Ex Parte Carpenter et alDownload PDFPatent Trial and Appeal BoardMar 30, 201612873355 (P.T.A.B. Mar. 30, 2016) Copy Citation 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 2 Appeal2014-001631 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. 3 Appeal2014-001631 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 4 Appeal2014-001631 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 5 Appeal2014-001631 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. 6 Appeal2014-001631 Application 12/873,355 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) 7 Appeal2014-001631 Application 12/873,355 (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. 8 Appeal2014-001631 Application 12/873,355 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). 9 Appeal2014-001631 Application 12/873,355 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. 10 Appeal2014-001631 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 11 Copy with citationCopy as parenthetical citation