Gerald Olean. Fountain et al.

Patent Trials and Appeals Board

Sep 17, 2019

13810617 - (D) (P.T.A.B. Sep. 17, 2019)

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.
13/810,617 04/29/2013 Gerald Olean Fountain 9610-100326-US 3582
109813 7590 09/17/2019
Fitch, Even, Tabin & Flannery, LLP
120 South LaSalle Street
Suite 2100
Chicago, IL 60603-3406
EXAMINER
SMITH, PRESTON
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
09/17/2019 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 GERALD OLEAN FOUNTAIN, PHILIP JAMES OXFORD, and
AMY LYNN PENNER
____________

Appeal 2019-001529
Application 13/810,617
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–10, 29, and 30. (Appeal Br. 1.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b).

1 This Decision includes citations to the following documents:
Specification filed January 16, 2013 (“Spec.”); Final Office Action mailed
March 20, 2018 (“Final Act.”); Appeal Brief filed August 21, 2018 (“Appeal
Br.”); Examiner’s Answer mailed October 16, 2018 (“Ans.”); and Reply
Brief filed November 26, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Intercontinental Great Brands, LLC. (Appeal Br. 3.)
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Application 13/810,617

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We AFFIRM-IN-PART, but denominate the rejection we affirm as
involving a New Ground of Rejection.
THE INVENTION
Appellant states the invention relates to methods and devices for
forming beverages or portions of beverages from powder and processes for
forming the powders. (Spec. ¶ 2.)
Claims 1 and 29 are representative and reproduced below from the
Claims Appendix to the Appeal Brief:
1. A method for forming a beverage for consumption by a
consumer from a co-milled powdered composition, the method
comprising:

co-milling together at least one powdered ingredient having
a difficult to disperse portion thereof with about 2 to about 90
percent of one or more dispersion facilitator components to
form a co-milled powdered composition with a particle size of
about 100 to about 150 microns; and

combining the co-milled powdered composition with the
particle size of about 100 to about 150 microns with a fluid to
produce the beverage for consumption by the consumer with
about 2 to about 16 percent solids from the co-milled powdered
composition dispersed in the beverage for consumption by the
consumer.

29. A method of preparing a co-milled powdered
composition capable of preparing a beverage for consumption
by a consumer, the method comprising:

introducing at least one powdered ingredient having a
difficult to disperse portion and about 2 to about 90 percent of
one or more dispersion facilitator components to a milling
apparatus,

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co-milling, in a sustained operation and at the same time, the
at least one powdered ingredient and the one or more dispersion
facilitator components to form the co-milled powdered
composition with a particle size of about 100 to about 150
microns and being effective to produce the beverage for
consumption by the consumer when the co-milled powdered
composition with the particle size of about 100 to about 150
microns is contacted with water, the beverage for consumption
by the consumer having about 2 to about 16 percent solids from
the co-milled powdered composition dispersed therein.

(Appeal Br. (Claims Appendix) 23, 25.)
Claim 30 is also independent and recites a similar method to claim 1
where a co-milled powdered composition with the particle size of about 100
to about 150 microns is mixed with a fluid to produce a food product. (Id. at
25.)

REJECTIONS
1. The Examiner rejected claims 1–9, 29,3 and 30 under pre-AIA
35 U.S.C. § 103(a) as obvious over Einstman et al. (US 3,706,572,
issued December 19, 1972 (hereinafter “Einstman”)), Richmond (US
3,227,558, issued January 4. 1966), and Atkinson et al. (US 6,207,203
B1, issued March 27, 2001 (hereinafter “Atkinson”)).

3 As Appellant points out, the Final Office Action does not include claim 29
in the rejection. (Appeal Br. 10, FN1; Final Act. 2–3.) Nevertheless,
Appellant states that due to the similarity between claims 1 and 29,
Appellant understands the rejection to also apply to claim 29. (Id.) Thus,
we treat claim 29 as being subject to the rejection, as claim 29 is indicated as
rejected in the Final Office Action. (See Final Act. Office Action Summary,
box 7.)
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2. The Examiner rejected claim 10 under pre-AIA 35 U.S.C. § 103(a) as
obvious over Einstman, Richmond, Atkinson, and Halliday et al. (US
2004/0182250 A1, published September 23, 2004) (hereinafter
“Halliday”)).
(Final Act. 2–4.)
We select independent claims 1 and 29 for disposition of this appeal,
which are representative of the subject matter claimed, and decide the appeal
as to all grounds of rejection on the basis of the arguments presented for
these claims (see Appeal Br. 17). 37 C.F.R. § 41.37(c)(1)(iv).
Rejection 1
ISSUE
The Examiner found, inter alia, Einstman discloses milling spray
dried coffee (powder) with solids (corn syrup, oil) to produce a powder
having an average particle size of 120 microns with substantially all particles
between 90–150 microns. (Final Act. 2.) The Examiner found Einstman
discloses feeding powder into an agglomerator, forming an agglomerate that
would be a portion of a beverage, and that in view of Einstman’s disclosure
of mixing powders to form beverages, it would have been obvious to mix the
powder with a liquid to form a beverage. (Id. at 2–3.) The Examiner found
Einstman does not disclose the amount to produce the beverage portion with
about 2–16% solids and 2–90% of the dispersion facilitator being with the
particle size, but determined that in view of the solid content for beverages
disclosed in Richmond and Atkinson, it would have been obvious to have
adjusted the liquid content and solids content of Einstman depending on the
desired taste of the beverage. (Id. at 3.)
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Appellant argues, inter alia, Einstman discloses the powder produced
and sized to 100–150 microns is not the powdered product that is mixed with
water to form the final drinkable beverage, but rather Einstman discloses the
powdered product is fed further into an agglomerator to produce an
agglomerated product having an average particle size of about 1400 microns,
which is then combined with hot water to form a beverage. (Appeal Br. 16–
17.)
Accordingly, the dispositive issues with respect to this rejection are:
Has Appellant identified a reversible error in the Examiner’s position
that Einstman discloses “combining the co-milled powdered composition
with the particle size of about 100 to about 150 microns with a fluid to
produce the beverage for consumption by the consumer” as recited in claim
1?
Has Appellant identified a reversible error in the Examiner’s position
that Einstman discloses a co-milled powdered composition “with a particle
size of about 100 to about 150 microns,” which is “capable of preparing a
beverage for consumption by a consumer” as recited in claim 29?

DISCUSSION
Claim 1
We agree with Appellant that Einstman fails to disclose combining the
co-milled powdered composition with the particle size of about 100 to about
150 microns with a fluid to produce the beverage for consumption by the
consumer. Einstman discloses blending l55 lbs. of spray-dried lightener
solids with 45 lbs. spray dried soluble coffee, which is milled to form a
powder with substantially all particles between about 90 microns and 150
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microns. (Einstman, col. 4, l. 63 – col. 5, l. 7.) However, Einstman
discloses the “co-ground mixture is then fed to an agglomerator at 400
lbs./hr.” (Einstman, col. 5, ll. 7–8.) Einstman discloses the agglomerator
operates with a steam nozzle pressure of 24 p.s.i., an air rate of 2300 cu.
ft./min., an air inlet temperature of 420° F and an air outlet temperature of
245° F.” (Id. at col. 5, ll. 8–12.) Einstman discloses the “resulting product”
has a bulk density of about 0.210 g/cc and an average particle size of about
1400 microns, where two teaspoons of the “resulting product” are mixed
with hot water to form a cup of coffee beverage. (Id. at col. 5, ll. 12–18.)
Thus, we agree with Appellant that Einstman does not disclose mixing of the
powder with substantially all particles between about 90 microns and 150
microns with water, as would be required to meet the method of claim 1, but
rather discloses mixing an agglomerated particle with much larger particle
size, 1400 microns, for example, with water to form a beverage. In this
regard, we agree also with Appellant that the Examiner’s position that
Einstman’s agglomerate “is still made up of a collection of particles having a
size of 90-150 microns” (Ans. 3) is unsupported, particularly in view of
Einstman’s disclosure discussed above of the pressure and temperature
conditions in the agglomerator used to produce particles that average 1400
microns in size. (Reply Br. 2–5.)
Accordingly, we reverse the Examiner’s rejection of claim 1, and
claims 2–9 dependent therefrom. In addition, because independent claim 30
similarly recites mixing a co-milled powdered composition with a particle
size of about 100 to about 150 microns with water, we reverse the
Examiner’s rejection of claim 30 as well.

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Claim 29
Claim 29 stands on different footing than claim 1. Specifically, claim
29 recites a “method of preparing a co-milled powdered composition,” as
opposed to a “method for forming a beverage” recited in claim 1. Claim 29
does not recite the co-milled powdered composition is mixed with water, but
recites only that the composition is “capable of preparing beverage” and is
“effective to produce the beverage for consumption.” As discussed above,
Einstman discloses producing a powdered composition of combined coffee
solids and lightener solids co-milled to produce a powdered composition
having a particle size of about 90 microns to about 150 microns, a
substantially identical process and composition as formed by Appellant’s
method. Thus, the powdered composition produced in Einstman would have
been expected to be “capable of preparing a beverage” and “effective to
produce the beverage for consumption” as recited in claim 29. In re Best,
562 F.2d 1252, 1255 (CCPA 1977) (“[w]here, as here, the claimed and prior
art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.”).
Accordingly, we affirm the Examiner’s rejection of claim 29.
However, because the Examiner did not address claim 29 specifically in the
rejection, and because our rationale differs from the Examiner’s rationale,
we designate our affirmance as a new ground of rejection.

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Rejection 2
Regarding claim 10, which depends from claim 1, the addition of
Halliday relied upon for the teaching of cartridges for use with a beverage
brewing machines (Final Act. 4), fails to remedy the deficiencies of
Einstman as discussed above. Accordingly, we reverse Rejection 2 as well.

DECISION
Claims
Rejected
Basis Affirmed Reversed
1–9, 29, and
30
§ 103(a)
Einstman,
Richmond, and
Atkinson
29 1–9 and 30
10 § 103(a)
Einstman,
Richmond,
Halliday, and
Atkinson
10
Overall
Outcome
29 1–10 and
30

FINALITY AND RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

AFFIRMED-IN-PART; 37 C.F.R. 41.50(b)