Ex Parte Magg et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201310587224 (P.T.A.B. Feb. 27, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JOHANN MAGG and MARKUS OBERMAIER ____________________ Appeal 2011-000554 Application 10/587,224 Technology Center 3700 ____________________ Before GAY ANN SPAHN, MICHELLE R. OSINSKI, and HYUN J. JUNG, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000554 Application 10/587,224 2 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of claims 10, 13, 14, 16, and 18-23. Claims 1-9, 11, 12, 15, and 17 have been cancelled. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER The claimed subject matter relates to “a coffee machine with a continuous heater which . . . allows good heat transfer between the heating rods and the water-guiding tube.” Spec. 2, para. [006]. Claims 10 and 19 are the independent claims on appeal. Claim 10, reproduced below, is illustrative of the claimed subject matter: 10. A coffee machine for preparing coffee using coffee pads, which comprises a continuous heater provided with a water-guiding pipe that is thermally connected to two heating rods provided at opposite sides of the pipe by means of contact surfaces, and a pump for transporting water through the continuous heater, wherein all of the contact surfaces of the pipe and the heating rods are flat, wherein the pipe has ends into which hose- like flexible tube connecting pieces of a water supply and a water exit are inserted, and wherein the connecting pieces are made of plastic and comprise securing means for securing the continuous heater on a housing of the coffee machine. 1 Appellants identify the real party in interest as BSH Bosch und Siemens Hausgeräte GmbH. App. Br. 3. Appeal 2011-000554 Application 10/587,224 3 REJECTIONS2 Appellants seek review of the following rejections: (1) the rejection of claims 10, 13, 14, 18-21, and 23 under 35 U.S.C. § 103(a) as unpatentable over Fanzutti (WO 03/030696 A1, pub. Apr. 17, 2003), Hufnagl (US 5,367,607, iss. Nov. 22, 1994), and Green (US 2004/0009281 A1, pub. Jan. 15, 2004) (Ans. 4-7); and (2) the rejection of claims 16 and 22 under 35 U.S.C. § 103(a) as unpatentable over Fanzutti, Hufnagl, Green, and Buzzi (US 2003/0108343 A1, pub. Jun. 12, 2003) (Ans. 7-8). ANALYSIS Rejection of claims 10, 13, 14, 18-21, and 23 under 35 U.S.C. § 103(a) as unpatentable over Fanzutti, Hufnagl, and Green Claims 10, 13, 14, and 19-21 Only issues and findings of fact contested by Appellants in the Briefs will be addressed. See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010) (precedential). Appellants argue claims 10, 13, 14, and 19-21 as a group. App. Br. 7-11. We select claim 10 as the representative claim and claims 13, 14, and 19-21 stand or fall with claim 10. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). The Examiner found that Fanzutti teaches all of 2 In the Office Action mailed Dec. 10, 2009, the Examiner rejected claims 13, 14, and 18 under 35 U.S.C. § 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. Final Rej. 2. The Examiner issued an Advisory Action mailed Mar. 1, 2010 entering an Amendment after final rejection. Appellants indicate that the Amendment moots the indefiniteness rejection. Reply Br. 1. The Examiner did not repeat the ground of rejection under 35 U.S.C. § 112, second paragraph in the Answer. Therefore, the Examiner appears to have withdrawn the rejection. Appeal 2011-000554 Application 10/587,224 4 the limitations of claim 10 except for (i) “the contact surfaces between the pipe and the heating rods [being] flat” (Ans. 4) and (ii) “the connecting pieces [being] made out of plastic” (Ans. 5). With respect to the first missing limitation, the Examiner found that Hufnagl teaches a beverage machine “wherein the contacting surface of the heating rod [7] is flattened and solder (24) forms a flat contact surface with the water transfer tube [6].” Ans. 5 (citing Hufnagl, col. 4, ll. 31-35, fig. 1). More particularly, the Examiner found that “the surface of the water pipe [6] . . . is . . . clearly flattened through the use of solder” such that “[t]he connection between the two elements [heating rod 7 and water transfer tube 6] is flat.” Ans. 9. The Examiner concluded that “it would have been obvious to one of ordinary skill in the art . . . to provide a flat contact surface between the pipe and heating rods, taught by Fanzutti . . . to maximize heat transfer.” Ans. 5. Appellants contend that Hufnagl teaches that the water tube 6 “retains a cylindrical shape” and that “no attempt [is made] to flatten the bottom surface of the water tube 6.” App. Br. 9. In particular, Appellants contend that it is insufficient that “some element interposed between the water pipe and the heating element forms a flat surface,” since “the claims recite that it is the water pipe itself that has a flattened contact surface.” Reply Br. 3. However, claim 10 recites “a water-guiding pipe that is thermally connected to two heating rods . . . by means of contact surfaces . . . wherein all of the contact surfaces of the pipe and the heating rods are flat.” Claims App’x. Accordingly, we agree with the Examiner that Hufnagl’s Figure 1 depicts a water-guiding pipe (tube 6) and heating rods (heater coil 7) with contact surfaces that are flat to thermally connect the water pipe to the heating rods. Appeal 2011-000554 Application 10/587,224 5 In other words, the tube 6 and solder 24 together form a flat contact surface in the final product of Hufnagl. Appellants’ attempt to distinguish the claimed subject matter from the prior art based on a feature that is not in the claim is not persuasive. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (Unclaimed features cannot impart patentability to claims); In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (Arguments must be commensurate in scope with the actual claim language).3 Appellants further contend that “[n]o portion of Hufnagl, including the drawings, indicates that the solder [24] used to connect Hufnagl’s water tube 6 to the heating element 3 forms a flat surface.” Reply Br. 2. The ultimate question of patentability is one of law. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Nevertheless, the ultimate legal issue must be decided on the basis of underlying factual findings. The Examiner must prove sufficient facts to support the conclusion of obviousness by a preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985). In order to satisfy this standard, the evidence must demonstrate that it is more likely than not that the alleged facts are actually true. See Bosies v. Benedict, 27 F.3d 539, 542 (Fed. Cir. 1994)(the preponderance of the evidence standard requires the finder of fact to believe that the existence of a fact is more probable than its nonexistence). The Examiner points to Figure 3 We have also considered Appellants’ contention that the Examiner may be interpreting the claims to require that only the contact surface of the heating element be flattened. Reply Br. 3. However, we are not convinced that the Examiner improperly interpreted the claims in such a manner. Rather, as described hereinabove, the Examiner appears to have interpreted the claims to require the contact surfaces that thermally connect the water pipe to the heating rods are flat. Appeal 2011-000554 Application 10/587,224 6 1 of Hufnagl as supporting the solder 24 forming a flat contact surface. Ans. 5. Figure 1 of Hufnagl illustrates flattened upper side 14 of heater coil 7 of heating element 3 joined to the underside 13 of water tube 6 by solder 24 without any gaps between solder 24 and flattened upper side 14 of heater coil 7. Hufnagl, fig. 1. Hufnagl also describes that soldering “establish[es] a good thermal conduction from the heating element 3 to the tube 6.” Hufnagl, col. 4, ll. 31-35; see also Ans. 5. Based on the depiction of tube 6 and solder 24 in Figure 1 of Hufnagl and the accompanying description at column 4, lines 31-35, we find that tube 6 together with solder 24 more likely than not forms a flat contact surface for thermally connecting the water tube 6 to the heater coil 7 and, thus, supports the Examiner’s finding upon which the Examiner’s obviousness rejection is based. With respect to the second missing limitation, the Examiner found that Green teaches “a connector piece (185, figure 1) of a hot beverage machine (100, figure 1) made of plastic.” Ans. 5 (citing Green, para. [0025]). The Examiner further found that “[t]he use of plastics in high temperature applications is well known in this art” and that “Green also teaches other components and connectors subjected to heat from heating elements made out of plastic.” Ans. 10 (citing Green, para. [0031] (“The nozzle body 240 [through which steam inlet 290 may pass] may be made of stainless steel, aluminum, plastic, or any other substantially non-corrosive material”)). The Examiner concluded that “it would have been obvious to one of ordinary skill in the art at the time of invention to utilize connecting pieces, taught by Fanzutti et al[.], as modified by Hufnagl et al[.], made of plastic,” because “[p]lastic is an economical, flexible, high temperature Appeal 2011-000554 Application 10/587,224 7 resistant, and non-corrosive option for connecting pieces of coffee machines.” Ans. 5. Appellants contend that the Examiner-identified hose connector 185 “is not subjected to any significant heat, such as from a heating element” and that “one of ordinary skill in the art would not install such a plastic connector closely adjacent to any heating elements for fear that the heating elements would melt or significantly damage the plastic connector.” App. Br. 10. However, Appellants do not provide persuasive evidence or reasoning as to why the Examiner’s conclusion that it would have been obvious to make the connecting pieces of Fanzutti out of plastic as taught by Green, based on the Examiner’s finding that nozzle body 240 of Green is made of plastic and may be subjected to heat, is incorrect. For the foregoing reasons, we find that the Examiner did not err in concluding that the subject matter of claim 10 would have been obvious from the combination of Fanzutti, Hufnagl, and Green, and we sustain the rejection of claims 10, 13, 14, and 19-21 under 35 U.S.C. § 103(a). Claims 18 and 23 Claims 18 and 23 each recite that the coffee machine “further compris[es] holders provided on the securing means, the holders being configured to receive additional components of the coffee machine.” Claims App’x. The Examiner found that Fanzutti taught flexible tube connecting pieces 132, 134 and components 120, 122 for securing the continuous heater on a housing of the coffee machine and that “protrusions from 120, 122 or connecting pieces themselves” comprise the recited holders on the securing means. Ans. 4. Appeal 2011-000554 Application 10/587,224 8 Appellants contend that “[n]one of the references disclose or suggest that holders are provided on any securing means which are part of flexible tube connecting pieces.” App. Br. 12. We agree with Appellants that the Examiner has not identified in the prior art the claimed element of holders provided on the securing means “wherein the [hose-like flexible tube] connecting pieces are made of plastic and comprise securing means” as recited in parent claim 10. Claims App’x. The Examiner has identified the entire connecting pieces themselves as the claimed “holders,” rather than identifying an element provided on the connecting pieces to be the holders. In other words, the Examiner has not adequately explained how the prior art connecting pieces comprise both the securing means and the holder provided on the securing means. The Examiner’s alternative reference to the protrusions on sleeves 120, 122 as the claimed holders fails to take into account the requirement of parent claim 10 that the hose-like flexible tube connection pieces comprise securing means, as the Examiner does not find that sleeves 120, 122 comprise flexible tube connection pieces. For the foregoing reasons, we find that the Examiner erred in concluding that the subject matter of claims 18 and 23 would have been obvious from the combination of Fanzutti, Hufnagl, and Green, and we do not sustain the rejection of claims 18 and 23 under 35 U.S.C. § 103(a). Rejection of claims 16 and 22 under 35 U.S.C. § 103(a) as unpatentable over Fanzutti, Hufnagl, Green, and Buzzi Claims 16 and 22 depend directly from claim 10 or 19. Appellants’ arguments in support of the patentability of claims 16 and 20 solely relate to the perceived deficiencies in the combined teachings of Fanzutti, Hufnagl, and Green. App. Br. 12-13. Since we have found no such deficiencies in Appeal 2011-000554 Application 10/587,224 9 the combination of Fanzutti, Hufnagl, and Green, we find that the Examiner did not err in concluding that the subject matter of claims 16 and 22 would have been obvious from the combination of Fanzutti, Hufnagl, Green, and Buzzi, and we sustain the rejection of claims 16 and 22 under § 103(a). DECISION The Examiner’s rejections of claims 10, 13, 14, 16, and 19-22 under 35 U.S.C. § 103(a) is AFFIRMED. The Examiner’s rejection of claims 18 and 23 under 35 U.S.C. § 103(a) is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Klh Copy with citationCopy as parenthetical citation