Trombetta, Liberatore A. et al.

Patent Trials and Appeals Board

Nov 27, 2019

14463770 - (D) (P.T.A.B. Nov. 27, 2019)

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.
14/463,770 08/20/2014 Liberatore A. Trombetta 31-695 6887
126540 7590 11/27/2019
Edward Stemberger
Manelli Selter PLLC
10560 Main Street, Suite PH6
Fairfax, VA 22030
EXAMINER
LACHICA, ERICSON M
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
11/27/2019 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 LIBERATORE A. TROMBETTA, YUCHENG FU,
DENNIS DWIGHT PAYNTER, and STEPHEN LEUNG
Appeal 2019-000770
Application 14/463,770
Technology Center 1700
Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to finally reject claims 1–6, 8, 9, 11–13, 15–18, 21–26,
28, and 29. We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as 2266170 Ontario
Inc. Appeal Brief (“Appeal Br.”) filed August 10, 2018, p. 1.
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We REVERSE.2
CLAIMED SUBJECT MATTER
The claims are directed to a capsule for preparing a consumable
product. Claim 1, reproduced below from the Claims Appendix to the
Appeal Brief, is illustrative of the claimed subject matter. The limitation at
issue is italicized.
1. A capsule, for use in a machine that is adapted for injecting a
fluid into a capsule for preparing a consumable product, said
capsule comprising:
a body defining an interior space with an opening;
a filter disposed in said interior space to define an
ingredients chamber;
an axis defined through said opening and said ingredients
chamber in said body for receiving an injection of fluid from the
machine;
insoluble ingredients disposed in said ingredients chamber
for preparing a desired consumable product by extraction or
infusion from the injection of fluid from the machine, a portion
of said insoluble ingredients being non-permanently bound into
a cluster that is disposed on the line of said axis; and
a cover disposed over said opening.
Remaining independent claim 13 similarly recites a capsule including
insoluble ingredients, wherein a portion of the insoluble ingredients forms a
control member disposed on the line of the axis, the control member
comprising a non-permanent structure adapted to at least partially dissolve
or break apart when exposed to the fluid injection over a period of time.

2 Our Decision refers to the Specification (“Spec.”) filed August 20, 2014,
the Examiner’s Answer (“Ans.”) dated September 26, 2018, and Appellant’s
Reply Brief (“Reply Br.”) filed November 6, 2018.

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Camera et al. US 2012/0070542 A1 Mar. 22, 2012
Winkler et al. US 2012/0058226 A1 Mar. 8, 2012
Hall US 1,951,357 Mar. 20, 1934

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection under 35 U.S.C. § 103:
1. Claims 1, 2, 5, 6, 8, 9, 11–13, 15, 18, 21–26, 28, and 29 as
unpatentable over Camera et al. (“Camera”) in view of
Winkler et al. (“Winkler”); and
2. Claims 3, 4, 16, and 17 as unpatentable over Camera in view
of Winkler, and further in view of Hall.
OPINION
Rejection 1: Obviousness over Camera and Winkler
The issue before us in this appeal is whether Appellant has shown
reversible error in the Examiner’s finding that Camera teaches embodiments
including a filter and insoluble ingredients disposed in the ingredients
chamber, a portion of which being non-permanently bound into a cluster
(claim 1) or forming a control member comprising a non-permanent
structure adapted to at least partially dissolve or break apart when exposed to
the injected fluid (claim 13). After review of the Examiner’s and Appellant’s
opposing positions and the appeal record before us, we determine that
Appellant’s arguments are sufficient to identify reversible error in the
Examiner’s obviousness rejections. In re Jung, 637 F.3d 1356, 1365 (Fed.
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Cir. 2011). Accordingly, we reverse the stated obviousness rejections for
substantially the reasons set forth in the Appeal and Reply Briefs. We offer
the following for emphasis only.
During examination, the Examiner bears the initial burden of
presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992). Meeting that burden requires establishing that the
prior art describes or suggests each and every limitation of the claim or
would have provided one of ordinary skill in the art with an apparent reason
to modify the prior art to arrive at the claimed invention. See KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). In addition, “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) quoted with approval in KSR, 550 U.S.
at 418.
The Examiner finds, in relevant part, that Camera discloses a capsule
for use in a machine that injects a fluid in the capsule for preparing a
consumable product, wherein the capsule comprises a body defining an
interior space with an opening having a cover, and an axis defined through
the opening and the interior space for receiving an injection of fluid from the
machine. Ans. 4. The Examiner further finds that Camera discloses that
ingredients are disposed in the interior space for producing the consumable
product, wherein a portion of the ingredients are non-permanently bound
into a cluster/control member 850 which is disposed on the line of the axis to
control flow of fluid injected into the capsule. Id.
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The Examiner finds Camera teaches that cluster/control member 850
may include a flavor enhancer such as sugar, but may also include
particulate materials and other instant beverage components such as coffee,
which the Examiner finds “reads on the claimed insoluble ingredients being
non-permanently bound into a cluster/control member.” Ans. 5. The
Examiner finds that Camera teaches that some embodiments include
particulate materials or components such as hot cocoa, tea, and juice, and
that “[t]ea is well known in the art to encompass insoluble tea leaves.” Id. at
17. Therefore, the Examiner concludes that it would have been obvious to
incorporate an insoluble instant beverage component into Camera’s
cluster/control member 850 in order to provide an instant beverage
component in a compressed form so as to reduce the volume of space
occupied by the beverage component. Id. at 5.
Appellant argues, inter alia, that Camera fails to teach insoluble
ingredients disposed in the ingredients chamber of the filter for preparing the
consumable product. Appeal Br. 5–7. In particular, Appellant contends that
Camera teaches the use of substantially soluble instant beverages, such as
instant coffee, microground coffee, and dry coffee extract. Id. at 5. With
regard to Camera’s teaching that insert 850 may be made of insoluble
material, Appellant asserts that such an insoluble insert is configured to
facilitate mixing of the soluble beverage ingredients and is not part of the
ingredients of the beverage. Id. at 6–7. Further, Appellant urges that only
when Camera’s insert is soluble is it part of the ingredients of the beverage.
Id. at 7. As such, Appellant contends that Camera fails to disclose insoluble
ingredients being non-permanently bound into a cluster or insoluble
ingredients forming a control member comprising a non-permanent structure
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adapted to at least partially dissolve or break apart as fluid is injected into
the capsule. Id.
Initially, we note that both claims 1 and 13 require insoluble
ingredients, a portion of which being non-permanently bound into a cluster
or control member. See Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331,
1339 (Fed. Cir. 2003) (explaining that anticipation and obviousness require
comparison of the properly construed claims to the available prior art);
Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed.
Cir. 2001) (“Only when a claim is properly understood can a determination
be made . . . whether the prior art anticipates and/or renders obvious the
claimed invention.”).
An ingredient, as used in the claims before us, is “something that
enters into a compound or is a component part of any combination or
mixture.”3 This definition is consistent with Appellant’s Specification which
refers to “ingredients for producing beverages such as coffee, tea, hot
chocolate or soup broth.” Spec. ¶ 3. In addition, a portion is “an often
limited part of a whole.”4 Again, this definition is consistent with
Appellant’s Specification which teaches that ingredients in one region may
be loosely disposed in the capsule while ingredients in another region are
contained within a cluster. Id. ¶ 28; see also Figs. 1 and 3. In light of these
definitions, we interpret claims 1 and 13 as requiring some, but not all, of the

3 https://www.merriam-webster.com/dictionary/ingredient, last visited
November 19, 2019.
4 https://www.merriam-webster.com/dictionary/portion, last visited
November 19, 2019.
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insoluble ingredients for making the beverage are non-permanently bound
into the cluster or the control member.
Although the Examiner correctly finds that Camera teaches that an
insoluble insert may be used, we note that Camera fails to teach that the
insert is made from a portion of the insoluble ingredients for making the
beverage or that these ingredients are non-permanently bound into a cluster.
Instead, Camera’s insert is either insoluble (and a non-ingredient) or soluble
(and an ingredient). Indeed, regardless of the merits of the Examiner’s
finding that Camera teaches that the beverage ingredients may include
insoluble ingredients, Camera fails to teach that a portion of these insoluble
ingredients are non-permanently bound into a cluster or control member as
required by claims 1 and 13. We note that the Examiner does not rely on
either Winkler or Hall to remedy this deficiency. Absent such a teaching, we
are persuaded that the Examiner’s obviousness conclusion lacks sufficient
rational underpinning. Kahn, 441 F.3d at 988.
Accordingly, we do not sustain the Examiner’s decision to reject
independent claims 1 and 13, and claims 2–6, 8, 9, 11, 12, 15–18, 21–26, 28,
and 29 which depend therefrom.
CONCLUSION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1–6, 8, 9, 11–13, 15–18, 21–26, 28, and 29 under 35 U.S.C. § 103 as
unpatentable over Camera and Winkler, alone or further in view of Hall, is
reversed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5, 6, 8,
9, 11–13,
15, 18, 21–
26, 28, 29
103 Camera, Winkler 1, 2, 5, 6, 8,
9, 11–13,
15, 18, 21–
26, 28, 29
3, 4, 16, 17 103 Camera, Winkler,
Hall
3, 4, 16, 17
Overall
Outcome
1–6, 8, 9,
11–13, 15–
18, 21–26,
28, 29

REVERSED