Ex Parte Karanikos et al

Board of Patent Appeals and Interferences

Oct 14, 2009

10658925 (B.P.A.I. Oct. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BASIL KARANIKOS and FREDRICK ROSSI
____________

Appeal 2009-003780
Application 10/658,925
Technology Center 1700
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Decided: October 14, 2009
____________

Before CHUNG K. PAK, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of our Decision of July 24, 2009
(“Decision”) wherein we sustained the Examiner's § 103 rejections of claims
1 through 7, 9 through 17 and 19 through 44.
In sustaining the Examiner’s 35 U.S.C. § 103 rejections above, we
stated at pages 12-13 of the Decision:
Appellants do not dispute the Examiner's finding that
Sylvan teaches a coffee filter cartridge identical to the beverage
filter cartridge recited in claims 1, 12, and 44, except for the
claimed pleats, flutes or corrugations on the side wall of the
filter employed.
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Application 10/658,925

Sylvan specifically mentions employing a filter having a
generally truncated cone shape or a truncated triangular prism
(identical or similar to a fan shape) in its coffee filter cartridge.
However, it is not limited to a filter having such a shape. It
teaches that its filter can be in any predetermined
shape useful for its coffee filter cartridge.
Spiteri teaches a filter having a predetermined shape, i.e.,
a fan-shaped filter comprising a side wall having folds and
pleats (corresponding to the claimed pleats, flutes or
corrugations on the side walls of filters) for a conventional
coffee brewer. Spiteri teaches adding folds and pleats to the
side wall of a fan-shaped filter useful for any conventional
coffee brewers, inclusive of those taught by Sylvan. The pleated
fan-shaped filter, according to Spiteri, requires adding an
additional amount of the filter material (area) to a conventional
fan shape filter. In other words, adding folds and pleats to
the conventional fan-shaped filter provides a more effective
filtering area (thus allowing a higher liquid flow rate as required
by Sylvan). Appellants do not dispute that pleats and folds in a
conventional filter enlarges or increases an effective filtering
area.
Spiteri also teaches that the filter can be geometrically
configured in size dimensions appropriate for the interior of
conventional coffee brewers. Implicit in this teaching of Spiteri
is that one of ordinary skill in the art can geometrically
configure its filter to a desired size dimension appropriate for
a given filter cartridge, including the one required by Sylvan.
Sylvan teaches that for its particular coffee filter cartridge, the
filter employed must be configured to maintain a substantial
space between the filter and the interior wall of the cartridge
(even when the filter is wetted) for the purpose of enhancing a
filtering rate.
Further, Spiteri teaches that rigid properties can be added
to a paper filter by means of folding and pleating the paper filter
and when at least minimum of four folds are added, they act as
a supporting member. More importantly, however, Sylvan
teaches that for its particular coffee brewer system, using an
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appropriate material in constructing its filter is important in
imparting a desired rigidity. Specifically, Sylvan teaches using
a material, such as a light-weight two-phase heat sealable
paper of cellulosic and synthetic fibers, to make a totally self
supporting filter which will not collapse or sag against the
inner walls of the cartridge, when wet. [(Emphasis added.)]
Appellants contend at pages 1 through 4 of the Request for Rehearing
that the Board erred in finding that:
1) Spiteri teaches employing a fluted or pleated filter (a fan shaped
filter) in any conventional coffee brewers (Decision, FF 12);
2) “Sylvan is not limited to employing a filter having a generally
truncated cone shape or a truncated triangular prism (identical or similar to a
fan shape) in its coffee filter cartridge; it teaches that its filter can be in any
predetermined shape useful for its coffee filter cartridge (col. 2, ll. 8-16 and
col. 3, ll. 13-15)” (Decision, FF 5) (emphasis added); and
3) “Sylvan desires a filtering system useful for providing a high flow
rate (col. 1, ll. 43-45)” (Decision FF. 4).
We have reviewed our Decision in light of these contentions presented
by Appellants. However, we are not persuaded that our Decision contains
any reversible or harmful error. We address each of Appellants’
contentions below.
First, contrary to Appellants’ contention, Spiteri does not teach that its
filter is useful for only gravity-type drip brewing. Spiteri teaches at
paragraph 0001 that:
[Its] invention relates to filtration devices, and more
particularly to a home brewing by filtering product through a
permeable porous paper [i.e., a filter,] capable of brewing a
number of cups of infusing beverages.

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Spiteri further teaches at paragraph 0021 that:
Referring now to the drawings and in particular to FIG.
1[,] [t]here is shown a top view of a partially folded filter
generally designated 10. The filter of a fan shaped
configuration, having a top opening 12, a bottom edge 14, a
continuously formed arcuate edge 16, … folds 18a, 18b, 18c
and 18d…. The filter 10 is geometrically configured in size
dimension and configuration to be received within the interior
or a convention coffee brewer means such as an electric drip
brewer.

Although Spiteri exemplifies an electric drip brewer, its teaching is not
limited to drip brewer means. See Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989)(quoting In re Lamberti, 545 F.2d 747, 750
(CCPA 1976)(“[T]he fact that a specific [embodiment] is taught to be
preferred is not controlling, since all disclosures of the prior art, including
unpreferred embodiments, must be considered.”); In re Fracalossi, 681 F.2d
792, 794 n.1 (CCPA 1982)(A prior art reference’s disclosure is not limited
to its examples.). It broadly refers to a fan shaped filter useful for filtration
devices in general and “conventional coffee brewer means” in particular.
Consistent with such a broad disclosure, Spiteri further teaches that the filter
can be geometrically configured in size dimension consistent with the
configuration of the filter receiving interior or a conventional coffee brewer
means. Accordingly, we find no error in our finding at page 12 of our
Decision that “Spiteri teaches…any conventional coffee brewers, inclusive
of those [conventional coffee brewers] taught by Sylvan.” Appellants have
not disputed that Sylvan’s coffee brewers are conventional coffee brewers.
In any event, Appellants’ argument does not identify any reversible or
harmful error in the Decision. As is apparent from our analysis at pages 12
and 13 of the Decision, we found that Spiteri teaches adding folds and pleats
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known for increasing an effective filtering area to a fan-shaped filter which
is structurally similar to the shape of Sylvan’s filter, e.g., a generally
truncated cone shape or a truncated triangular prism. More importantly, as
indicated at page 15 of the Decision,
Since Appellants do not dispute that the addition of flutes or
pleats in a conventional filter is known to increase the
effective filtering area, Sylvan's desire for a high flow rate
would have led one of ordinary skill in the art to employ flutes
or pleats in the side wall of the filter used in Sylvan's coffee
filter cartridge.
Thus, even if Spiteri does not teach adding flutes or pleats to a filter
useful for any conventional coffee brewers, one of ordinary skill in the art
would have been lured to employ flutes or pleats known for increasing an
effective filtering area on the side wall of the filter employed in Sylvan’s
beverage filter cartridge, motivated by a reasonable expectation of
successfully increasing an effective filtering area for the purpose of
obtaining a higher flow rate desired by Sylvan.
Second, Appellants correctly point out that column 2, lines 8-16, of
Sylvan referred to in our finding states:
This invention features a beverage filter cartridge
including an impermeable pierceable base having a
predetermined shape and an opening at one end. There is a
self-supporting wettable filter element disposed in the base
sealingly engaged with the opening of the base and having a
form different and smaller than the predetermined shape of the
base so that the filter element diverges from the base and
divides the base into two sealed chambers.

Moreover, as acknowledged by Appellants, Sylvan, at column 3, lines 13-15,
discloses that “[t]he filter can have the shape of a cone, a truncated cone, or
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a triangular prism which fans out and blends into a circular base” (emphasis
added.). Consistent with the above description, we found at page 7 of the
Decision that “Sylvan is not limited to employing a filter having a generally
truncated cone shape or a truncated triangular prism (identical or similar to a
fan shape) in its coffee filter cartridge; it teaches that its filter can be in any
predetermined shape useful for its coffee filter cartridge” (emphasis added).
In other words, any predetermined filter shape useful for Sylvan’s coffee
filter cartridge is described as including those features discussed at column
2, lines 8 through 16, and column 3, lines 13 through 15, of Sylvan as is
apparent from the Relevant Findings of Fact section located at pages 5
through 7 of the Decision. Moreover, as is apparent from our analysis at
page 12 of the Decision, any predetermined filter shape useful for Sylvan’s
coffee filter cartridge requires, among other things, that
the filter employed must be configured to maintain a substantial
space between the filter and the interior wall of the cartridge
(even when the filter is wetted) for the purpose of enhancing a
filtering rate.
This requirement is consistent with the above description at column 2,
lines 8-16 and column 3, lines 13 through 15 of Sylvan. In fact, such
description is necessary to support our finding at page 12 of the Decision
that Sylvan’s coffee filter cartridge is identical to the beverage filter
cartridge recited in claims 1, 12, and 44, except for the claimed pleats, flutes
or corrugations on the side wall of the filter employed. Thus, we find no
error in our finding at page 7 of the Decision that “Sylvan… teaches that its
filter can be in any predetermined shape useful for its coffee filter cartridge
(col. 2. ll. 8-16 and col. 3, ll. 13-15)” (emphasis added).
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Even if our finding is read in vacuum and is treated as an error,
Appellants still have not identified any reversible or harmful error in the
Decision. As stated at page 12 of the Decision:
Appellants do not dispute the Examiner's finding that
Sylvan teaches a coffee filter cartridge identical to the beverage
filter cartridge recited in claims 1, 12, and 44, except for the
claimed pleats, flutes or corrugations on the side wall of the
filter employed.
Sylvan specifically mentions employing a filter having a
generally truncated cone shape or a truncated triangular prism
(identical or similar to a fan shape) in its coffee filter cartridge.
[(Emphasis added.)]
In addition, we found that Spiteri teaches adding folds and pleats
known for increasing an effective filtering area to a fan-shaped filter which
is structurally similar to the shape of Sylvan’s filter, e.g., a generally
truncated cone shape or a truncated triangular prism. More importantly, as
indicated at page 15 of the Decision,
Since Appellants do not dispute that the addition of flutes or
pleats in a conventional filter is known to increase the
effective filtering area, Sylvan's desire for a high flow rate
would have led one of ordinary skill in the art to employ flutes
or pleats in the side wall of the filter used in Sylvan's coffee
filter cartridge.
Thus, regardless of the status of the alleged error in our finding
directed to the language “any predetermine [filter] shape useful for
[Sylvan’s] filter cartridge” at page 12 of the Decision, one of ordinary skill
in the art would have been lured to employ flutes or pleats known for
increasing an effective filtering area on the side wall of the filter employed
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in Sylvan’s beverage filter cartridge, motivated by a reasonable expectation
of successfully increasing an effective filtering area for the purpose of
obtaining a higher flow rate desired by Sylvan.
Finally, contrary to Appellants’ contention, Sylvan teaches the
desirability of increasing a liquid flow rate (a filtration rate). Sylvan, at
column 1, lines 13 through 45, discusses a slow filtration rate as one of the
shortcomings of conventional beverage or coffee brewers employing
beverage filter cartridges and indicates one of its objects as obtaining a high
flow rate (a high filtration rate). Thus, we find no reversible or harmful
error in stating at page 15 of the Decision that:
Since Appellants do not dispute that the addition of flutes or
pleats in a conventional filter is known to increase the
effective filtering area, Sylvan's desire for a high flow rate
would have led one of ordinary skill in the art to employ flutes
or pleats in the side wall of the filter used in Sylvan's coffee
filter cartridge.
In reaching this determination, we have considered Appellants’
statement at page 4 of the Request for Rehearing provided below:
[O]ne of [ordinary] skill in the art would have understood that
increasing the filter area and flow rate of a Sylvan cartridge
would reduce the contact time between the brew water and the
coffee, reducing the strength of the coffee beverage produced.
However, this admitted knowledge of one of ordinary skill in the art does
not indicate that one of ordinary skill in the art would have been led away
from employing flutes or pleats in the side wall of the filter used in Sylvan’s
coffee filter cartridge. Rather, it indicates that one of ordinary skill in the art
would have been led to employ the optimum number of flutes or pleats in
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the side wall of the filter used (to provide an optimum effective filtering
area) in a given coffee filter cartridge, motivated by a desire to obtain
various desired strengths of the coffee beverages consistent with the desired
tastes of consumers. In re Boesch, 617 F.2d 272, 276 (CCPA
1980)(“[D]iscovery of an optimum value of a result effective variable . . . is
ordinarily within the skill of the art.”); In re Aller, 220 F.2d 454, 456
(CCPA 1955)(“[W]here the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation.”). On this record, Appellants have not provided
any objective evidence to show that the addition of flutes or pleats known
for increasing an effective filtering area in the side wall of the filter used in
Sylvan’s coffee filter cartridge is not desirable.
In conclusion, based on the foregoing, we have granted Appellants’
request to the extent that we have reconsidered our Decision, but we deny
Appellants’ request to make any change therein.
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)(v).

DENIED
tc

WOLF GREENFIELD
600 ATLANTIC AVENUE
BOSTON, MA 02110

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