Daniel Abegglen et al.

Patent Trials and Appeals Board

Aug 27, 2019

14009263 - (D) (P.T.A.B. Aug. 27, 2019)

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.
14/009,263 10/01/2013 Daniel Abegglen 3712036-01983 1068
29157 7590 08/27/2019
K&L Gates LLP-Chicago
P.O. Box 1135
Chicago, IL 60690
EXAMINER
KIM, BRYAN
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
08/27/2019 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL ABEGGLEN, AMAUD GERBAULET,
JEAN-FRANCOIS TINEMBART, and ALEXANDRE PERENTS
____________

Appeal 2018-001860
Application 14/009,263
Technology Center 1700
____________

Before KAREN M. HASTINGS, MONTÉ T. SQUIRE, and
JANE E. INGLESE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

1 In explaining our Decision, we refer to the Specification filed Oct. 1, 2013
(“Spec.”); Final Office Action dated Dec. 20, 2016 (“Final Act.”); Appeal
Brief filed June 12, 2017 (“Appeal Br.”); Examiner’s Answer filed Oct. 18,
2017 (“Ans.”); and Reply Brief filed Dec. 14, 2017 (“Reply Br.”).
Appeal 2018-001860
Application 14/009,263

2
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to finally reject claims 16 and 18–21.3 We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on July 30, 2019.4
We AFFIRM.
The Claimed Subject Matter
Appellants’ disclosure relates to a method and capsule kit for
preparing a beverage in a centrifugal brewing unit. Spec. 1; Abstract. Claim
16 is illustrative of the claimed subject matter on appeal and is reproduced
below from the Claims Appendix to the Appeal Brief:
16. A method for preparing a beverage in a centrifugal
brewing device, the method comprising:
using a kit comprising a capsule by feeding liquid
in the capsule and rotating the capsule along a central axis
to produce centrifugal forces on the liquid traversing the
capsule thereby forcing the beverage out of the capsule,
the capsule comprises containment walls forming a cup-
shaped body and a lid connected to the body forming a
main cavity of central axis containing beverage
ingredients, the kit comprising an insert comprising (1) a
cup-shaped portion comprising a cavity for receiving the
capsule in a removable manner, and (2) a ring-shaped
portion having an outer diameter larger than the largest
diameter of the capsule, and configured to form a valve
engaging portion engaging against a valve of the
centrifugal brewing device, the insert comprising a

2 Nestec S.A. is identified as the real party in interest. Appeal Br. 2.
3 Claims 1 and 5–15 are withdrawn (Final Act. 1) and claims 2–4 and 17 are
cancelled (see Index of Claims dated Dec. 20, 2016).
4 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
Appeal 2018-001860
Application 14/009,263

3
transversal annular or circular portion inwardly connected
to the ring-shaped portion, the ring-shaped portion
extending axially from the annular or circular portion at
a position at least above the annular or circular portion,
and above the lid of the capsule, and the capsule
configured to fit into a capsule holder of the device.
Appeal Br. 16 (key disputed claim language italicized and bolded).
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Levin US 2009/0101022 A1 Apr. 23, 2009
Yoakim et al. (“Yoakim”) US 2011/0052761 A1 Mar. 3, 2011
Fu et al. (“Fu”) US 2011/0073607 A1 Mar. 31, 2011
Veerbeek US 8,220,382 B2 July 17, 2012
The Rejections
On appeal, the Examiner maintains (Ans. 2) the following rejections:5
1. Claims 16, 18, 19, and 21 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Yoakim in view of Fu
(“Rejection 1”). Ans. 2.
2. Claim 20 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Yoakim in view Fu as applied to claims 16, 18, 19, and 21
above, and further in view of Levin and Veerbeek (“Rejection 2”). Ans. 4.

5 The Examiner’s indefiniteness rejection of claim 21 under pre-AIA
35 U.S.C. § 112, second paragraph (Final Act. 2) is withdrawn by the
Examiner at page 5 of the Answer.
Appeal 2018-001860
Application 14/009,263

4
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and reasoning set forth in the Answer
and Final Office Action, which we adopt as our own. We add the following.
Rejection 1
Appellants present arguments for the patentability of claim 16, but do
not separately argue claims 18, 19, and 21. Appeal Br. 7, 11. We select
claim 16 as representative and claims 18, 19, and 21 stand or fall with claim
16. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Yoakim and Fu
suggests a method for preparing a beverage in a centrifugal brewing device
satisfying all of the steps of claim 16 and, thus, concludes the combination
would have rendered the claim obvious. Ans. 2–4 (citing Yoakim, Abstract,
¶¶ 6, 54, 55, 57, Figs. 1, 2, 4, 5; Fu ¶¶ 3, 23, 25, 36, Fig. 1).
Appellants argue that the Examiner’s rejection should be reversed
because “the skilled artisan would not have modified Yoakim in view of Fu
to arrive at independent Claim 16 as proposed by the Examiner.” Appeal
Br. 7. Rather, Appellants contend that modifying the lid and capsule of
Yoakim to arrive at the claimed cup portion of the insert, which includes a
cavity for receiving the capsule in a removable manner, would change the
principle of operation of Yoakim. Id. at 8. In particular, Appellants contend
that because the top upper wall 4 of Yoakim is connected to the free rim of
the body by a seal such as a heat or ultrasonic weld line, one of skill in the
art would understand that this weld is a permanent fixture, such that the top
Appeal 2018-001860
Application 14/009,263

5
upper wall is permanently adhered to the free rim of the body. Id. at 7–8
(citing Yoakim ¶ 57, Fig. 4).
Appellants further argue that Yoakim fails to teach or suggest “an
insert comprising (1) a cup-shaped portion comprising a cavity for receiving
the capsule in a removable manner . . . and (2) a ring-shaped portion having
an outer diameter larger than the largest diameter of the capsule,” as recited
in the claim. Id. at 8–9. In particular, Appellants contend “Yoakim cannot
teach or suggest that any alleged ring-shaped portion has an outer diameter
larger than the largest diameter of the capsule because Yoakim does not
teach both an insert and a capsule.” Id. at 9.
Appellants also argue Yoakim fails to teach or suggest “the
ring-shaped portion extending . . . above the lid of the capsule” recitation of
the claim. Appeal Br. 9. In particular, Appellants argue
there is no teaching in Yoakim to suggest to one of skill in
the art any motivation to modify the capsule of Yoakim
(which is welded shut), to arrive at the claimed insert
which requires that the insert comprises a ring-shaped
portion that extends above the lid of the capsule because
Yoakim fails to teach or suggest any second capsule, let
alone a second capsule such that any alleged insert would
have a ring-shaped portion that extends above the lid of
the second capsule.
Id. at 9.
Lastly, Appellants argue Fu does not remedy the deficiencies in
Yoakim’s disclosure. Id. at 9. Appellants contend “Fu is entirely silent with
regards to centrifugal brewing units” and instead, “is entirely directed to drip
brewing, which relies on different properties and extraction methods than
centrifugal brewing.” Id. at 10. Appellants further contend “[t]here is no
teaching or suggestion in the references that the disclosures in Fu for a
Appeal 2018-001860
Application 14/009,263

6
centrifugal brewing system would be applicable to a drip brewing system.”
Id. at 10; see also Reply Br. 2 (same).
Appellants also contend
Fu is not at all concerned with “maintaining a sufficient
gradient of pressure in the capsule” because Fu is instead
entirely directed towards pressure-less brewing utilizing
merely the force of gravity to extract the liquid from the
capsule.
Appeal Br. 11.
We do not find Appellants’ arguments persuasive of reversible error
in the Examiner’s rejection. On the record before us, we find that a
preponderance of the evidence and sound technical reasoning support the
Examiner’s analysis and determination (Ans. 2–7) that the combination of
Yoakim and Fu suggests all of the steps of claim 16, and conclusion that the
combination would have rendered the claim obvious. Yoakim, Abstract,
¶¶ 6, 54, 55, 57, Figs. 1, 2, 4, 5; Fu ¶¶ 3, 23, 25, 36, Fig. 1.
The Examiner also provides a reasonable basis, which is supported by
a preponderance of the evidence in this appeal record, to evince why one of
ordinary skill would have combined teachings of Yoakim and Fu to arrive at
the claimed method. Ans. 3–4. See also KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 420 (2007) (explaining that any need or problem known in the art
can provide a reason for combining the elements in the manner claimed).
Appellants fail to direct us to sufficient evidence or provide an
adequate technical explanation to establish why the Examiner’s articulated
reasoning for why one of ordinary skill would have arrived at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error. Appellants’ disagreement as to the Examiner’s factual
findings and reasoning for combining the references, without more, is
Appeal 2018-001860
Application 14/009,263

7
insufficient to establish reversible error. Cf. SmithKline Beecham Corp. v.
Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of
disagreement . . . as to the existence of factual disputes do not amount to a
developed argument.”).
Appellants’ argument that modifying the lid and capsule of Yoakim to
include a cavity for receiving the capsule in a removable manner would
change the principle of operation of Yoakim (Appeal Br. 7–8) is not
persuasive because it is conclusory and Appellants do not identify
persuasive evidence in the record to support it. In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984); see also In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997) (explaining that mere lawyer’s arguments or conclusory
statements, which are unsupported by concrete factual evidence, are entitled
to little probative value).
Moreover, as the Examiner finds (Ans. 5) and contrary to what
Appellants argue (Appeal Br. 7–8), Yoakim teaches that the top upper wall 4
can be perforated, i.e., is “perforable.” Yoakim ¶ 51 (“The upper wall can
be a perforable membrane, a porous wall or . . . combinations thereof.”).
Thus, as the Examiner explains (Ans. 5), one of ordinary skill would have
reasonably expected the upper wall to be capable of being torn around its
circumference, i.e., capable of being removed via the perforated edges and
allowing access to the contents inside, and therefore would have considered
the component to be “removable,” and not necessarily a permanent fixture,
as Appellants argue. As the Examiner correctly points out (Ans. 5), claim
16 also does not positively recite a step of removing the capsule from the
insert.
Appeal 2018-001860
Application 14/009,263

8
Appellants’ arguments at pages 8–11 of the Appeal Brief regarding
what Appellants contend Yoakim and Fu each fails to teach or suggest are
not persuasive of reversible error because Appellants attack the references
individually rather than the combined teachings of the prior art as a whole.
One cannot show non-obviousness by attacking references individually
where the rejection is based on a combination of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). Appellants’ contentions in this regard are
premised on what Appellants contend the Yoakim and Fu reference each
teaches individually, and not the combined teachings of the cited references
as a whole and what the combined teachings would have suggested to one of
ordinary skill in the art.
The Examiner’s rejection, on the other hand, is based on the combined
teachings of Yoakim and Fu and what the combined teachings would have
suggested to one of ordinary skill in the art. In particular, as the Examiner
finds (Ans. 6), Yoakim teaches a cup-shaped portion comprising a cavity
(Yoakim, Fig. 1 (item 2)) and Fu teaches the inner capsule (Fu, Fig. 4 (items
110, 400), ¶ 32). As the Examiner further finds (Ans. 6–7), the ring-shaped
portion of Yoakim’s insert, as modified based on Fu’s teachings, would have
a diameter larger than the largest diameter of the capsule and extend above
the lid of the capsule because the capsule would be inside the cavity of item
2 of Yoakim. Appellants’ arguments, without more, do not reveal reversible
error in the Examiner’s factual findings and analysis in this regard.
Appellants’ arguments are also misplaced because the Examiner’s
rejection is not based upon a bodily incorporation of Fu’s inner capsule into
Yoakim’s brewing device. “It is well established that a determination of
obviousness based on teachings from multiple references does not require an
Appeal 2018-001860
Application 14/009,263

9
actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012) (citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985)
(en banc)); see also Keller, 642 F.2d at 425 (“To justify combining reference
teachings in support of a rejection it is not necessary that a device shown in
one reference can be physically inserted into the device shown in the
other.”).
Appellants’ argument that Fu does not remedy the deficiencies in
Yoakim’s disclosure (Appeal Br. 9) is not persuasive because it is
conclusory (De Blauwe, 736 F.2d at 705) and, as previously discussed
above, based on what Appellants contend Fu teaches individually and not
the combined teachings of Yoakim and Fu as a whole (Keller, 642 F.2d
at 425).
We do not find Appellants’ contentions at pages 10–11 of the Appeal
Brief that the Fu reference is “entirely silent with regard to centrifugal
brewing” and “completely different” persuasive of reversible error in the
Examiner’s rejection based on the Examiner’s fact-finding and reasoning
provided at pages 3–4 and 7 of the Answer. In particular, we find a
preponderance of the evidence supports the Examiner’s findings that one of
ordinary skill would have had reason to combine the teachings of Fu and
Yoakim, in part, because (1) Fu is directed to beverage preparation capsules
and their uses, including their advantages (Fu, Abstract, ¶¶ 2–5, 18, 32, 36);
(2) Fu teaches capsules that are capable of being centrifuged (e.g., having
rotational symmetry) (id. at Figs. 1, 3); and (3) Fu does not teach away from
centrifugal brewing (see, e.g., Allergan, Inc. v. Apotex Inc., 754 F.3d 952,
964 (Fed. Cir. 2014) (explaining that “silence does not imply teaching
away”)).
Appeal 2018-001860
Application 14/009,263

10
Appellants’ contention that “Fu is not at all concerned with
‘maintaining a sufficient gradient of pressure in the capsule’” (Appeal Br.
11; Reply Br. 3) is equally unpersuasive because, in making an obviousness
determination, the prior art does not have to be concerned with or directed to
trying to solve the same problem in which the claimed invention is directed.
Indeed, the Supreme Court has stated that it is error to “look only to the
problem the patentee [or applicant] was trying to solve.” KSR, 550 U.S.
at 420. Moreover, as the Examiner finds (Ans. 7), both Fu and Yoakim are
analogous art because both references are from the same field of endeavor,
i.e., the field of beverage capsules/packages for brewing devices. See In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (setting forth the proper inquiry
for determining whether a reference is analogous art).
Accordingly, we affirm the Examiner’s rejection of claims 16, 18, 19,
and 21 under 35 U.S.C. § 103(a) as obvious over the combination of Yoakim
and Fu.
Rejection 2
Claim 20 depends from claim 16 and further recites:
wherein the containment walls of the capsule comprise a
central aperture oriented in direction of the central axis,
and the insert comprises a central tubular portion fitting in
the central aperture of the capsule.
Appeal Br. 16 (Claims Appendix).
The Examiner determines that the combination of Yoakim, Fu, Levin,
and Verbeek suggests a method for preparing a beverage in a centrifugal
brewing device satisfying all of the steps of claim 20 and, thus, concludes
the combination would have rendered the claim obvious. Ans. 4–5.
Appeal 2018-001860
Application 14/009,263

11
Appellants argue that the Examiner’s rejection of claim 20 should be
reversed for the same reasons presented and discussed above in response to
the Examiner’s rejection of claim 16. Appeal Br. 12. We do not find this
argument persuasive based on the fact-finding and for essentially the same
reasons discussed above in affirming the Examiner’s rejection of claim 16.
Appellants further argue that the Examiner’s rejection of claim 20
should be reversed because neither Levin nor Verbeek teaches or suggests
the “insert comprising (1) a cup-shaped portion comprising a cavity for
receiving the capsule in a removable manner” recitation of the claim.
Appeal Br. 12.
We do not find this argument persuasive because it is based on what
Appellants contend the Levin and Verbeek references each teaches
individually and not the combined teachings of the prior art as a whole and
what the combined teachings would have suggested to one of ordinary skill
in the art. Keller, 642 F.2d at 425. In particular, as previously discussed
above in affirming the Examiner’s Rejection 1, the Examiner relies on the
combination of Yoakim and Fu for teaching or suggesting the “insert
comprising (1) a cup-shaped portion comprising a cavity for receiving the
capsule in a removable manner” recitation of the claim. See Ans. 2–4, 6.
Appellants also argue that the Levin and Verbeek references each
“fails to teach or suggest any motivation to modify the teachings of Yoakim
and Fu to arrive at the present claims.” Appeal Br. 12–13. See also Reply
Br. 3–4 (arguing there is no motivation for one of ordinary skill to arrive at
the claimed invention). This argument is not persuasive of reversible error
because it is conclusory and unsupported by persuasive evidence in the
record. De Blauwe, 736 F.2d at 705.
Appeal 2018-001860
Application 14/009,263

12
Moreover, on the record before us, we find that a preponderance of
the evidence and sound technical reasoning does support the Examiner’s
findings and determination (Ans. 4–8) that the combination of Yoakim, Fu,
Levin, and Verbeek suggests all of the steps of claim 20, and conclusion that
the combination would have rendered the claim obvious. Yoakim, Abstract,
¶¶ 4, 6, 54, 55, 57, Figs. 1, 2, 4, 5; Fu ¶¶ 3, 23, 25, 32, 36, Figs. 1, 3; Levin ¶
36, Fig. 5; Verbeek, Fig. 1.
Appellants’ contentions at pages 12–13 of the Appeal Brief and 3–4
of the Reply Brief, without more, are insufficient to rebut or otherwise show
reversible error in the Examiner factual findings and conclusion in this
regard.
Accordingly, we affirm the Examiner’s rejection of claim 20 under
35 U.S.C. § 103(a) as obvious over the combination of Yoakim, Fu, Levin,
and Verbeek.
DECISION
The Examiner’s rejections of claims 16 and 18–21 are affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED