Ex Parte Dran et al

Patent Trial and Appeal Board

Mar 29, 2016

13020167 (P.T.A.B. Mar. 29, 2016)

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.
13/020,167 02/03/2011 Dennis Timothy Dran 31-526 1849
126540 7590 03/29/2016
Edward Stemberger
Manelli Selter PLLC
10560 Main Street, Suite PH6
Fairfax, VA 22030
EXAMINER
SMITH, CHAIM A
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
03/29/2016 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

____________

Ex parte DENNIS TIMOTHY DRAN, SCOTT HANNESON,
DAUD AHMED KHAN, and LIBERATORE A. TROMBETTA
____________

Appeal 2014-008028
Application 13/020,167
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1 and 3––20. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).

Appeal 2014-008028
Application 13/020,167

2
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below (with text in bold for emphasis):

1. A beverage capsule for use in preparing a drip-style beverage in a high
pressure beverage preparing machine, the beverage capsule comprising:

a body having a sidewall and a base defining an interior space; a first
opening defined at one end of said body opposing said base, said first
opening being covered by a first cover;

a second opening defined in said base, said second opening being
covered by a second cover;

a filter disposed in said interior space a pre-determined distance away
from said second opening;

ground coffee beans disposed in said interior space between said first
opening and said filter,

wherein said ground coffee beans have a statistical arithmetic mean
particle size that is greater than 600 microns with at least 80 percent of
said ground coffee beans having a particle size in the range of 833
microns to 589 microns.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Schifferle US 2005/0150390 A1 July 14, 2005
Ternite US 2007/0148290 A1 June 28, 2007
Yoakim EP 2 230 195 A1 Sept. 22, 2010

Appeal 2014-008028
Application 13/020,167

3
Ephraim, Coffee Grinding and Its Impact on Brewed Coffee Quality,
http://www.mpechicago.com/coffee/S=0/news/presentations_articles/2005/1
2/coffee_grinding_and_its_impa.

THE REJECTIONS

Claims 1, 3–7, 9, and 11–19 are rejected under pre-AIA 35 U.S.C.
§103(a) as being unpatentable over Ternite in view of Yoakim as
further evidenced by Ephraim. Claims 8, 10, and 20 are rejected under 35
U.S.C. § 103(a) as unpatentable over Ternite in view of Yoakim as further
evidenced by Ephraim in view of Schifferle.
ANALYSIS
Appellants argue that the preamble of the independent claims is
directed to a “drip-style” beverage, and, for the reasons set forth on pages 3–
5 of the Appeal Brief, the preamble identifies a structural limitation of the
claimed subject matter. On the other hand, it is the Examiner’s position that
the phrase “for use in preparing a drip-style beverage in a high pressure
beverage preparing machine” is a statement of intended use, and for the
reasons stated on pages 2–3 of the Answer, the Examiner does not view the
preamble as identifying any structural limitation. In reply, Appellants
reiterate their stated positon on page 2 of the Reply Brief.
The determination of whether a preamble limits a claim is made on a
case-by-case basis in light of the facts in each case; there is no litmus test
defining when a preamble limits the scope of a claim. Catalina Mktg. Int’l v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). If the claim
preamble, when read in the context of the entire claim, recites limitations of
Appeal 2014-008028
Application 13/020,167

4
the claim, or, if the claim preamble is necessary to give life, meaning, and
vitality to the claim, then the claim preamble should be construed as if in the
balance of the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1305 (Fed. Cir. 1999). A “preamble may provide context for claim
construction, particularly, where … that preamble’s statement of intended
use forms the basis for distinguishing the prior art in the patent’s prosecution
history.” Metabolite Labs., Inc. v. Corp. of Am. Holdings, 370 F.3d 1354,
1358-62, 71 USPQ2d 1081, 1084-87 (Fed. Cir. 2004).
In the instant case, Appellants make the point that Yoakim discloses a
wide range of particle sizes, however these are directed to the preparation of
coffee having a high amount of crema. Appeal Br. 4, 6. Appellants submit
that there is no suggestion in Yoakim that the range of sizes would be
suitable for preparing a drip style (crema free) coffee in a high pressure
machine. Id. In reply, the Examiner states that the argument that there is no
suggestion in Yoakim that the range of sizes would be suitable for preparing
a drip style (crema free) coffee in a high pressure machine is a limitation not
claimed. Ans 4. However, the facts in this case warrant that the preamble’s
statement of intended use forms the basis for distinguishing the prior art
because, while the Examiner relies upon Yoakim for teaching a range of
particles sizes of ground coffee beans, the range taught is within the context
of resulting in a product having a high amount of crema, as argued by
Appellants in the record. In this context, aspects of the preamble provide
context for claim construction as it forms the basis for distinguishing the
claim from Yoakum. In other words, the preamble gives life, meaning, and
vitality to the claim, and thus should be construed as if in the balance of the
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Application 13/020,167

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claim, especially with regard to preparing a drip-style (crema free) beverage
in a high pressure beverage preparing machine. Hence, we agree with
Appellants that there is no suggestion in Yoakim that the range of sizes
would be suitable for preparing a drip style (crema free) coffee in a high
pressure machine. Appeal Br. 7.
Appellants similarly argue that Ephraim does not disclose or suggest
the claimed particle sizes for a beverage capsule for use in preparing a crema
free coffee, in a high pressure beverage preparing machine, as claimed.
Appeal Br. 7. With regard to Ephraim, the Examiner does not specifically
address this particular argument. Ans. 4. The Examiner states that Ephraim
stands for the rationale that the particle size of ground coffee beans would be
a result effective variable (id.), but this disclosure is not within the context of
the claimed subject matter of a beverage capsule for use in preparing a drip-
style beverage in a high pressure machine. Hence, we cannot agree with the
Examiner that the record shows the particle size as claimed is a result
effective variable.
In view of the above, we reverse the rejection.
DECISION
The rejection is reversed.

ORDER
REVERSED