Jos Van der Veen et al.

Patent Trials and Appeals Board

Mar 31, 2022

2021001226 (P.T.A.B. Mar. 31, 2022)

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. 13/281,121 10/25/2011 Jos Christiaan Van der Veen 097298-0170 4460 26371 7590 03/31/2022 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER THAKUR, VIREN A ART UNIT PAPER NUMBER 1792 NOTIFICATION DATE DELIVERY MODE 03/31/2022 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): ipdocketing@foley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOS CHRISTIAAN VAN DER VEEN, THOMAS HOEKSTRA, and AREND CORNELIS JACOBUS BIESHEUVEL __________ Appeal 2021-001226 Application 13/281,121 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 the final rejection of claims 1-3, 6, 9-16, 19-21, 25, 27, 30, and 31. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellant’s invention is directed to a beverage pad for preparing a beverage from an extractable product; a method of preparing a beverage; and 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2022). Appellant identifies the real party in interest as Koninklijke Douwe Egberts B.V. (Appeal Br. 2). Appeal 2021-001226 Application 13/281,121 2 a method of manufacturing a pad comprising an extractable product for preparing a beverage (Spec. ¶¶ 2, 4, 5; Claims 1, 25, 27). Claim 1 is illustrative (emphasis added): 1. A beverage pad for preparing a beverage from an extractable product, comprising: a first covering, a second covering attached to the first covering, an inner chamber formed between the first covering and the second covering for accommodating the product, wherein the pad is configured to be received in a receptacle of an apparatus arranged for preparing the beverage for intercepting a flow of pressurized fluid having supra-atmospheric pressure of between 1 and 2 bars, wherein the first covering conducts the fluid into the inner chamber for interacting with the product for preparing the beverage and the second covering conducts the beverage away from the inner chamber, wherein the product is an extractable product, said first covering consisting of a single layer of a partially transparent material for enabling visual inspection of the extractable product; wherein transparency of the first covering is at least 10% higher than transparency of the second covering; wherein the first covering and the second covering are biodegradable; wherein the first covering and the second covering are at least partially manufactured from a renewable source; and wherein a thickness of the second covering is larger than the thickness of the first covering; wherein the partially transparent material of the first and second covering is a fiber-based or continuous filament based non-woven material comprising two-component fibers, and where the second covering comprises substantially the same material as the first covering. Appeal 2021-001226 Application 13/281,121 3 Appellant appeals the following rejections: 1. Claims 3 and 16 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. 2. Claims 20, 21, and 31 are rejected under 35 U.S.C. § 112, fourth paragraph, as containing subject matter that fails to further limit the claim from which it depends. 3. Claims 1-3, 14-16, 20, 25, 27, and 30 are rejected under 35 U.S.C. § 103(a) as unpatentable over Boyd et al. (US 2002/0048621 A1, published Apr. 25, 2002, “Boyd”) in view of Blanc (US 2008/0081089 A1, published Apr. 3, 2008), Anspach et al. (WO 02/48443 A1, published June 20, 2002, “Anspach”), Warner et al. (US 2008/0095959 A1, published Apr. 24, 2008, “Warner”), Ferri et al. (US 2005/0126941 A1, published June 16, 2005, “Ferri”), Van Belleghem (US 2008/0250935 A1, published Oct. 16, 2008), Yates (US 2,255,957, issued Sept. 16, 1941), MacMahon et al. (WO 2007/125337 A1, published Nov. 8, 2007, “MacMahon”), and further in view of Gruenbacher (US 5,298,267, issued Mar. 29, 1994) and Lazaris et al. (US 2004/0045443 A1, published Mar. 11, 2004, “Lazaris”), as evidenced by Yoakim et al. (US 2004/0115310 A1, published June 17, 2004, “Yoakim”), Konstanze Bachmann (The Treatment of Transparent Papers: a Review, 2 The Book and Paper Group, 1-11 (1983), and Patrick R. Gruber, 11 Commodity Polymers from Renewable Resources: Polylactic Acid, National Research Council (US) Chemical Sciences Roundtable, Carbon Management: Appeal 2021-001226 Application 13/281,121 4 Implications for R&D in the Chemical Sciences and Technology: A Workshop Report to the Chemical Sciences Roundtable, Washington (DC): National Academies Press (US) (2001), available at https://www.ncbi.nlm.nih.gov/books/NBK44131/). 4. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, and Lazaris, as evidenced by Yoakim, Bachmann, and Gruber, and further in view of Tsuji et al. (US 5,496,573, issued Mar. 5, 1996, “Tsuji”). 5. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, and Lazaris, as evidenced by Yoakim, Bachmann, and Gruber, and further in view of Whittaker et al. (US 2003/0175456 A1, published Sept. 18, 2003, “Whittaker”). 6. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, and Lazaris, as evidenced by Yoakim, Bachmann, and Gruber, and further in view of Denise Marie Anton (If You Care 100% Unbleached Coffee Filters, published Jan. 30, 2009, accessed June 5, 2012, available at http://web.archive.org/web/20090130115519/http://www.reviewstrea m.com/reviews/?p=49798). 7. Claims 10, 12, and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable over Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, and Lazaris, as Appeal 2021-001226 Application 13/281,121 5 evidenced by Yoakim, Bachmann, and Gruber, and further in view of Robertson (US 5,906,845, issued May 25, 1999). 8. Claims 10-13 are rejected under 35 U.S.C. § 103(a) as unpatentable over Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, and Lazaris, as evidenced by Yoakim, Bachmann, Gruber, and Catani et al. (US 2007/0266862 A1, published Nov. 22, 2007, “Catani”), and further in view of Pergola et al. (US 5,518,743, issued May 21, 1996, “Pergola”). 9. Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, and Lazaris, as evidenced by Yoakim, Bachmann, and Gruber, and further in view of Cai (US 2004/0005384 A1, published Jan. 8, 2004). 10. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, and Lazaris, as evidenced by Yoakim, Bachmann, and Gruber, and further in view of Chemsystems (PERP Program - “GREEN” POLYETHYLENE, published Feb. 14, 2009, accessed June 5, 2012, available at http://web.archive.org/web/20090214151519/http://chemsystems.com /about/cs/news/items/PERP%200607S11_Green%20PE.cfm) and Iwasaki et al. (US 2005/0255768 A1, published Nov. 17, 2005, “Iwasaki”). 11. Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable over Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, Appeal 2021-001226 Application 13/281,121 6 MacMahon, Gruenbacher, and Lazaris, as evidenced by Yoakim, Bachmann, and Gruber, and further in view of Brouwer et al. (WO 2008/018793 A2, published Feb. 14, 2008, “Brouwer”), MacMahon et al. (US 2009/0004335 A1, published Jan. 1, 2009, “MacMahon ’335”), Zeller et al. (WO 2006/043098 A1, published Apr. 27, 2006, “Zeller”), and Prudden (US 2,115,122, issued Apr. 26, 1938). 12. Claim 31 is rejected under 35 U.S.C. § 103(a) as unpatentable over Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, and Lazaris, as evidenced by Yoakim, Bachmann, and Gruber, and further in view of Levy (US 3,989,279, issued Nov. 2, 1976) or Lehrer (US 5,567,461, issued Oct. 22, 1996). 13. Claim 31 is rejected under 35 U.S.C. § 103(a) as unpatentable over Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, and Lazaris, as evidenced by Yoakim, Bachmann, and Gruber, and further in view of Brouwer. Appellant does not request review of the grounds of rejections under § 112, second and fourth paragraphs, set forth in the Final Action dated Aug. 6, 2019 and presents no argument with regard to these rejections (Appeal Br. 7-15). Accordingly, we summarily affirm the rejections for indefiniteness (rejection (1)) and for failing to further limit the claim from which it depends (rejection (2)). We recognize that “[i]f no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious-the claim becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Similarly, In re Steele counsels that a prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art Appeal 2021-001226 Application 13/281,121 7 would have to make speculative assumptions concerning the meaning of claim language. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). However, this is not a case where it is impossible to determine whether at least some scenarios fall within the scope of the claims. The present situation is, instead, one in which only the boundary of the sought claim protection is not reasonably clear. Accordingly, we address below the obviousness rejections with respect to claims 3 and 16 in the interest of compact prosecution. FINDINGS OF FACT & ANALYSIS We review the appealed rejections for reversible error based on the arguments and evidence presented by Appellant. 37 C.F.R. § 41.37(c)(1)(iv) (2022); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”). Rejections (3) to (13): under § 103(a) over Boyd, in view of Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, and further in view of Gruenbacher and Lazaris, as evidenced by Yoakim, Bachmann, and Gruber Appellant argues the subject matter of claims 1, 25, and 27 only (Appeal Br. 10-15; Reply Br. 2-6). We select claim 1 as representative of the group. 37 C.F.R. § 41.37(c)(1)(iv) (2019). All claims subject to Rejection (3) stand or fall with claim 1. We have also considered Appellant’s arguments to claim 1 to the extent applicable to the separate Rejections (4) to (13) of claims 3, 6, 9-14, 19, 21, and 31. Appeal 2021-001226 Application 13/281,121 8 The Examiner’s findings and conclusions regarding Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, and Lazaris, as evidenced by Yoakim, Bachmann, and Gruber, are located on pages 5 to 15 of the Final Action. Appellant contends that the infusion techniques of Anspach, Warner, Van Belleghem, Yates, and Gruenbacher, which place conventional beverage brewing packages into water at atmospheric pressure, teach away from subjecting such packages to a pressurized fluid (Appeal Br. 12). Appellant argues that applying a flow of pressurized fluid having supra- atmospheric pressure of between 1 and 2 bars, as claimed, to conventional beverage brewing packages “would be undesirable as not enabling proper infusion” (Appeal Br. 12). We are unpersuaded by these arguments. Appellant’s position is supported only by mere attorney argument that Anspach’s “material may not withstand the use of such pressurized fluid” (Appeal Br. 12) (emphasis added). There is no evidence proffered that modifying Boyd’s coffee brewing packet with Anspach’s partially transparent fiber-based non-woven material comprising two-component fibers, as claimed, would not have been reasonably expected to work (compare Anspach 3:16-20; 5:13-35 with Spec. ¶ 23). Arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602 (CCPA 1965). Furthermore, the remaining references are not relied upon for teaching traditional infusion techniques. The Examiner relies on Warner, Van Belleghem, and Yates for teaching that it was known to provide transparency to porous beverage filter pads, and Gruenbacher for disclosing that it was conventional to provide a Appeal 2021-001226 Application 13/281,121 9 larger thickness for the second or lower covering to control coffee flow rate (Final Act. 10; Ans. 4-5). Appellant argues in the Reply Brief that the Examiner’s combination is flawed because Lazaris teaches away from using packages in pressurized environments when the packages are originally intended for beverage preparation at atmospheric pressure (Reply Br. 3). Appellant argues Lazaris teaches that such packages “are not suitable for pressurized environments” (Reply Br. 3). These arguments are presented for the first time in the Reply Brief, which is improper. 37 C.F.R. § 41.41(b)(2) (2022). In any event, Appellant’s untimely arguments are not persuasive because Lazaris’ criticism is directed to traditional infusion packages described in two references that the Examiner has not relied upon (Lazaris ¶¶ 4, 5). Appellant argues that one of ordinary skill in the art would not have been motivated to modify Boyd’s packet with the increased bottom filter thickness of Gruenbacher’s drip filter pack because Gruenbacher’s pack is used in a non-pressurized environment (Appeal Br. 13). Appellant contrasts the claimed beverage pad with Gruenbacher’s drip filter pack by asserting they are “very different and distinct products, and are suitable for use with very different machines and subject to very different circumstances and requirements” (Appeal Br. 13). Even assuming arguendo Gruenbacher is distinguished from claim 1 as the unsupported argument of counsel alleges, this argument ignores Lazaris’ teachings that beverage pads meeting the disputed thickness limitation have been used in a pressurized environment (Ans. 6). Specifically, Lazaris discloses increasing the thickness of the exit filter in a package, which is subjected to the “flow of heated liquid under pressure” Appeal 2021-001226 Application 13/281,121 10 (Lazaris Abstract; see also id. ¶¶ 9, 17). Moreover, Yoakim evinces the use of a second sheet with reduced permeability, which only “allow[s] water to pass through it only when a pressure of between 0.1 and 3 bar is reached” (Yoakim ¶ 17). We are thus unpersuaded by Appellant’s arguments. Appellant contends that Ferri is non-analogous art because it is in a separate field of endeavor from Appellant and is not reasonably pertinent to Appellant’s problem (i.e., the problem of providing visual inspection of a coffee product) (Appeal Br. 13-14). Appellant contends Ferri is directed to an inflated frame packaging for fresh meats and the problem addressed by Ferri is “providing an alternative to the traditional rigid tray packaging products” (Appeal Br. 14). A reference qualifies as prior art for an obviousness analysis only when it is analogous to the claimed invention. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)). However, even assuming arguendo that Ferri is non-analogous art and thus disqualified as prior art in the Examiner’s rejection, Ferri’s exclusion would not be dispositive here. We find the Examiner’s reliance on Ferri to be redundant in view of Van Belleghem and Yates. Appellant has not identified reversible error in the Examiner’s findings that Van Belleghem and Yates, as evidenced by Bachmann, would have disclosed to the ordinarily skilled artisan that a beverage pad may be configured to exhibit a transparency of the first covering that is at least 10% higher than the transparency of the second covering (Final Act. 7-9). In light of the findings noted above and well-stated on pages 5 to 15 of the Final Action, we find the Examiner’s rejection is based on the Appeal 2021-001226 Application 13/281,121 11 teachings of the references and not impermissible hindsight as alleged by Appellant (Appeal Br. 14-15). Although some reconstruction of Boyd’s packet may be necessary to incorporate, inter alia, the (i) partially transparent features taught by Blanc, Anspach, Warner, Van Belleghem, and Yates, as evidenced by Bachmann, and (ii) increased thickness of a second covering as taught by Gruenbacher and Lazaris, as evidenced by Yoakim, Appellant has not shown that the modification of Boyd to use the prior art’s teachings would have been beyond the level of ordinary skill in the art. On this record, we affirm the Examiner’s § 103(a) rejections of claims 1-3, 6, 9-16, 19-21, 25, 27, 30, 31. DECISION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 3, 16 112 2nd paragraph Indefiniteness 3, 16 20, 21, 31 112 4th paragraph Improper Dependency 20, 21, 31 1-3, 14- 16, 20, 25, 27, 30 103(a) Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, Lazaris, Yoakim, Bachmann, Gruber 1-3, 14- 16, 20, 25, 27, 30 3 103(a) Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, Lazaris, Yoakim, Bachmann, Gruber, Tsuji 3 6 103(a) Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, 6 Appeal 2021-001226 Application 13/281,121 12 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed Lazaris, Yoakim, Bachmann, Gruber, Whittaker 9 103(a) Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, Lazaris, Yoakim, Bachmann, Gruber, Anton 9 10, 12, 13 103(a) Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, Lazaris, Yoakim, Bachmann, Gruber, Robertson 10, 12, 13 10-13 103(a) Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, Lazaris, Yoakim, Bachmann, Gruber, Catani, Pergola 10-13 14 103(a) Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, Lazaris, Yoakim, Bachmann, Gruber, Cai 14 19 103(a) Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, Lazaris, Yoakim, Bachmann, Gruber, Chemsystems, Iwasaki 19 21 103(a) Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, Lazaris, Yoakim, Bachmann, Gruber, Brouwer, MacMahon ’335, Zeller, Prudden 21 31 103(a) Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, 31 Appeal 2021-001226 Application 13/281,121 13 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed Lazaris, Yoakim, Bachmann, Gruber, Levy/Lehrer 31 103(a) Boyd, Blanc, Anspach, Warner, Ferri, Van Belleghem, Yates, MacMahon, Gruenbacher, Lazaris, Yoakim, Bachmann, Gruber, Brouwer 31 Overall Outcome 1-3, 6, 9-16, 19-21, 25, 27, 30, 31 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a) (2022). See 37 C.F.R. § 1.136(a)(1)(iv) (2022). AFFIRMED