NESTEC S.A.

Patent Trials and Appeals Board

Dec 22, 2020

2020001308 (P.T.A.B. Dec. 22, 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.
14/837,905 08/27/2015 Cyrille Durand 3712036-02472 5140
29157 7590 12/22/2020
K&L Gates LLP-Nestec S.A.
P.O. Box 1135
Chicago, IL 60690
EXAMINER
LACHICA, ERICSON M
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
12/22/2020 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte CYRILLE DURAND, RAWAN FRIEL,
JESSE HARTMAN, and TERRY PARVE 1
_____________

Appeal 2020-001308
Application 14/837,905
Technology Center 1700
______________

Before TERRY J. OWENS, JOHN A. EVANS, and BRIAN D. RANGE,
Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of Claims 12–18 and 22–24. Appeal Br. 17–18
(Claims App.). We have jurisdiction over the pending claims 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. The Appeal Brief identifies Société des Produits Nestlé
S.A., as the real party in interest. Appeal Br. 2.
Appeal 2020-001308
Application 14/837,905

2

INVENTION
The invention is directed to a method of making a beverage using a
container that houses liquid creamer. See Abstract; Claim 12. Claim 12, the
sole independent claim, is reproduced below with some formatting added.
12. A method of making a beverage using a container that
houses liquid creamer, the method comprising
pouring the liquid creamer from the container into a cup,
the liquid creamer is poured through an opening in a base of a
closure connected to the container,
the container and the closure form a package, an upper
planar surface of the base defines the opening, and the opening
directly connects an interior of the package to an exterior of the
package, the closure comprising a ring extending from the base,
the closure further comprising an overcap connected to
the base of the closure by a hinge, and the hinge is located on
an opposite side of the base from the cup when the liquid
creamer is poured from the container into the cup and maintains
the overcap in a position such that drips of the liquid creamer
falling from the overcap land in the cup when the container is
between 1/4 and 3/4 full and the overcap is at 125 degrees to
145 degrees relative to a vertical axis of the cup during pouring,
and land within the ring when the container is greater than 3/4
full and the overcap is at an angle greater than 145 degrees to
the vertical axis of the cup during pouring.

PRIOR ART
Appeal 2020-001308
Application 14/837,905

3

Name2 Reference Date
Serrano US 2005/0242095 A1 Nov. 3, 2005
Wilson US 2009/0134188 A1 May 28, 2009
Danks US 2009/0242564 A1 Oct. 1, 2009
Romanov US 2012/0000944 A1 Jan. 5, 2012
Offord US 2012/0104052 A1 May 3, 2012
Coffee-Mate Natural Bliss Liquid Coffee Creamer - Part II
http://islandlife808.com/tag/natural-coffeecreamer (last visited Jan.
13, 2017) (“Coffee Mate”)

REJECTIONS3 AT ISSUE4
1. Claims 12, 14, 16–18, 22, and 23 stand rejected under 35 U.S.C. § 103
as obvious over Coffee-Mate, Romanov, and Offord. Final Act. 3–8.
2. Claim 13 stands rejected under 35 U.S.C. § 103 as obvious over
Coffee-Mate, Romanov, Offord, and Serrano. Final Act. 8–11.
3. Claim 14 stands rejected under 35 U.S.C. § 103 as obvious over
Coffee-Mate, Romanov, Offord, and Danks. Final Act. 11–12.
4. Claim 15 stands rejected under 35 U.S.C. § 103 as obvious over
Coffee-Mate, Romanov, Offord, Serrano, and Danks. Final Act. 12–
13.

2 All citations herein to the references are by reference to the first named
inventor/author only.
3 The present application, filed on or after March 16, 2013, is being
examined under the first inventor to file provisions of the AIA. Final Act 2.
4 Throughout this Decision, we refer to the Appeal Brief (“Appeal Br.”) filed
September 9, 2019, the Reply Brief (“Reply Br.”) filed December 5, 2019,
the Final Office Action (“Final Act.”) mailed May 9, 2019, the Examiner’s
Answer mailed October 10, 2019, and the Specification (“Spec.”) filed
August 27, 2015.
Appeal 2020-001308
Application 14/837,905

4

5. Claim 24 stands rejected under 35 U.S.C. § 103 as obvious over
Coffee-Mate, Romanov, Offord, and Wilson. Final Act. 12–14.

ANALYSIS
We have reviewed the rejections of Claims 12–18 and 22–24 in light
of Appellant’s arguments that the Examiner erred. We have considered in
this Decision only those arguments Appellant actually raised in the Briefs.
Any other arguments which Appellant could have made but chose not to
make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). We provide the following explanation to highlight and
address specific arguments and findings primarily for emphasis. We
consider Appellant’s arguments as they are presented in the Appeal Brief and
the Reply Brief.

CLAIMS 12, 14, 16–18, 22, AND 23: OBVIOUSNESS OVER COFFEE-MATE,
ROMANOV, AND OFFORD.
Independent Claim 12 relates to a container holding a liquid and
“comprising an overcap connected to the base of the closure by a hinge.”
Appeal Br. 17 (Claims App.). Claim 12 recites, inter alia, the hinge
“maintains the overcap in a position such that drips of the liquid creamer
falling from the overcap land in the cup when the container is between 1/4
and 3/4 full and the overcap is at 125 degrees to 145 degrees relative to a
vertical axis of the cup during pouring.” Id.
Appellant argues, and provides evidenceof, the superior performance
of the claimed angles. See Appeal Br. 8–10.
Appeal 2020-001308
Application 14/837,905

5

The Examiner finds “Coffee Mate discloses using the closure such
that the overcap is close to 145 degrees relative to a vertical axis of the cup
during pouring.” Ans. 5.

Figure 1 shows an image, as annotated by the Examiner, taken from the
Coffee Mate reference depicting coffee creamer being poured from a
container into a cup of coffee. See Ans. 5.

Coffee Mate is silent as to the angle of the overcap relative to a
vertical axis of the cup during pouring. Rather, the Examiner’s finding
relies on inspection of a figure. Appellant’s Figure 5 defines the claimed
135° angle of an overcap with respect to a vertical axis of a cup.

Appeal 2020-001308
Application 14/837,905

6

Specification Figure 5 showing the claimed angle between
an overcap and a vertical axis of a cup.

Contrary to the Examiner’s finding, the Coffee mate overcap appears
to be substantially parallel to the cup vertical axis, but not at a 145° angle
thereto, as claimed. Because we find the prior art fails to teach at least one
claimed limitation, we decline to sustain the rejection of Claims 12, 14, 16–
18, 22, and 23 under 35 U.S.C. § 103.
CLAIM 13: OBVIOUSNESS OVER COFFEE-MATE, ROMANOV,
OFFORD, AND SERRANO.
Appellants contend Claim 13 is patentable in view of the arguments
advanced in favor of independent Claim 12. App. Br. 10. The Examiner
does not make separate findings for the dependent claims. See Ans. 15–19.
In view of the foregoing, we decline to sustain the rejection of Claim
13 under 35 U.S.C. § 103.

CLAIM 14: OBVIOUSNESS OVER COFFEE-MATE, ROMANOV,
OFFORD, AND DANKS.
Appeal 2020-001308
Application 14/837,905

7

Appellants contend Claim 14 is patentable in view of the arguments
advanced in favor of independent Claim 12. App. Br. 11. The Examiner
does not make separate findings for the dependent claims. See Ans. 15–19.
In view of the foregoing, we decline to sustain the rejection of Claim
14 under 35 U.S.C. § 103.
CLAIM 15: OBVIOUSNESS OVER COFFEE-MATE, ROMANOV,
OFFORD, SERRANO, AND DANKS.
Appellants contend Claim 15 is patentable in view of the arguments
advanced in favor of independent Claim 12. App. Br. 12. The Examiner
does not make separate findings for the dependent claims. See Ans. 15–19.
In view of the foregoing, we decline to sustain the rejection of Claim
15 under 35 U.S.C. § 103.

CLAIM 24: OBVIOUSNESS OVER COFFEE-MATE, ROMANOV,
OFFORD, AND WILSON.
Appellants contend Claim 24 is patentable in view of the arguments
advanced in favor of independent Claim 12. App. Br. 14. The Examiner
does not make separate findings for the dependent claims. See Ans. 15–19.
In view of the foregoing, we decline to sustain the rejection of Claim
24 under 35 U.S.C. § 103.

CONCLUSION
In summary:
Appeal 2020-001308
Application 14/837,905

8

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
12, 14, 16–
18, 22, 23
Coffee-Mate,
Romanov, Offord
12, 14, 16–
18, 22, 23
13 Coffee-Mate,
Romanov, Offord,
Serrano
13
14 Coffee-Mate,
Romanov, Offord,
Danks
14
15 Coffee-Mate,
Romanov, Offord,
Serrano, and
Danks
15
24 Coffee-Mate,
Romanov, Offord,
Wilson
24
Overall
Outcome
12–18, 22–
24

REVERSED