Matti Koskinen

Patent Trials and Appeals Board

Mar 11, 2020

13642926 - (D) (P.T.A.B. Mar. 11, 2020)

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.
13/642,926 10/23/2012 Matti Koskinen TP.2071 6756
93582 7590 03/11/2020
ZIEGLER IP LAW GROUP, LLC.
55 Greens Farms Road
WESTPORT, CT 06880
EXAMINER
SMITH, CHAIM A
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
03/11/2020 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):
eofficeaction@appcoll.com
paralegal_ziplaw@arcticinvent.com
ptomail@gziplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte MATTI KOSKINEN
____________
Appeal 2018-007405
Application 13/642,926
Technology Center 1700
____________

Before RAE LYNN P. GUEST, JAMES C. HOUSEL, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Appellant1 appeals from the Examiner’s
decision to reject claims 1–4 and 7–10. Appeal Br. 4–15. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Spotless
Tea Bag OY. Appeal Br. 2.
Appeal 2018-007405
Application 13/642,926

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STATEMENT OF THE CASE
Appellant’s invention relates to a package for a beverage preparation,
comprising a water permeable filter bag for solid raw material for a
beverage, packed in an openable protective package enclosing the bag.
Spec. ¶ 1:5–7.2 For example, Appellant’s invention includes packages of tea
bags. Id. at 1:18–20, 4:28–30.
Appellant explains that after removing a conventional filter bag from
a cup containing hot water, the bag causes a mess and is not easy to insert
back into the package because the bag has swollen due to absorbed water.
Id. at 1:24–2:2. Appellant seeks to address this problem and provide a
package that is easy to use, does not take up a lot of space, does not require a
lot of packaging material, and allows for using tea bags neatly. Id. at 3:8–
12. Another aspect of Appellant’s protective package is that it is fully sealed
to act as a protection for the aroma. Id. at 4:30–32.
Claim 1 is illustrative of the subject matter and states:
1. A package comprising:
a water permeable polyhedral filter bag containing solid
raw material for a beverage packed in said filter bag;
an openable protective package made of a package
material, enclosing the bag packed in said protective package
and being fully sealed aroma-tight in closed position; said
protective package having a front wall, a rear wall, side edges, a
lower edge, an upper edge, and a bottom, said front wall and
rear wall joining together at their both vertical edges which
form the side edges of the protective package and the front wall
and the rear wall being seamed together at their upper edges,
said protective package being openable by forming an opening
between the front wall and the rear wall by tearing the package

2 Citations are to the Specification filed on August 16, 2017.
Appeal 2018-007405
Application 13/642,926

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open at a pre-marked location close to the upper edge of the
package,
both the front wall and the rear wall ending at their
respective separate supporting edges at the bottom, the lower
edge of the package in flat, closed position consisting of said
separate supporting edges, which can be brought apart to form
an expanded bottom structure which keeps the package upright
supported by said supporting edges brought apart, and the
opening formed for taking out the bag being widenable by
pressing the vertical edges closer to each other for placing the
bag back into the package, the package material of the
protective package forming a bottom that is liquid tight
throughout at least between the supporting edges,
the package having rectangular form where the vertical
edges of the package form shorter sides and the bottom and the
opening of the package are formed along longer sides, and
both separate supporting edges at the bottom being
constituted of folds defined by folding lines, where the package
material is sealed together on a short length on both sides of
each folding line.
Appeal Br. 17 (Claims App.) (emphasis added). As shown by the
italicized language, claim 1 requires that the package be “fully sealed
aroma-tight in closed position.” Id.
Appeal 2018-007405
Application 13/642,926

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OPINION
The Examiner rejects claims 1–4 and 7–10 as obvious over
Yoshizawa3 in view of Teepack,4 Takahashi,5 and Appellant’s Admission of
the Prior Art, as further evidenced by Pyramid Tea Bags,6 The New York
Times,7 and Boles.8 Final Action 2–7. Appellant argues these claims as a
group. Appeal Br. 6–15. We select claim 1 as representative of the group.
See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner’s analysis begins with the package of Yoshizawa and
considers modifications according to the teachings of other references,
including Teepack. See, e.g., Final Action 4 (¶ 7), 5 (¶ 9); Ans. 3–6. As
indicated above, claim 1 requires a protective package that is “fully sealed
aroma-tight in closed position” – a feature not present in the unmodified
package of Yoshizawa. Appeal Br. 17 (Claims App. ¶ 2). The Examiner’s
rejection rests on a theory that the ordinarily skilled artisan would have been
led to modify Yoshizawa’s package in view of Teepack to include that

3 JP 03-4574 (published Jan. 17, 1991). Our citations to Yoshizawa are to
the English language translation of Yoshizawa entered into the record on
December 17, 2015.
4 DE 296 09 717 U1 (published Aug. 14, 1996). Our citations to Teepack
are to the English language translation of Teepack entered into the record on
December 17, 2015.
5 US 2005/0069230 A1 (published Mar. 31, 2005).
6 Pyramid Tea Bags, Jaytea, http://www.jaytea.com/pyramid-tea-bags
(2009).
7 Florence Fabricant, Tea’s Got a Brand New Bag, N.Y. Times (Sept. 13,
2006), http://www.nytimes.com/2006/09/13/dining/13tea.html.
8 David Boles, Burned Tea Thumbs: Lipton Pyramid Tea Bags, David Boles,
Blogs (Oct. 14, 2006), http://bolesblogs.com/2006/10/14/burned-tea-thumbs-
lipton-pyramid-tea-bags.
Appeal 2018-007405
Application 13/642,926

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claimed feature. Final Act. 3 (citing Teepack 4, Figs. 1–2); Ans. 5. Teepack
teaches sealing the external edges of packaging for a tea bag to obtain “a
liquid-impermeable and airtight material.” Teepack 4. The Examiner
concludes that it would have been obvious to modify Yoshizawa’s package
to include Teepack’s airtight sealing of the edges for the purpose of
protecting aroma. Final Act. 3–4.
Appellant responds that fully sealing, in aroma-tight fashion,
Yoshizawa’s package would disable the flap and detachable tag portions of
Yoshizawa’s design. Appeal Br. 6–7 (bridging paragraph). Specifically,
Appellant points out that Yoshizawa discloses a package that includes
detachable tag C as an element of the package. Id. at 6. Further, Yoshizawa
illustrates that, in order to access the detachable tag, one must lift a flap,
which also is formed as part of the packaging material. See Yoshizawa 12,
Fig. 2 (illustrating detachable tag C, located beneath the flap, and formed as
part of the package). In Appellant’s view, modifying Yoshizawa by sealing
the upper edge portion would disable the use of the flap. Appeal Br. 6–7.
The Examiner does not respond directly to Appellant’s main point;
namely, that the structure of Yoshizawa’s package is not amenable to the
proposed modification, because fully sealing the edges of Yoshizawa’s
package in an air tight manner would diminish, if not destroy, the
functionality of Yoshizawa’s flap and tag portions. Instead, the Examiner
responds by asserting three counterarguments. First, the Examiner asserts
that the comprising language of claim 1 does not preclude the presence of a
detachable tag as part of the protective package. Ans. 3. Although this may
be true, the Examiner does not address how Yoshizawa’s package, having a
detachable tag as an element, can be modified to be fully sealed along the
Appeal 2018-007405
Application 13/642,926

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edges in a manner that is aroma-tight. The Examiner acknowledges that a
configuration that falls within the scope of claim 1 may or may not contain a
detachable tag as taught by Yoshizawa. The Examiner, however, does not
explain why an ordinarily skilled artisan would have been led to modify
Yoshizawa to provide an airtight seal in light of Yoshizawa’s further
teaching of a detachable tag as part of the package. Teepack does not
illustrate a detachable tag as part of the package. See Teepack 10, Figs. 1–2.
The Examiner does not argue that one would have modified Yoshizawa’s
package to remove the detachable tag, but relies instead on a modification
that would appear to render useless the detachable tag.
Second, the Examiner asserts that Appellant discloses that the claimed
protective package would be fully sealed and also comprise a flap. Ans. 4.
That assertion is presented in response to Appellant’s suggestion that the
flap portion of Yoshizawa’s package cannot be fully sealed and remain
operable. Appeal Br. 6–7. Appellant points out that Yoshizawa forms
detachable tag C as part of the protective package. Id. In our view, the
relevant issue is not whether a protective package can be fully sealed and
also contain a flap, but whether an ordinary artisan would have modified
Yoshizawa’s protective package—which contains, in addition to a flap, a
detachable tag formed as part of the protective package and underneath the
flap—to become fully sealed in an airtight manner. That Yoshizawa’s
protective package can be fully sealed and also contain a flap does not
address the question why one would have made that modification in view of
the combined flap and detachable tag structure. The Examiner does not
explain adequately why an ordinarily skilled artisan would have modified
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Application 13/642,926

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Yoshizawa’s package, in light of the functionality of the tab, which is
included as a feature of Yoshizawa’s packaging material. Id.
Third, the Examiner asserts that if Yoshizawa had unequivocally
disclosed forming a fully sealed, aroma-tight protective package, then an
obviousness rejection would not have been necessary and the claims would
have been rejected as anticipated. Ans. 4. Although the Examiner is correct
that the rejection is based on a combination of references, and not on
Yoshizawa alone, the Examiner still must articulate rational reasons how and
why an ordinarily skilled artisan would have combined the teachings of the
asserted references with a reasonable expectation of success. On that point,
Appellant responds to the rejection by arguing that the flap and detachable
tag preclude modifying the package of Yoshizawa to include the fully sealed
airtight edges of Teepack. We agree with Appellant that the Examiner’s
response does not take account adequately of the structure of Yoshizawa’s
package; in particular, the flap that opens to expose a detachable tag as part
of the package. Appeal Br. 6–7. The Examiner, in fact, fails to respond to
Appellant’s argument on that point. Accordingly, the Examiner does not
articulate with sufficient clarity a reason for the proposed modification to
Yoshizawa’s package.
The Examiner does not rely on the other applied prior art to remedy
the above-discussed deficiency in the modification of Yoshizawa’s package.

CONCLUSION
We reverse the Examiner’s decision to reject claims 1–4 and 7–10.

Appeal 2018-007405
Application 13/642,926

8

Claims
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1–4, 7–10 103 Yoshizawa, Teepack,
Takahashi, Appellant’s
Admission of Prior
Art, Pyramid Tea
Bags, The New York
Times, and Boles
1–4, 7–10

REVERSED