Jay Otto et al.Download PDFPatent Trials and Appeals BoardMay 26, 20212020003806 (P.T.A.B. May. 26, 2021) Copy Citation 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. 13/480,788 05/25/2012 Jay D. Otto J-00014-002 4905 25179 7590 05/26/2021 A PATENT LAWYER, LLC R WILLIAM GRAHAM 8586 Eagle Ridge Springboro, OH 45066 EXAMINER MCCLAIN-COLEMAN, TYNESHA L. ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 05/26/2021 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): billg@apat1.com info@apat1.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAY D. OTTO and R. WILLIAM GRAHAM ____________ Appeal 2020-003806 Application 13/480,788 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and SHELDON M. McGEE, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) the final rejection of claims 25–28. We have jurisdiction over the appeal. 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Appellant’s invention is directed to filter cups adapted for use in single cup coffee makers (Spec. 1). The Specification describes that a typical single cup coffee maker brews ground coffee in a sealed plastic pod 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Javajig, LLC as the real party in interest (Appeal Br. 1). Appeal 2020-003806 Application 13/480,788 2 with high pressure and heat from an intense water pressure stream (id. at 1, 2). The Specification describes that the conventional sealed plastic pod contains a polymer filter adhered to the pod’s plastic wall (id. at 2). Because the plastic pod can only be used once, the pods are said to pose significant environmental issues and added costs (id.). According to the Specification, the described single-use paper filter cup and reusable brew basket overcomes the issues and expenses associated with brewing single cup coffee (id. at 3). Figure 10 of the Specification, as reproduced below, illustrates a cross section of a reusable brew basket, including a filter disposed in press-fit relation within the insert and retainer: The Specification’s Figure 10 illustrates a reusable brew basket including, inter alia, generally cup-shaped filter 30 disposed in press-fit relation between retainer 12 and insert 20 (id. at 9). Filter 30 includes inside surface 33, which receives a beverage forming ingredient such as coffee grounds (id.). Retainer 12 includes: (i) an upper end having an open top, Appeal 2020-003806 Application 13/480,788 3 which receives a removable top and (ii) a bottom end, which includes a centrally located opening large enough to permit insertion of a finger to discard filter 30 (id. at 8). Claim 25 is representative of the subject matter on appeal (emphasis and pagination added): 25. A method of brewing a single cup of coffee comprises the steps of: providing an electric coffee brewing machine; providing a reusable brew basket having a filter retainer having an upper end having an opening therein and a bottom including an opening therein to receive one’s finger therethrough, an insert having an upper collar of a diameter less than the diameter than of the upper end of said filter retainer to fit therein and defining an open area between the upper collar to receive a beverage forming ingredient therethrough, said insert having a peripheral lip of a diameter greater than said diameter of the upper end of the filter retainer and said insert further having a lower extension which when a filter is disposed within said filter retainer and said insert is disposed within said filter, wherein said retainer and said insert upper collar and lower extension are tapered in a complementary manner, said insert press-fits the filter within said filter retainer to retain said filter adjacent said filter retainer, and a removable top having an outer perimeter lip portion with a diameter of at least that of said diameter of said upper end of said filter retainer and a lower collar portion of a diameter less than said diameter of the upper collar and configured to secure to the insert, wherein said top has an opening therethrough to receive a water outlet from the beverage brewing machine; disposing a single-use coffee filter between said filter retainer and said insert in a manner to cause said filter to be press-fit therebetween; putting coffee into the filter prior to securing said removable top to said insert; connecting said top to said insert Appeal 2020-003806 Application 13/480,788 4 and secures to said upper collar of said insert; inserting said reusable brew basket into said electric coffee brewing machine[;] and brewing a single cup of coffee with said electric coffee brewing machine; and disassembling said reusable brew basket by removing said top and said insert from said filter retainer by using at least part of said peripheral lip, and subsequently removing said filter with coffee therein by inserting one’s finger through said bottom opening and discarding said filter while retaining said reusable brew basket for reuse. Appeal Br. 19–20 (Claims App.). Appellant appeals the following rejections: 1. Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as unpatentable over MacMahon et al. (WO 2006/043106 A2, published Apr. 27, 2006) (“MacMahon”), in view of Fu et al. (US 2011/0073607 A1, published Mar. 31, 2011) (“Fu”), and further in view of Zaruba et al. (US 4,595,099, issued June 17, 1986) (“Zaruba”) (Final Act. 3–6). 2. Claims 27 and 28 are rejected under 35 U.S.C. § 103(a) as unpatentable over MacMahon, in view of Fu, Zaruba, and further in view of Toms (US 3,121,636, issued Feb. 18, 1964) (Final Act. 6–8). Appeal 2020-003806 Application 13/480,788 5 FINDINGS OF FACT & ANALYSIS After review of the respective positions provided by Appellant and the Examiner, we AFFIRM the Examiner’s prior art rejections under 35 U.S.C. § 103(a). We add the following for emphasis. I. Obviousness rejection of claims 25 and 26 over MacMahon, in view of Fu, and further in view of Zaruba Appellant argues independent claims 25 and 26 as a group (see generally Appeal Br. 6–15; Reply Br. 1–10). We select claim 25 as representative of this group. 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, claim 26 will stand or fall with our analysis of claim 25. With respect to claim 25, the Examiner’s findings and conclusions regarding MacMahon, Fu, and Zaruba are located on pages 3 through 6 of the Final Office Action. The Examiner finds that MacMahon discloses certain limitations of the claimed reusable brew basket subject matter. Figure 5 of MacMahon, as reproduced below, illustrates an exploded perspective view of a pod for preparing a coffee beverage: Appeal 2020-003806 Application 13/480,788 6 MacMahon’s Figure 5 illustrates a pod for preparing a coffee beverage including, inter alia, sealing ring 23, which frictionally engages with skirt 26 of upper element 20 “to sandwich the layer of filtering material 22 between the sealing ring 23 and an outer surface of” skirt 26 (MacMahon 20:4–5). The Examiner finds that MacMahon’s method of brewing a single cup of coffee teaches each step and limitation of the method recited in independent claim 25, except that MacMahon does not disclose, inter alia, providing a reusable brew basket with an insert having a lower extension which when a filter is disposed within the filter retainer and the insert is disposed within the filter retainer, the insert press-fits the filter within the filter retainer to retain the filter adjacent the filter retainer, the filter retainer and insert are tapered in a complementary manner, the lower collar portion of the top has a diameter less than the diameter of the upper collar of the insert, and the insert has a peripheral lip of a diameter greater than the diameter of the upper end of the filter retainer. (Final Act. 4). The Examiner, however, relies upon Fu’s reusable brew basket comprising a filter retainer and an insert, each “tapered in a complementary manner,” and a removable top (id.). The Examiner finds Fu teaches that “the insert (frame) may provide structure, stability, and integrity to the filter” (id. at 5 (citing Fu ¶ 24)). The Examiner also finds that MacMahon’s “insert acts as a support for the filtering material . . . and sandwich[es] the filtering material adjacent to the filter retainer (sidewall) without adhesive or other bonding techniques” (Final Act. 5; see MacMahon 9:2–21). Based on these teachings, the Examiner determines that it would have been obvious to one Appeal 2020-003806 Application 13/480,788 7 of ordinary skill in the art at the time of the invention to press-fit the filter between a filter retainer and an insert (Final Act. 5). The Examiner finds that MacMahon does not teach disassembling the reusable brew basket by inserting one’s finger through the bottom opening and pushing out the filter containing spent coffee grounds (id.). The Examiner, however, finds Zaruba teaches a foodstuff storage container “having an open top and . . . [a] partial bottom wall forming [a] generally centrally disposed aperture” (Final Act. 6 (citing Zaruba 1:36–41; Figs. 1–3)). The Examiner finds Zaruba teaches that the foodstuff may be pushed out of the container by inserting the user’s finger through the bottom aperture (Final Act. 6 (citing Zaruba 1:41–46; 3:27–30; Fig. 4)). The Examiner determines that it would have been obvious to one of ordinary skill in the art at the time of the invention to vary the opening’s size in the bottom of MacMahon’s filter retainer so that the filter may be removed by inserting one’s finger through the opening (Final Act. 6 (citing MacMahon 5:12–31; 9:26–10:6; 15:20–29; 26:11–24; 27:1–19)). Appellant argues that MacMahon “appears defective and lacking an adequately sufficient description and/or drawings to render a suitable teaching” of the claimed coffee brewing method (Appeal Br. 9). According to Appellant, “[i]t is simply unclear what exactly Macmahon teaches” (id. at 10). We are unpersuaded by Appellant’s argument. In our view, MacMahon contains an operable and enabled disclosure. Appellant has not shown that undue experimentation would have been required to combine MacMahon’s pod for brewing single cup coffee with features from Fu’s reusable brew basket and Zaruba’s bottom aperture. See Okajima v. Appeal 2020-003806 Application 13/480,788 8 Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art evinces the level of skill in the art). Accordingly, there is a reasonable expectation that one of ordinary skill in the art would have been enabled to modify MacMahon’s pod with the known features of: (i) Fu’s removable top and complementary-tapered cartridge and insert and (ii) Zaruba’s bottom aperture. Appellant argues that claim 25’s recitation of the term “reusable” connotes structure (Reply Br. 2). According to Appellant, MacMahon fails to disclose a reusable brew basket retainer and insert having the requisite tapered feature, which allows each to press-fit a filter (Appeal Br. 9–11; Reply Br. 2–4). Appellant contends that MacMahon also fails to disclose an insert having a peripheral lip with a diameter greater than a diameter of a filter retainer’s upper end, wherein a part of the peripheral lip can be used to facilitate separation of the insert and top from the filter (Appeal Br. 11 (citing MacMahon 20:1–6 (describing Fig. 4)); see also Reply Br. 5). Contrary to Appellant’s arguments, the claim term “reusable” does not connote structure. Even assuming the disputed claim term encompasses structural limitations, MacMahon explicitly discloses that the pod may be reusable and provided with a removable lid in the upper surface (see Ans. 13 (citing MacMahon 28:13–16)). Furthermore, Appellant’s arguments are directed to attacking the individual secondary references rather than the combined teaching of the references (see, e.g., Reply Br. 4–5). Appellant’s criticisms of MacMahon individually do not establish nonobviousness. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“[T]he test for combining references is not what the individual Appeal 2020-003806 Application 13/480,788 9 references themselves suggest but rather what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art.”). We discern no reversible error in the Examiner’s findings that MacMahon, in combination with Fu, reasonably disclose and render obvious the limitations regarding: (i) a complementary-tapered cartridge and insert and (ii) an insert having a peripheral lip with a diameter greater than a diameter of a filter retainer’s upper end (Final Act. 4–5). Appellant argues that Fu’s plastic or metal filter, which is bonded to a tapered basket, is not combinable with MacMahon’s pod (Appeal Br. 12). Appellant contends that Fu’s single use disposable basket including a bonded filter is not reusable (id.; see also Reply Br. 5–7). We are not persuaded by these arguments for the reasons stated in the Examiner’s Answer (Ans. 14–15). We note that Fu explicitly discloses that “filter medium 130 may be secured for example, by thermal bonding of the plastic used for the frame 128, or with an adhesive, by crimping, by heat sealing, or any other way” (Fu ¶ 25) (emphasis added). In other words, Fu does not exclude MacMahon’s method of sandwiching a layer of filtering material between an insert and a filter retaining sidewall without “adhesive or other bonding techniques” (MacMahon 9:20–21). See In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (explaining that “[i]t is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art”). Appeal 2020-003806 Application 13/480,788 10 Contrary to Appellant’s arguments, we find that the Examiner provides a reasonable basis for the findings and conclusions regarding the combined teachings of MacMahon, Fu, and Zaruba. Appellant also argues that Zaruba’s sandwich preparation and storage containers are not in the same field of endeavor as the claimed coffee brewing method (Appeal Br. 14; Reply Br. 7–10). With respect to whether Zaruba is reasonably pertinent, Appellant argues that one of ordinary skill in the art would not look to Zaruba to solve problems related to waste reduction in making single cup coffee (Appeal Br. 15 (citing Spec. ¶¶ 5–11)). In response, the Examiner finds that Zaruba is analogous art because the disclosure relates to a storage container for a foodstuff (Ans. 18 (citing Zaruba Abstract)). The Examiner finds that Zaruba’s container having an opening at the bottom for pushing food with one’s finger up and out of the container is similar to the claimed use of an opening at the filter retainer’s bottom (Ans. 19). Appellant contends that the relied-upon reference is not in the same field of endeavor because Zaruba’s “structure is so dissimilar and could in no way function as the instant invention” (Reply Br. 8). Appellant asserts that the Examiner has failed to provide or explain the required correlation between the problems Zaruba set out to solve and those addressed by Appellant (id. at 9–10). The scope of analogous art is to be construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), directs us to construe the scope of analogous art broadly, stating that ‘familiar items may have obvious uses beyond their primary purposes, and a Appeal 2020-003806 Application 13/480,788 11 person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.’ Id. at 402 (emphasis added).”). A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)); see also In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (same standard). In this instance, Appellant’s analysis does not explain why Zaruba’s reusable container for preparing and storing a foodstuff is not within the same field of endeavor as the claimed method comprising the step of providing a reusable basket for brewing coffee. We note that Zaruba is reasonably pertinent to the problem faced by Appellant, namely, “to improve the efficiency of” preparing a foodstuff (Spec. 3). In our view, Zaruba would have logically commended itself to a person of ordinary skill in the art when considering how best to efficiently remove a foodstuff from a container prior to reusing that container to prepare more foodstuff (id.). Accordingly, we find that Zaruba is within Appellant’s field of endeavor and is reasonably pertinent to Appellant’s problem, and thus is analogous art. Therefore, Appellant’s arguments are insufficient to convince us of reversible error in the Examiner’s rejection of claim 25. On this record, we sustain the Examiner’s § 103(a) rejection as to claims 25 and 26. Appeal 2020-003806 Application 13/480,788 12 II. Obviousness rejection of claims 27 and 28 over MacMahon, in view of Fu, Zaruba, and further in view of Toms Appellant argues dependent claims 27 and 28 as a group (see generally Appeal Br. 15–16; Reply Br. 10–11). We select claim 27 as representative of this group. 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, claim 28 will stand or fall with our analysis of claim 27. With respect to claim 27, the Examiner’s findings and conclusions regarding MacMahon, Fu, Zaruba, and Toms are located on pages 6 through 8 of the Final Office Action. Claim 27 is illustrative: 27. The method of claim 25, wherein said peripheral lip includes one of a tab and a cut-off edge to aid in separation from said lip portion of said removable top. Appeal Br. 21 (Claims App.). The Examiner finds that the peripheral lip of MacMahon’s modified insert is not disclosed as having a tab and a cut-off edge (Final Act. 7). Because Toms teaches that “the tab on the insert is used to remove the insert from the container,” the Examiner determines that it would have been obvious to one of ordinary skill in the art at the time of the invention to use a tab or cut-off edge on the peripheral lip of MacMahon’s modified insert (id.). According to the Examiner, using a tab or cut-off edge on the peripheral lip would have provided aid in disassembling the reusable brew basket (id.). Appellant argues that the rejection of claim 27 is based on impermissible hindsight (Appeal Br. 16). Appellant argues that one of ordinary skill in the art would not have been motivated to incorporate Toms’ Appeal 2020-003806 Application 13/480,788 13 insert, top, or tab with the Examiner’s relied-upon references regarding pods, which are not intended for reuse (id.; Reply Br. 11). Appellant’s arguments are unpersuasive. As the Examiner finds, MacMahon teaches a reusable pod and Fu discloses a reusable permeable basket (Ans. 13 (citing MacMahon 28:13– 16); Ans. 15 (citing Fu ¶ 32)). The Examiner finds that Toms and Fu both teach the use of tabs and cut-off edges in the food container art (Final Act. 7 (citing Toms 2:17–20; Fu ¶ 20)). In view of these teachings, one of ordinary skill in the art would have been motivated to incorporate Toms’ tab into MacMahon’s modified reusable pod. We discern no reversible error in the Examiner’s findings that MacMahon, in combination with Fu, Zaruba, and Toms, reasonably disclose and render obvious the limitations regarding an insert’s peripheral lip having a tab and a cut-off edge to aid in separation from a removable top’s lip portion (Final Act. 6–8). Appellant argues that Toms’ insert is merely a cover for a water soluble ingredient and the tab fails to extend past the retaining cup (Appeal Br. 16; Reply Br. 11 (citing Toms Figs. 3, 4)). Appellant’s unpersuasive arguments are directed to attacking Toms individually rather than the combined teaching of the references. Keller, 642 F.2d at 426. Furthermore, the Examiner finds that Fu, not Toms, teaches an insert having a peripheral lip, which extends past the retaining cup (Final Act. 4 (citing Fu ¶¶ 23, 25, 30–33)). Contrary to Appellant’s arguments, we find that the Examiner provides a reasonable basis for the findings and conclusions regarding the combined teachings of MacMahon, Fu, Zaruba, and Toms. Appeal 2020-003806 Application 13/480,788 14 Therefore, Appellant’s arguments are insufficient to convince us of reversible error in the Examiner’s rejection of claim 27. On this record, we sustain the Examiner’s § 103(a) rejection as to claims 27 and 28. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 25, 26 103(a) MacMahon, Fu, Zaruba 25, 26 27, 28 103(a) MacMahon, Fu, Zaruba, Toms 27, 28 Overall Outcome 25, 26, 27, 28 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 Copy with citationCopy as parenthetical citation