taught by Fond, the primary reference. Regarding Favre’s pressure
disclosure (i.e., “the pressure may be relatively high and may attain about 16
bar”), we do not find that such disclosure constitutes a teaching away.
Rather, in view of Fond’s overlapping pressure range and Favre’s disclosure
that the pressure “may be” relatively high, we understand Favre to indicate
that the pressure may also be low, such as disclosed by Fond (i.e., 1 bar to
20 bar) (Fond, col. 5, ll. 38-45). All of the disclosures in a reference must be
evaluated for what they fairly teach one of ordinary skill in the art. In re
Boe, 355 F.2d 961, 965 (CCPA 1966).
For the above reasons, we sustain the Examiner’s § 103 rejection of
claims 1, 2, 4, 5, 11, 12, 14, 16, 19, and 20 over Fond in view of Favre.

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35 U.S.C. § 103 REJECTION OVER FOND IN VIEW OF FAVRE AND
ILLY
Appellants do not separately argue the § 103 rejection of dependent
claims 10 and 15 over Fond in view of Favre and Illy. Rather, Appellants
contend that the rejection is improper for the reasons provided with respect
to independent claim 1, upon which claim 10 depends and claim 15
ultimately depends. However, we are unpersuaded by Appellants’
arguments regarding independent claim 1 for the reasons above.
Accordingly, we sustain the Examiner’s § 103 rejection of claims 10 and 15
over Fond in view of Favre and Illy.
DECISION
We sustain the Examiner’s § 112, second paragraph, rejection of
claims 1, 2, 4, 5, 11, 12, 14-16, 19, and 20 as failing to particularly point out
and distinctly claim the subject matter which applicant regards as the
invention.
We sustain the Examiner’s § 103(a) rejection of claims 1, 2, 4, 5, 11,
12, 14, 16, 19, and 20 over Fond in view of Favre.
We sustain the Examiner’s § 103(a) rejection of claims 10 and 15 over
Fond in view of Favre and Illy.
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. § 1.136(a)(1)(iv).

AFFIRMED

PL Initial
sld

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