SARONG SOCIETA' PER AZIONI

Patent Trials and Appeals Board

Apr 8, 2020

15029877 - (D) (P.T.A.B. Apr. 8, 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.
15/029,877 04/15/2016 Andrea Bartoli 06827-P0008A 9167
131672 7590 04/08/2020
Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
EXAMINER
AXTELL, ASHLEY
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
04/08/2020 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 ANDREA BARTOLI, DAVIDE CAPITINI,
ALESSANDRO GRILLENZONI, and FLAVIO TRALDI

Appeal 2019-003321
Application 15/029,877
Technology Center 1700
____________

Before DONNA M. PRAISS, N. WHITNEY WILSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 20–26. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on April 3, 2020. A transcript of
that hearing will be part of the record of this appeal. We AFFIRM.

1 In this Decision, we refer to the Specification filed Apr. 15, 2016
(“Spec.”), the Final Office Action dated Apr. 16, 2018 (“Final Act.”), the
Appeal Brief filed Sept. 18, 2018 (“Appeal Br.”), the Examiner’s Answer
dated Jan. 23, 2019 (“Ans.”), and the Reply Brief filed Mar. 25, 2019
(“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Sarong Societá Per Azioni is identified as the real party in
interest. Appeal Br. 2.
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STATEMENT OF THE CASE
The subject matter on appeal relates to capsules or containers for
preparing products, such as beverages, in automatic dispensing machines.
Spec. 1:2–3. According to the Specification, ground coffee that has not been
subjected to degassing can release carbon dioxide and cause an unexpected
increase in pressure inside a capsule filled with the coffee, which may cause
deformations or undesired swelling of the cover element or even
compromise the wholeness of the capsule. Id. at 2:14–24. The Specification
describes an object of Appellant’s capsule invention is to prevent separation
of the closing element from the base wall when subjected to pressure. Id. at
3:7–9. Appellant’s Figure 1 below depicts a capsule embodiment.

Figure 1 shows container 2 comprising base wall 3, side wall 4, and
flange 7. Id. at 3:27–4:3. Cover element 8 is described as comprising a film
of aluminum or a plastic film that is fixed to rim 7 of casing 2 by thermal or
ultrasound welding or by gluing. Id. at 5:23–31. Closing element 26 is
described by the Specification as being similar to cover element 8, having
greater dimensions than base wall 3, and being fixed to side wall 4 to remain
joined to the capsule even in the presence of a pressure increase inside the
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capsule. Id. at 5:32, 6:7–9. Claim 20, the sole independent claim, is
illustrative and reproduced from the Claims Appendix to the Appeal Brief
(disputed limitations italicized).
20. A capsule for beverages, comprising:
a casing including:
an annular base rim that defines an opening, the
base rim being flat and lying in a plane perpendicular to
a symmetry axis of the capsule;
an annular wall that defines a hole substantially of
a same size as the opening, the annular wall connected to
a radially inner end portion of the base rim;
a side wall having a first end portion and an
opposing second end portion, the first end portion
connected to a radially outer end portion of the base rim;
and
a flange rim connected to the second end portion
of the side wall;
the base rim, the annular wall, and the side wall
collectively defining a cavity that is suitable for
containing an initial product to be combined with a fluid
to obtain a final product;
a cover element fixed to the flange rim to hermetically
seal the cavity, the cover element configured to be perforated
by a component of a dispensing machine in which the capsule is
usable; and
a closing element fixed to and superimposed along an
entirety of the base rim to hermetically seal the opening, the
closing element also being fixed to and superimposed along the
first end portion of the side wall such that the closing element is
configured to remain joined to the capsule even in the presence
of a pressure increase inside the capsule, the closing element
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configured to be perforated by a component of a dispensing
machine in which the capsule is usable.
ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. 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)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and Appellant’s arguments, we are not persuaded of reversible
error in the appealed rejections.
The Examiner rejects claims 20–26 as follows.3 Final Act. 7–16.
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
20–26 103 Yoakim,
4 Navarro,5
Kamerbeek6
Appellant argues separately the rejection of claims 20 and 22. Appeal
Br. 3–8. Accordingly, claims 21 and 23–26 will stand or fall with claim 20
from which they depend. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 22 is
addressed separately.

3 The Examiner withdrew the rejection of claims 20–26 under 35 U.S.C.
§ 103 over a different prior art combination. Ans. 3.
4 WO 2009/133134 A1, published Nov. 5, 2009.
5 ES 1 075 815, published Dec. 12, 2011 (citations herein are to the
corresponding English language publication EP 2 650 234 A1, published
Oct. 16, 2013).
6 US 2012/0231123 A1, published Sept. 13, 2012.
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Claim 20
Appellant contends the Examiner erred in rejecting claim 20 over
Yoakim, Navarro, and Kamerbeek because Yoakim’s annular base rim is not
“flat and lying in a plane perpendicular to a symmetry axis of the capsule” as
required by the claim. Appeal Br. 5. According to Appellant, Yoakim’s rim
is not at a base or bottom because it is near the top of Yoakim’s Figures 3–6.
Id. Appellant asserts Yoakim’s use of the term “bottom” to describe
components consistent with Appellant’s use of the term base. Id. (citing
Yoakim 24:13–15). Appellant also contends that the combination of Navarro
with Yoakim is based on the mistaken assumption that the meeting point
between Yoakim’s cylindrical wall 4a and slanted inlet face 3a is at the base
or bottom of capsule 1. Id. at 7. Appellant argues that Yoakim’s closing
element 5 is not shown to be engaging or fixed to the meeting point between
cylindrical wall 4a and slanted inlet face 3a, therefore, it is not “fixed to and
superimposed along an entirety of the base rim to hermetically seal the
opening” as recited in claim 20. Id.
The Examiner responds that Yoakim explicitly teaches that its cover
member 5 may be a flat surface or a cup shaped surface. Ans. 4 (citing
Yoakim 26:13–19). The Examiner additionally finds that Navarro discloses
a similar capsule to that of Yoakim having a wide circumferential sealing
area, which Navarro teaches forms a good base for optimal coupling which
must be leak tight between the capsule and the machine. Id. at 4–5 (citing
Navarro ¶ 9). The Examiner determines it would have been obvious to a
person having ordinary skill in the art to modify Yoakim such that the
annular base rim is flat and lying in a plane perpendicular to a symmetry
axis of the capsule as taught by Navarro in order to increase the supporting
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surface to provide a good base for optimum coupling for a leak tight closure
cover. Id. at 5.
Regarding the location of Yoakum’s components, the Examiner finds
that Navarro discloses that supply starts with the entry of pressurized hot
water which penetrates into the capsule through holes in the base or bottom,
through the ground coffee mass, and the infusion exits towards the cup
through the upper cover. Id. at 6 (citing Navarro ¶ 12). The Examiner finds
that Navarro teaches the use of its capsule in the same orientation of
Yoakim, therefore the same advantages taught by Navarro including
increasing the supporting surface for a leak tight closure and optimum
coupling would be provided to Yoakim’s capsule as modified by Navarro.
Id. The Examiner further finds that Yoakim’s Figure 5 shows that Yoakim’s
cover element is engaged to the meeting point between cylindrical wall 4a
and slanted face 3a. Id. at 7.
In the Reply Brief, Appellant disagrees that the direction of liquid
flow through Navarro’s capsule implies the same orientation as Yoakim.
Reply Br. 3. Appellant argues that Yoakim’s orientation is required to fit
into the receiving chamber of Yoakim’s beverage preparation device. Id.
Appellant also asserts that modification of Yoakim with Navarro is not
merely a design choice because there are factors such as ease or difficulty of
manufacturing such a capsule and matching the beverage dispensing
machine. Id. at 5. According to Appellant, even if Yoakim’s rim were
modified based on Navarro’s design, Yoakim’s cover member 5 would not
contact the meeting point between inlet face 3a and cylindrical wall 4a
because Yoakim’s cover is dome-shaped. Id. at 7–8. Appellant’s illustration
of this argument is shown below.
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Appellant’s illustration above shows Yoakim’s cover 5 with a dome shape
both before and after modification with Navarro’s teachings. Id. at 7.
Appellant asserts that Yoakim’s disclosure that its cover 5 may be flat “is
merely clarifying that the ‘dome-shaped’ cover member 5 can include two
surface portions.” Id. at 8.
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting the claims as obvious over the teachings of
Yoakim and Navarro. The record supports the Examiner’s finding that
Yoakim explicitly discloses a flat configuration for its cover 5. Yoakim
26:13–15 (“The cover member 5 is preferably dome-shaped as shown in the
figure. However, the cover member 5 may as well present a flat surface or a
cup-shaped surface.”). In a determination of obviousness, a reference may be
relied upon for all that it would have reasonably suggested to one having
ordinary skill in the art. Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807
(Fed. Cir. 1989). Appellant’s argument essentially limits Yoakim’s cover
member shape to Yoakim’s dome-shaped embodiment. We do not agree that
Yoakim requires a dome shape for its cover. Rather, Yoakim discloses an
alternative flat shape to its preferred dome shape for the cover, as indicated
by the word “or.” Yoakim 26:15.
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We also do not find persuasive Appellant’s argument that the
modification of Yoakim with the teachings of Navarro is not proper because
Yoakim depicts cover 5 at the top rather than the bottom of Yoakim’s Figure
3. Appellant’s argument is based on the word “base” modifying “rim” in
claim 20 to mean the “bottom” of the capsule as inserted into the beverage
device. Appellant does not adequately explain why a person having ordinary
skill in the art would not be motivated to modify Yoakim’s capsule in view
of Navarro based on the fluid flow through the capsules. Based on the cited
record in this Appeal, we are not persuaded that a skilled artisan having
knowledge of both Yoakim and Navarro would view Yoakim’s capsule
structure to be limited to a particular orientation based on a drawing or
device rather than its function or use as a capsule. “A person of ordinary
skill is also a person of ordinary creativity, not an automaton.” KSR Int'l Co.
v. Teleflex Inc., 550 U.S. 398, 421 (2007).
The preponderance of the evidence in this appeal record, therefore,
supports the Examiner’s conclusion that the claimed subject matter would
have been obvious in view of Yoakim in combination with Navarro and
Kamerbeek. Accordingly, we sustain the Examiner’s rejection of claim 20
for the above reasons and those expressed in the Answer, including the
Response to Argument section.
Claim 22
Claim 22 depends from claim 20 and recites “wherein the base rim,
the annular wall, and the side wall are concentrically aligned relative to a
symmetry axis of the capsule.” Appeal Br. 10 (Claims Appendix). The
Examiner rejects claim 22 over the combination of Yoakim and Navarro as
applied to claim 20 and further citing Navarro Figure 5 which concentrically
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aligns the base rim, annular wall, and side wall relative to a symmetry axis
of the capsule. Final Act. 13.
Appellant contends that the Examiner erred in rejecting claim 22
because the Examiner failed to articulate any reasoning of why a person
having ordinary skill in the art would have made the necessary modification.
Appeal Br. 8.
The Examiner responds Navarro is cited to show that the elements of
Yoakim modified by Navarro and Kamerbeek are concentrically aligned as
required by the claim. Ans. 8.
We are not persuaded that the Examiner erred in rejecting claim 22
over the combination of Yoakim, Navarro, and Kamerbeek because the
record supports the Examiner’s finding that the cited prior art references
disclose concentrically aligned capsules. Yoakim Fig. 3, Navarro Fig. 5,
Kamerbeek Fig. 3. Appellant does not adequately rebut the Examiner’s
finding (Ans. 8) that Yoakim’s capsule as modified by Navarro has the
claimed element of concentric alignment.
Accordingly, we affirm the Examiner’s rejection of claim 22 under
35 U.S.C. § 103.
For these reasons and those the Examiner provides, we uphold the
Examiner’s rejection of claims 20–26 under 35 U.S.C. § 103 as obvious over
the combination of Yoakim, Navarro, and Kamerbeek.
TIME PERIOD FOR RESPONSE
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).
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CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
20–26 103 Yoakim, Navarro, Kamerbeek 20–26

AFFIRMED