Ex Parte Carpenter et al

Patent Trial and Appeal Board

Mar 30, 2016

12873355 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/873,355 09/01/2010
7590 03/31/2016
Daniel J, Warren
SUTHERLAND ASBILL & BRENNAN LLP
999 Peachtree Street, NE
Atlanta, GA 30309-3996
FIRST NAMED INVENTOR
Gregg Carpenter
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
25040-4135 5155
EXAMINER
KELLY, TIMOTHY PATRICK
ART UNIT PAPER NUMBER
3754
MAILDATE DELIVERY MODE
03/31/2016 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
Exparte GREGG CARPENTER, DAVID R. NEWMAN,
NILANG PATEL, PAUL A. PHILLIPS, ARTHUR G. RUDICK,
LAWRENCE B. ZIESEL, LOUIS MATTOS JR.,
QIUCHEN PETER ZHANG, NILTON ANTONIO MOREIRA MATTOS,
H. BROCK KOLLS, and MICHAEL J. KLINE
Appeal2014-001631
Application 12/873,355
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gregg Carpenter et al. ("Appellants")1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-20, which are all
the pending claims. Appeal Br. 2. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We AFFIRM.
According to Appellants, the real party in interest is The Coca-Cola
Company. Appeal Br. 2.
Appeal2014-001631
Application 12/873,355
CLAIMED SUBJECT MATTER
Appellants' disclosed invention "relates to a product dispenser such as
a beverage dispenser for providing a number of different product or
beverage alternatives to a container with a data storage medium thereon."
Spec. i-f 2. Claims 1, 16, and 20 are independent. Claim 1, reproduced
below with emphasis added, is illustrative of the subject matter on appeal.
1. A product dispensing system for dispensing one of a
number of predetermined products, comprising:
a product dispenser;
the product dispenser comprising a plurality of different
micro-ingredients to create the predetermined product;
the plurality of different micro-ingredients comprising a
reconstitution ratio of about ten to one or higher;
a reading device configured to read or receive data;
a container for receiving the predetermined product; and
a data storage medium with the data thereon.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Cutting us 5,803,320 Sept. 8, 1998
Jones US 6,685,059 B2 Feb.3,2004
Dorney US 7,845,375 B2 Dec. 7, 2010
Canora US 2010/0125362 Al May 20, 2010
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Application 12/873,355
REJECTIONS
The following rejections are before us for review:
I. Claims 1-3, 7-11, 13-18, and 20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Dorney, Cutting,
and Jones.
II. Claims 1, 4---6, 12, 16, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Canora, Cutting, and
Jones.2
ANALYSIS
Rejection I - Claims 1-3, 7-11, 13-18, and 20 as unpatentable
over Dorney, Cutting, and Jones
Appellants present arguments against the rejection of these claims as a
group (see Appeal Br. 6-8; Reply Br. 2--4), and present additional arguments
against the rejection of claim 15 (see Appeal Br. 9). We select independent
claim 1 as representative of the issues that Appellants present together, with
claims 2, 3, 7-11, 13, 14, 16-18, and 20 standing or falling with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv). We address the additional arguments
directed to claim 15 infra.
2 Although the Examiner's statement of rejection on page 7 of the Final
Action omits Jones, the body of the rejection includes this reference. See
Final Act. 7-11. Appellants present arguments regarding Jones (see Appeal
Br. 6-10), and the statement of rejection is correct in the Examiner's Answer
(see Ans. 7). Thus, we treat the omission of Jones from the statement of
rejection as an inadvertent and harmless error, and we refer to the rejection
as including this reference herein.
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Application 12/873,355
Claims 1-3. 7-11. 13. 14. 16-18. and 20
The Examiner found that Dorney discloses a product dispensing
system, substantially as claimed, except for "a plurality of micro-ingredients
to create the predetermined product." Final Act. 2-3. Next, the Examiner
found that Cutting discloses a product dispenser that uses a plurality of
different coffee extract micro-ingredients to create a predetermined product.
Id. at 3 (citing Cutting, col. 4, 11. 8-10, col. 2, 11. 51-57). The Examiner
explained that "coffee extracts (24, 28) are micro-ingredients because ... the
percent of coffee extract in the product could be less than ... that of the
macro-ingredient (22) [i.e. when the beverage is 10 percent coffee extract
(micro), 25 percent sweetener (macro), and 65 percent soda (diluent)]." Id.
(citing Cutting, col. 4, 11. 8-10). The Examiner concluded that, given the
teachings of the prior art, it would have been obvious to one of ordinary skill
in the art at the time the invention was made to use Cutting's dispenser in
place of Dorney's dispenser "since ... one of ordinary skill would have
recognized such a dispenser as being one of the many structures available in
the prior art for dispensing drinks, selection of a specific one over another
being an obvious matter of meeting the specific requirements of a given
application." Id.
The Examiner also found that the combination of Dorney and Cutting
does not disclose a micro-ingredient reconstitution ratio of ten to one or
higher. Id. at 4. However, the Examiner found that Jones discloses "a
beverage dispenser (fig. 1) comprising a micro-ingredient ( 13 5) that
comprises a reconstitution ratio of ten to one or higher." Id. (citing Jones,
col. 5, 11. 56---62 (describing a beverage concentrate having dilution ratio of
one hundred to one)). The Examiner concluded that, given the teachings of
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Application 12/873,355
the prior art, it would have been obvious to one of ordinary skill in the art at
the time the invention was made "to have the micro-ingredients comprise
reconstitution ratios of ten to one or high[ er] since Jones teaches that such
ratios allow[] storage of the micro-ingredients in a small space (col. 5 [,]
ln. 56----62)." Id.
Appellants argue that "none of the references show the use of a
plurality of different micro-ingredients to create a predetermined product."
Appeal Br. 7; Reply Br. 2. In particular, Appellants assert that neither
Cutting nor Jones discloses "the use of multiple extracts in a single product."
Appeal Br. 7.
We are not persuaded by Appellants' argument. With respect to
independent claim 1, we agree with the Examiner that "the features upon
which [Appellants rely] (i.e., combining a number of different micro-
ingredients to produce a single complete beverage) are not recited'' in the
claim. Ans. 11-12 (emphasis added). Instead, apparatus claim 1 requires
only, in relevant part, that "the product dispenser compris[ es] a plurality of
different micro-ingredients to create the predetermined product." Appeal
Br. 12, Claims App. The claim does not call for combining or dispensing
multiple micro-ingredients to create the predetermined product. As stated by
our reviewing court inin re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998), "the name of the game is the claim." It is well established that
limitations not appearing in the claim cannot be relied upon for patentability.
See In re Self, 671F.2d1344, 1348 (CCPA 1982). Moreover, even had
claim 1 included such language, 3 the Examiner notes, and we agree, that
3 Appellants note that independent claim 20 does include such
language. See Appeal Br. 7. Specifically, method claim 20 recites
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Application 12/873,355
"Cutting contemplates the addition of more flavorings in extract form
(micro-ingredients) in addition to the coffee extracts." Ans. 12 (citing
Cutting, col. 6, 11. 9-20). Thus, Appellants have not apprised us of error in
the Examiner's finding, which is supported by a preponderance of the
evidence.
Appellants also argue that "Cutting shows, at best, a macro-ingredient
in the form of a coffee extract" (Appeal Br. 8) and does not disclose micro-
ingredients having a reconstitution ratio of ten to one or higher (Reply
Br. 3--4). This argument is not convincing because, as the Examiner
correctly notes, "one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references."
Ans. 10-11 (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)). Here, the Examiner
found that Cutting teaches a beverage dispenser comprising two different
micro-ingredients in the form of coffee and decaffeinated coffee extracts.
Final Act. 3. The Examiner explained that Cutting's coffee extract
represents a micro-ingredient "since it is a very small ingredient in the
overall beverage." Ans. 12; see Cutting, col. 4, 11. 8-10. Jones is relied on
by the Examiner for disclosing the claimed micro-ingredient reconstitution
ratio often to one or higher. Final Act. 4 (citing Jones, col. 5, 11. 56-62).
Thus, the rejection is based on the combined teachings of Dorney, Cutting,
and Jones. Appellants' allegation of differences or shortcomings of Cutting
alone is not responsive to the rejection as articulated by the Examiner and
therefore does not apprise us of error.
"preparing the beverage by mixing a plurality of different micro-
ingredients." Appeal Br. 15, Claims App.
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As to the combination of teachings upon which the rejection relies,
Appellants argue that "the ... combination of Cutting and Jones is a
physical impossibility." Appeal Br. 7. In particular, Appellants assert that
" [a] coffee extract with a 1 : 100 dilution ratio as in Jones can never constitute
a total of about 10%----25% of the final beverage as is specified in Cutting."
Id. According to Appellants, "this is exactly the type of 'teaching away' that
would 'discredit' or 'discourage' the proposed combination." Id. at 8 (citing
MPEP § 2145(III)).
We are not persuaded by Appellants' argument that it is physically
impossible to combine the teachings of Cutting and Jones because it is
merely speculative and it appears to rely on bodily incorporation of specific
structural details of Jones into Cutting, which is neither the standard for an
obviousness rejection, nor is it an accurate characterization of the rejection
presented. See Keller, 642 F.2d at 425. It is well established that "it is not
necessary that the inventions of the references be physically combinable to
render obvious the invention under review." In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983). Moreover, Appellants provide no evidence or
persuasive technical reasoning why combining the teachings of Dorney,
Cutting, and Jones in an operable manner would be beyond the level of
ordinary skill in the art. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007).
Further, Appellants do not point to any passage in Jones that
criticizes, discredits, or otherwise discourages use of a micro-ingredient
reconstitution ratio of ten to one or higher, as claimed, and we therefore are
not persuaded that Jones teaches away from the combination used in the
rejection of record. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
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(prior art does not teach away from claimed subject matter merely by
disclosing a different solution unless the prior art also criticizes, discredits or
otherwise discourages the solution claimed). Here, Jones simply discloses
that "[t]he beverage concentrate 135 can be of any concentration ratio" and
"[i]n a preferred embodiment, ... is nominally a 100: 1 dilution ratio."
Jones, col. 5, 11. 56-60 (boldface omitted; emphasis added). It is well
established that the disclosure of a particular embodiment, even a preferred
embodiment, in the prior art-absent such criticizing, discrediting, or
otherwise discouraging-is not a teaching away. See DyStar Textilfarben
GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) ("We will
not read into a reference a teaching away ... where no such language
exists."). We agree with the Examiner that, based on the explicit teachings
of Jones, "one of ordinary skill in the art at the time of the invention would
recognize that the mixing ratio of the diluents and concentrate would need to
be adjusted according to the specific concentration ratio." Ans. 11 (citing
Jones, col. 5, 11. 56-59). Thus, Appellants have not apprised us of error in
the rejection as presented.
After careful consideration of all the evidence, Appellants' arguments
do not apprise us of error in the Examiner's findings or reasoning for the
conclusion of obviousness with respect to claim 1. Accordingly, we sustain
the rejection of independent claim 1, and claims 2, 3, 7-11, 13, 14, 16-18,
and 20 falling with claim 1, under 35 U.S.C. § 103(a) as being unpatentable
over Dorney, Cutting, and Jones.
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Claims 15
Claim 15 depends from independent claim 1 and additionally recites
"one or more macro-ingredients and one or more diluents for mixing with
the plurality of micro-ingredients." Appeal Br. 14, Claims App. The
Examiner found that:
Cutting teaches a product dispenser compris[ing] one or more
macro-ingredients (22) and one or more diluents (20, 26) for
mixing with the plurality of micro-ingredients (24, 28). The
coffee extracts (24, 28) are micro-ingredients because col. 4[,]
ln. 8-10 shows that the percent of coffee extract in the product
could be less than ... that of the macro-ingredient (22) (i.e. when
the beverage is 10 percent coffee extract (micro), 25 percent
sweetener (macro), and 65 percent soda (diluent)).
Final Act. 5. The Examiner concluded that, given the teachings of the prior
art, it would have been obvious to one of ordinary skill in the art at the time
the invention was made to use Cutting's dispenser in place of the dispenser
disclosed by Dorney "since the one of ordinary skill would have recognized
such a dispenser as being one of the many structures available in the prior art
for dispensing drinks, selection of a specific one over another being an
obvious matter of meeting the specific requirements of a given application."
Id.
Appellants argue that "Cutting merely shows macro-ingredients as
opposed to [a] combination of micro-ingredients and macro-ingredients as is
recited herein." Appeal Br. 9. According to Appellants, "[a]lthough Cutting
is silent on the reconstitution ratio of the coffee extracts, most known coffee
extracts have reconstitution ratios in the range of about 6: 1 [and] ...
sweeteners are considered to be macro-ingredients in that they have
reconstitution ratios of about 3: 1 to about 6: 1." Id. (citing Spec. i-f 5).
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Based on Appellants' acknowledgement that a sweetener represents a
macro-ingredient (id.), and the Examiner's uncontested finding that Cutting
discloses a sweetener (Final Act. 5 (citing Cutting, col. 4, 11. 8-10) ),
Appellants' argument against the rejection of claim 15 is essentially that
Cutting does not disclose micro-ingredients having a reconstitution ratio of
ten to one or higher as claimed. This argument, which is substantially
similar to the argument made previously with respect to the rejection of
claim 1 (see Appeal Br. 8; Reply Br. 3--4), is not persuasive for the same
reasons discussed supra. Namely, this argument attacks Cutting individually
when the rejection is based on the combined teachings of Dorney, Cutting,
and Jones. See Keller, 642 F.2d at 425; Merck, 800 F.2d at 1097.
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 15 under 35 U.S.C. § 103(a) as being unpatentable over Dorney,
Cutting, and Jones.
Rejection II - Claims 1, 4-6, 12, 16, and 19 as unpatentable
over Canara, Cutting, and Jones
With respect to the rejection of these claims, Appellants do not set
forth any substantive arguments separate from the arguments discussed
supra, instead expressly stating that Appellants "respectfully traverse[] the
rejection[] for the reasons described above." See Appeal Br. 10.
Accordingly, for the same reasons that Appellants' arguments do not apprise
us of error in Rejection I, Appellants also do not apprise us of error in
Rejection II. Thus, we likewise sustain the rejection of claims 1, 4---6, 12,
16, and 19 under 35 U.S.C. § 103(a) as being unpatentable over Canora,
Cutting, and Jones.
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Application 12/873,355
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-3, 7-11,
13-18, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Dorney,
Cutting, and Jones.
We AFFIRM the Examiner's decision rejecting claims 1, 4---6, 12, 16,
and 19 under 35 U.S.C. § 103(a) as being unpatentable over Canora, Cutting,
and Jones.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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