Ex Parte Khalifa

Patent Trial and Appeal Board

Dec 15, 2017

12660851 (P.T.A.B. Dec. 15, 2017)

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.
12/660,851 03/04/2010 Aly Khalifa P-4456.001-A 1508
109785 7590 12/19/2017
Dunkiel Saunders Elliott Raubvogel & Hand
Justin W. McCabe
91 College St.
Burlington, VT 05401
EXAMINER
KLAYMAN, AMIR ARIE
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
12/19/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
jmccabe@dunkielsaunders.com
ip@dunkielsaunders.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALY KHALIFA
Appeal 2016-006678
Application 12/660,851
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006678
Application 12/660,851
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
3-7, 10, 16-18, 20, 22, 24—31, 34, 35, 43, and 44. Claims 12-15, 19, 32, 33,
and 36-42 have been withdrawn from consideration. Final Act., Summary.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter new grounds of rejection under 37 C.F.R.
§ 41.50(b).
THE INVENTION
The claims are directed to a beverage filtering system. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A beverage filtering system for preparing a
beverage by steeping solid material in a liquid
to extract flavoring therefrom and to filter said
solid material from said liquid for drinking, said
system comprising:
an outer cup for steeping solid material in a
liquid;
an inner cup, said inner cup being nestable
within said outer cup and movable therewithin
from an unfiltered position to a filtered position,
said inner cup having an upper portion and a
lower portion, wherein said inner cup has a
bottom edge, and;
a filter releasably coupled within said lower
portion; and
wherein said outer cup and said inner cup
together form a beverage cup when said inner
cup is in said filtered position for consumption
of said beverage, and
a sealing member including a first seal
coupled to a second seal, wherein said sealing
member is sized and configured to substantially
cover the entirety of the exterior of said lower
portion, said sealing member being releasably
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Application 12/660,851
disposed around said lower portion of said inner
cup, said first seal providing a seal between said
inner cup and said outer cup when said inner cup
is moved between said unfiltered position and
said filtered position so that any liquid in the
outer cup moving into the inner cup must pass
through the filter and said second seal spaced
apart from said first seal so as to assist in
concentrically aligning said inner cup and said
outer cup,
whereby, when said beverage has been
prepared within said outer cup, said inner cup
may be moved to the filtered position relative to
said outer cup from said unfiltered position to
filter solid material from said liquid for serving
said beverage.
Falardeau
So
Melton
Wilhite
REFERENCES
US 607,409
US 5,108,768
US 6,095,033
US 2007/0137494 A1
July 12, 1898
Apr. 28, 1992
Aug. 1, 2000
June 21, 2007
REJECTIONS
Claims 1, 3—7, 10, 16—18, 20, 43, and 44 stand rejected under 35
U.S.C. § 112 second paragraph as indefinite. Final Act. 3.
Claims 1, 3—7, 16, 17, 20, and 44 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wilhite. Id. at 4.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wilhite and Falardeau. Id. at 8.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wilhite and Melton. Id. at 9.
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Application 12/660,851
Claims 22, 24—30, 34, 35, and 43 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wilhite and So. Id. at 10, 15—16.
Claim 31 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wilhite, So, and Falardeau. Id. at 14.
ANALYSIS
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Claims 1, 3—7, 10, 16—18, 20, 43, and 44, Rejected Under 35 U.S.C. § 112
First Paragraph
We enter a new ground of rejection for claims 1, 3—7, 10, 16—18, 20,
43, and 44 for failing to satisfy the written-description requirement of 35
U.S.C. § 112(a). We initially focus on claim 1, from which the remaining
claims depend, either directly or indirectly.
To satisfy the written description requirement, an applicant must
describe the invention in such a way as to convey to one skilled in the art
that applicant had the invention in his possession when the application was
filed. AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc). In the present case, none of the embodiments described in
the Specification (and/or disclosed in the Figures) as filed contains all of the
limitations of claim 1. The first embodiment depicted in Figures 1 through
7B that are described in the Specification does not appear to have a sealing
member that is “sized and configured to substantially cover the entirety of
the exterior of said lower portion” of the inner cup.1 See Spec. | 52, Fig. 3.1 2
1 Appellant acknowledges that the embodiment depicted in Figure 4 (the
Figure 1 Embodiment) “is not covered by claim 1 as [this embodiment] does
not include a sealing member as stated by the claim.” Reply Br. 8—9.
2 We follow the parties’ lead and cite to the version of the Specification
found in US 2010/0224078.
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Application 12/660,851
Likewise, the ninth embodiment depicted in Figures 22 and 23, the only
embodiment purported to satisfy the “concentrically aligning” limitation,3
which contains O-rings of similar size to those of the Figure 1 embodiment,
does not include the recited sealing member. See Spec. 1 82, Figs. 22, 23.
The embodiments depicted in Figures 8 A through 12D may include a
sealing member that is “sized and configured to substantially cover the
entirety of the exterior of said lower portion.” That sealing member
comprises sealing gasket 134, sleeve 132, and rim stopper 138, and appears
to cover almost the entire inner cup. Spec. 62, 65, Figs. 8A—12D. But the
“second seal” of the sealing member of these embodiments, i.e., rim stopper
138, does not “assist in concentrically aligning said inner cup and said outer
cup” (as recited), because it does not enter into the outer cup when the inner
cup moves from the unfiltered to the filtered position. See Spec. 1 65, Fig. 9.
On the contrary, rim stopper 138 prevents further downward movement of
the inner cup by abutting against the rim of the outer cup 120. Id.
In sum, none of the disclosed embodiments, individually, include all
of the limitations of claim 1. At best, one of ordinary skill in the art might
have been able to construct the device of claim 1 from the Specification by
piecing together parts of different embodiments. In other words, the subject
matter of claim 1 might have been obvious in view of the Specification. But
this is insufficient to satisfy the written description embodiment vis a vis the
limitations recited in claim 1. As our reviewing court has stated,
The question is not whether a claimed invention is an obvious
variant of that which is disclosed in the specification. Rather,
a[n] . . . application itself must describe an invention, and do so
in sufficient detail that one skilled in the art can clearly conclude
3 Resp. to Notice of Non-Compliant Brief p. 3.
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Application 12/660,851
that the inventor invented the claimed invention as of the filing
date sought.
PowerOasis, Inc. v. T-Mobile, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008)
(citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571—72 (Fed. Cir.
1997)); see also Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) (the
written-description requirement is “not a question of whether one skilled in
the art might be able to construct the patentee’s device from the teachings of
the disclosure. . . . Rather, it is a question whether the application
necessarily discloses that particular device”).
Appellant argues that “there is no doubt that a single claim can
encompass multiple embodiments disclosed in a patent application and not
violate the requirements of 35 U.S.C. § 112.” Reply Br. 5—6. But that is
beside the point. Here, the issue is not that claim 1 covers multiple
embodiments, but that it does not cover any single embodiment. Instead, it
picks aspects of different embodiments and puts them together in a new
arrangement that is not specifically disclosed. That claimed arrangement is
not adequately described in the Specification under 35 U.S.C. § 112(a).
In addition, for the reasons set forth above regarding claim 1, none of
the disclosed embodiments, individually, include all of the limitations of
claims 3—7, 10, 16—18, 20, 43, and 44, which depend from claim 1. App. Br.
39-48 (Claims App’x). Moreover, some of the claims appear to add
limitations that are directed to features that are disclosed as part of some
embodiments but are not described as combinable with other embodiments.
For example, claim 7 recites a “second sealing member” that is “disposed
around the upper portion of said inner cup” and “limit[s] the movement of
said inner cup into said outer cup to said filtered position.” Id. at 41. This
feature appears in the first embodiment depicted in Figures 1—7B and in the
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embodiments depicted in Figures 8 A— 12D, but not in the ninth embodiment
depicted in Figures 22 and 23. Spec., Figs. 1—7B, 8A—12D, 22, 23.4
Similarly, claim 43 recites that “said upper portion [of the inner cup] has a
first diameter and said lower portion has a second diameter, said second
diameter being less than said first diameter.” App. Br. 48. Only the first
embodiment includes this feature. Id. 151, Fig. 2. Finally, claim 44
requires a “lower edge” of the filter to “rest[] against a bottom” of the outer
cup when the inner cup is in the filter position. App. Br. 48. Only the ninth
embodiment appears to include this feature. Spec., Figs. 22, 23.
THE EXAMINER’S REJECTION UNDER 35 U.S.C. § 112(b)
The Examiner rejected claims 1, 3—7, 10, 16—18, 20, 43, and 44 under
35 U.S.C. § 112(b) as indefinite. Final Act. 3. The Examiner notes that
claim 1 recites “a sealing member including a first seal coupled to a second
seal,” and “said second seal [is] spaced apart from said first seal.” Id.
According to the Examiner, “[i]t is unclear what structure applicant is
attempting to encompass[] by such inconsistency.” Id. Appellant denies
that these two limitations are inconsistent, and asserts that the Specification
“includes multiple embodiments where the first and second seals are spaced
apart and coupled together.” App. Br. 17.
We are not persuaded that independent claim 1 and its dependent
claims are indefinite for the reason stated by the Examiner. The Examiner
has not provided evidence or persuasive argument that two seals cannot be
4 Further regarding the first embodiment, if O-ring 40 is considered to
correspond to claim 7’s second sealing member, the first embodiment would
seem not to have the “second seal” of the “first sealing member” recited in
claim 1.
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Application 12/660,851
both coupled together and spaced apart. On the contrary, as Appellant
points out, there is at least one embodiment disclosed in the Specification
that appears to satisfy both requirements. Id. (citing Spec. Fig. 10).
Accordingly, we do not sustain this rejection.
THE EXAMINER’S REJECTIONS UNDER 35 U.S.C. § 103(a)
Claims 1, 3—7, 10, 16—18, 20, 43, and 44—
Unpatentable over Wilhite Alone or Combined With Other References
The Examiner rejects claim 1 and its dependent claims under 35
U.S.C. § 103(a) as unpatentable over Wilhite alone or combined with other
references. Final Act. 4—10. In doing so, the Examiner relies on Wilhite’s
gaskets 342 and 344 as corresponding to the claimed first and second seals,
respectively, and the combination of gaskets 342 and 344 as corresponding
to the claimed “sealing member including a first seal coupled to a second
seal.” Final Act. 5 (citing Wilhite, Fig. 9). The Examiner asserts that
“gasket 342 covers the entire[t]y of the exterior of the lower portion of inner
cup 320,” and “the sealing member [is] disposed around the lower portion of
the inner cup (320).” Id.
We are not persuaded that this finding is correct. The Examiner does
not specifically identify which portion of inner cup 320 corresponds to the
claimed lower portion, but it does not appear that any portion of the cup can
be identified as the lower portion such that Wilhite’s gaskets 342 and 344
can be said to both “substantially cover the entirety of the exterior of said
lower portion” and be “releasably disposed around said lower portion.” If,
for example, the lower portion is that portion of the inner cup covered by
gasket 342, then gasket 344 would be disposed around the upper portion of
the cup, and the sealing member cannot be said to be releasably disposed
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around the lower portion. Conversely, if the entire reduced-diameter portion
of the cup is the claimed lower portion, then the sealing member would not
substantially cover the entirety of the exterior of the lower portion. Because
we are not persuaded that Wilhite’s gaskets 342 and 344 correspond to the
claimed sealing member, we decline to sustain the Examiner’s rejection of
claim 1 and its dependent claims as unpatentable over Wilhite alone or in
combination with other references.
Claims 22, 24—30, 34, and 35—Unpatentable over Wilhite and So
The Examiner finds that Wilhite discloses all of the limitations of
independent claim 22 except that it does not disclose, inter alia, the upper
portion having a first diameter and the lower portion having a second
diameter that is less than the first diameter. Final Act. 10—11 (citing Wilhite,
45—84, Figs. 3 A—3C, 5A—7C, 9, 11, 12). The Examiner thus relies on So
to teach this limitation. Id. at 11—13. The Examiner notes that So’s
beverage-making cartridge includes top end 13 with a first diameter, and
bottom wall 16 with a second diameter that is smaller than the first diameter.
Id. at 12 (citing So, 3:4+, Figs. 1, 2). The Examiner determines that it would
have been obvious to one of ordinary skill in the art
[T]o form Wilhite’s inner cup wherein the upper portion has a
first diameter and the lower portion has a second diameter, the
second diameter being less than the first diameter as taught by
So for the reason that a skilled artisan would have been motivated
by So’s explicit suggestion to form a beverage filtering system
wherein the upper portion has a first diameter and the lower
portion has a second diameter, the second diameter being less
than the first diameter.
Id. (citing So, 2:23+).
We are not persuaded that claim 22 and its dependent claims would
have been obvious over Wilhite and So, and decline to sustain this rejection.
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“[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.”
KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, we are not persuaded that
the Examiner has articulated a reason to combine Wilhite and So that has a
rational underpinning. Rather, the Examiner merely relies on the specific
teaching of So itself as motivation to combine that teaching with Wilhite.
We do not consider this circular reasoning to be a sufficient articulated
reason with rational underpinning to sustain this rejection.
Claim 31—Unpatentable over Wilhite, So, and Falardeau
The Examiner’s rejection of claim 31 as unpatentable over Wilhite,
So, and Falardeau relies on the determination that one of ordinary skill in the
art would have been motivated to combine Wilhite and So. Final Act. 14—
15. Because we are not persuaded that this is correct, and Falardeau is not
relied upon to cure the deficiency, we do not sustain this rejection.
DECISION
For the above reasons, we: (1) enter a new ground of rejection of
claims 1, 3—7, 10, 16—18, 20, 43, and 44 for failing to comply with the
written-description requirement of 35 U.S.C. § 112(a); (2) reverse the
Examiner’s rejection of claims 1, 3—7, 10, 16—18, 20, 43, and 44 under 35
U.S.C. § 112(b); and (3) reverse the Examiner’s rejection of claims 22, 24—
31, 34, and 35 under 35 U.S.C. § 103(a).
FINALITY OF DECISION
This decision contains new grounds of rejection under 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
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Application 12/660,851
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ....
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED: 37 C.F.R, $ 41.50(b)
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