Koninklijke Douwe Egberts B.V.

Patent Trials and Appeals Board

Mar 12, 2020

15179436 - (D) (P.T.A.B. Mar. 12, 2020)

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.
15/179,436 06/10/2016 Roger Geoffrey Tanner 29610-138811-US 2745
22242 7590 03/12/2020
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 2100
CHICAGO, IL 60603-3406
EXAMINER
ISKRA, JOSEPH W
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
03/12/2020 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 ROGER GEOFFREY TANNER and
PAUL ADRIAN SAXTON
___________________

Appeal 2019-005167
Application 15/179,436
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2019-005167
Application 15/179,436

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 14–19. Final Act. 2–8. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to beverage machines and to
beverage cartridges used in such machines. Spec. 1.
Claims 14 and 19 are independent. We reproduce claim 14 below.
14. A cartridge for use in a beverage preparation machine, the
cartridge comprising:
a quantity of one or more beverage ingredients,
a lower surface of the cartridge comprising an inlet and
an outlet arranged to communicate respectively with an inlet
and an outlet of a delivery head of the beverage preparation
machine when the cartridge is inserted into the machine such
that, in use, water from the inlet of the delivery head passes
upwardly through the inlet of the cartridge and such that
beverage produced from the water and the one or more
beverage ingredients passes downwardly through the outlet of
the cartridge to flow out of the outlet of the delivery head,
the lower surface of the cartridge further comprising a
barcode which, in use, is readable by a barcode reader of the
beverage preparation machine for controlling operation of the
beverage preparation machine,

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Koninklijke Douwe Egberts B.V. Appeal Br. 3.
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Application 15/179,436

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wherein the barcode, the inlet and the outlet of the
cartridge are located in a straight line with the outlet being
intermediate the inlet and the barcode,
wherein the barcode includes a pair of opposing sides
that extend parallel to the straight line.

REJECTIONS
I. Claims 14–18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Halliday and Gagne.2 Final Act. 2–5.
II. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Halliday, Gagne, and Kollep.3 Final Act. 5–8.

ANALYSIS

I. Obviousness over Halliday and Gagne4
The dispositive issue with regard to the rejection of independent claim
14 relates to the requirement that “the barcode, the inlet and the outlet of the
cartridge are located in a straight line with the outlet being intermediate the
inlet and the barcode.”
The Examiner found that Halliday discloses cartridge 1 for a beverage
preparation machine. Final Act. 2. The lower surface of cartridge 1 has

2 Halliday et al. (US 2004/0191370 A1, published Sept. 30, 2004); Gagne et
al. (US 2006/0226228 A1, published Oct. 12, 2006).

3 Kollep et al. (US 6,857,353 B2, issued Feb. 22, 2005).

4 We limit our discussion to independent claim 14 because Appellant argues
these claims as a group. See Appeal. Br. 13–17; Reply Br. 5–8; 37 C.F.R.
§ 41.37(c)(1)(iv) (2018).

Appeal 2019-005167
Application 15/179,436

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inlet 121, outlet 122, and barcode 320. Halliday ¶¶ 72, 173; Figs. 1, 11, 45.
The Examiner acknowledges that Halliday’s inlet, outlet, and barcode are
not in a straight line with the outlet being intermediate the inlet and the
barcode as required by independent claim 14. Final Act. 2; see also
Halliday, Fig. 45. The Examiner provides two reasons for modifying
Halliday so that the barcode, the inlet, and the outlet are in a straight line
with the outlet intermediate the inlet and barcode.
First, the Examiner reasons that the modification would be “an
obvious rearrangement of parts to optimize the locations of each of the
respective corresponding components of the beverage preparation machine
and thereby reduce costs due to engineering optimization.” Final Act. 3–4
(citing In re Japikse, 181 F.2d 1019, 1023 (CCPA 1950)). However, the
Examiner has not convincingly explained how locating the barcode, the
inlet, and the outlet in a straight line would have reduced any cost associated
with Halliday’s beverage preparation machine. Absent a reduction in cost,
the Examiner has not adequately explained what feature or parameter one of
ordinary skill in the art might have optimized by aligning the barcode, the
inlet, and the outlet. See Reply Br. 7 (arguing that the Examiner’s reasoning
is circular in that is suggests optimizing to optimize).
Further, the Examiner’s citation of In re Japikse does not adequately
support the proposed modification. See Final Act. 4; Ans. 5. As Appellant
points out, the beverage preparation machine described by Halliday would
have required substantial redesign in order to locate the barcode, the inlet,
and the outlet on a straight line. Reply Br. 5–6. Even assuming that one of
ordinary skill in the art would have been capable of redesigning Halliday’s
machine to satisfy the limitation, the Examiner has not excluded the
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possibility that the redesign would have modified the operation of the
device. See In re Japikse, 181 F.2d at 1023. As such, the facts of Japikse do
not match those of the present appeal.
Second, the Examiner reasons that the proposed modification would
have been obvious because of the “limited number of orientations possible
between the three objects [the inlet, the outlet, and the barcode].” Final
Act. 3; Ans. 5. We agree with Appellant that the Examiner has not
adequately explained why only a finite subset of such orientations might
have been suitable. Reply Br. 7–8. For example, the inlet, outlet, and
barcode could have been placed anywhere on the cartridge (not necessarily
even on the same side). Id.
Gagne, which describes a hand-held bar code reader, does not remedy
this deficiency. Gagne ¶ 26; see also Final Act. 3 (acknowledging that
Gagne does not disclose the claimed orientation between the inlet, outlet,
and barcode).
Therefore, we are not persuaded that one of skill in the art would have
combined the teachings of Halliday and Gagne to result in a cartridge
“wherein the barcode, the inlet and the outlet of the cartridge are located in a
straight line with the outlet being intermediate the inlet and the barcode,” as
recited in independent claim 14. We do not sustain the rejection of claims
14–18 under 35 U.S.C. § 103(a) as unpatentable over Halliday and Gagne.

II. Obviousness over Halliday, Gagne, and Kollep
The Examiner concludes that the subject matter of independent claim
19 would have been obvious from the combined teachings of Halliday,
Gagne, and Kollep. Final Act. 5–8.
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Claim 19 is a method claim using a cartridge in which “the inlet, the
outlet and the barcode [are] located in a straight line.” Because claim 19
defines the method both in terms of the method steps and in terms of the
structure of the cartridge from which the beverage is dispensed, the location
of the inlet, the outlet, and the barcode in a straight line is a limitation of
claim 19. In re Stencel, 828 F.2d 751, 754–55 (Fed. Cir. 1987). As
discussed earlier, Halliday and Gagne would not have taught or suggested
this limitation. Kollep, which describes a cartridge ejector for a beverage
machine, would not have remedied this deficiency in the combined teachings
of Halliday and Gagne. We do not sustain the rejection of claim 19 under 35
U.S.C. § 103(a) as unpatentable over Halliday, Gagne, and Kollep.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
14–18 103(a) Halliday, Gagne 14–18
19 103(a) Halliday, Gagne,
Kollep
19
Overall
Outcome
14–19

REVERSED