Ex Parte Kirschner et al

Board of Patent Appeals and Interferences

Jun 28, 2012

10908880 (B.P.A.I. Jun. 28, 2012)

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.
10/908,880 05/31/2005 Jonathan Kirschner 25040-1316 5880
29052 7590 06/28/2012
SUTHERLAND ASBILL & BRENNAN LLP
999 PEACHTREE STREET, N.E.
ATLANTA, GA 30309
EXAMINER
ALEXANDER, REGINALD
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
06/28/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte JONATHAN KIRSCHNER,
CHARLES BRADLEY GREEN, and
MICHAEL ALAN MASTERS
____________________

Appeal 2010-003080
Application 10/908,880
Technology Center 3700
____________________

Before: EDWARD A. BROWN, MICHAEL L. HOELTER, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003080
Application 10/908,880

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
20-28, 31, and 33-39. Claims 1-19 and 29 have been cancelled. Claims 30
and 32 have been withdrawn in response to a restriction requirement. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claimed subject matter is directed to a dispenser for the automatic
brewing of coffee or tea. Spec. 1, ¶ 1. The dispenser comprises a pod that
contains the coffee or tea, and that has a “lip” extending from its body; a pod
holder that supports the pod; and an “injection head” that provides
pressurized water to the pod. Id. at 1-3. Claim 20, reproduced below, is
illustrative of the claimed subject matter:
20. A dispenser for brewing a beverage from a beverage
material, comprising:
a pod with the beverage material therein;
said pod comprising a lid, a base, and a lip extending
from a body;
a pod holder;
said pod holder adapted to receive said pod therein such
that said pod is supported and contacted solely by said pod
holder and said lip of said pod; and
an injection head;
said injection head comprising about 136 to 160
kilograms (about 300 to 350 pounds) of force applied to said lip
of said pod.

Appeal 2010-003080
Application 10/908,880

3
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cortese ’394
Sylvan
Cortese ’161
US 5,634,394
US 5,840,189
US 5,855,161
Jun. 3, 1997
Nov. 24, 1998
Jan. 5, 1999

REJECTIONS
The Examiner made the following rejections:
Claim 33 stands rejected under 35 U.S.C §102(b) as being anticipated
by Sylvan. Ans. 3.
Claims 20-22, 24, 31 and 35-37 stand rejected under 35 U.S.C
§103(a) as being unpatentable over Sylvan. Ans. 3-5.
Claims 23, 25, 26, 28 and 34 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Sylvan and Cortese ’161. Ans. 4-5.
Claims 38 and 39 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Sylvan and Cortese '394. Ans. 5-6.

ANALYSIS
Claim 33 – Anticipation – Sylvan
As an initial matter we note that the version of claim 33 appearing in
Appellants’ Corrected Claims Appendix contains a typographical error that
Appellants acknowledge would prevent allowability. See App. Br. 7 (“The
Applicant recognizes that the correction of the typographical error in the
sixth line of the claim as requested in the Response of May 6, 2008 needs to
be entered before the case is allowed.”); Reply Br. 6. The Examiner’s May
13, 2008 Advisory Action does not indicate whether the May 6, 2008 After-
Appeal 2010-003080
Application 10/908,880

4
Final Amendment has been entered. For the purposes of this appeal we
assume the Amendment has been entered and consider claim 33 as so
amended:
33. An apparatus for mixing a material, comprising:
a pod with the material therein;
said pod comprising a lid, a base, and a lip extending from a
body;
a pod holder;
said pod holder adapted to receive said pod therein such that
said pod is supported and contacted solely by said pod holder and said
lip of said pod; and
an injection head positioned about said pod holder.

The Examiner found that Sylvan discloses a dispenser for making a
beverage comprising a pod 12 with material 38 therein, the pod including a
lid 16, a base 12b and a lip 20 extending from a body 46 that includes an
attached needle 22, the pod holder adapted to receive the pod therein such
that the pod is supported solely by the pod holder and the lip of the pod; and
an injection head 48. Ans. 3; see Sylvan, Fig. 4, col 2, l. 66 – col. 4, l. 27.
Appellants dispute that Sylvan’s pod “is supported and contacted
solely by said pod holder and said lip of said pod.” App. Br. 6-7. They
point out that needle 22 also contacts the base 12b of the pod. Id.
Appellants assert that “[r]egardless of whether the needle 22 is part of the
pod holder, the needle 22 certainly is not in contact about the lip of the pod.”
Id. Appellants do not take a position on whether the needle 22 is part of the
pod holder. See App. Br. 6-7.
Appellants apparently read the limitation “said pod is supported and
contacted solely by said pod holder and said lip of said pod” as “said pod is
supported and contacted solely by said pod holder at said lip of said pod,”
Appeal 2010-003080
Application 10/908,880

5
replacing the “and” in the limitation with “at.” The limitation read in this
manner could very well mean that only the lip of the pod is supported and
contacted by the pod holder. But the limitation uses the word “and,” not
“at,” such that the pod is supported and contacted solely by said pod holder
and supported and contacted solely by said lip of said pod. As written, the
claim requires that the lip is part of the pod so that the pod would be
supported and contacted by a part of itself. Moreover, the Specification
expressly teaches that the pod holder is not the only dispenser component in
contact with the pod: the pod is also contacted by the injection head to
provide a watertight seal and to inject hot pressurized water into the pod.
Spec. 8, ¶ 42.
In any event, we decline Appellants’ invitation to read into the claim
the requirement that the pod holder must contact the pod only at the pod’s
lip, because that is not what the claim says. During prosecution, the PTO
gives claims their broadest reasonable interpretation consistent with the
specification. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004); see In re
Case, 215 F.3d 1351 (Fed. Cir. 1999) (affirming Board’s conclusion that
broadest reasonable interpretation of “from about 4% to about 14%”
limitation includes 15%). As our reviewing Court said in Bigio, “[t]he
broadest reasonable interpretation rule recognizes that before a patent is
granted the claims are readily amended as part of the examination process.
Thus, a patent applicant has the opportunity and responsibility to remove
any ambiguity in claim term meaning by amending the application.” Bigio,
381 F.3d at 1324 (internal citations and quotations omitted).

Appeal 2010-003080
Application 10/908,880

6
Claims 20-22, 24, 31 and 35-37 – Obviousness – Sylvan
Claims 20, 21, 24-26, and 35
In addition to the limitations found in claim 33, claims 201 and 35 also
require that “said injection head compris[e] about 136 to 160 kilograms
(about 300 to 350 pounds) of force applied to said lip of said pod.” Reply
Br. 4, 6. The Examiner acknowledged that Sylvan’s pod holder applies an
“unknown” force to the lip of the pod, but found that Sylvan teaches
applying sufficient pressure to form a watertight seal at the lip of the pod.
Ans. 4.
Appellants begin by raising the same argument as to claims 20 and 35
as they raised for claim 33, i.e., that Sylvan does not teach that the pod is
supported and contacted solely by the pod holder and the lip. For the
reasons stated above, we are not persuaded by this argument. It must also be
noted that Appellants’ construction of the term “said pod is supported and
contacted solely by the pod holder and the lip of said pod” is particularly
untenable as applied to claims 20 and 35, both of which require not only the
pod holder but also the injection head to contact the lip of the pod.
Appellants also argue that claims 20 and 35 are nonobvious over
Sylvan because “the claimed range does solve a number of stated problems,”
such as establishing a watertight seal, holding the cup in place, and avoiding
deforming the pod. App. Br. 8 (citing Spec. ¶¶ 57-59). We do not find this
argument persuasive. First, Appellants’ Specification does not teach that the
claimed range is critical to solving these problems. See 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

1 Appellants argue claims 21 and 24 together with claim 20. App. Br. 8.
Appeal 2010-003080
Application 10/908,880

7
workable ranges by routine experimentation.”); In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990) (where “the difference between the claimed
invention and the prior art is some range or other variable within the claims .
. . the applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range.”). For example, there is no teaching in the portion of the
Specification cited by Appellants that any force within the claimed range
must be applied to the lip of the pod to ensure a watertight seal when
subjecting the pod to the range of water pressures disclosed in the
Specification. Moreover, the Specification states (Spec. 14, ¶ 57) that the
claimed applied force “may” be used, indicating that it is not necessary or
critical to the claimed invention.
Second, we agree with the Examiner that Sylvan teaches applying
sufficient pressure on the lip of the pod to hold the pod in place and to
establish a watertight seal. See Sylvan, col. 4, ll. 16-27 (teaching that
cartridge 10 [pod] is “gripped” in a housing and is “sealingly engaged at seal
52” as pressurized hot water passes through the cartridge). Appellants have
not shown that it is beyond the skill of an ordinary artisan to discover the
optimum or workable range of applied force necessary to securely hold the
pod in place and maintain a watertight seal for any given water pressure to
which the pod may be exposed.2 We therefore sustain the rejection of

2 Appellants also argue that given Sylvan’s use of needles 42 and 22 to
inject pressurized hot water and remove the finished beverage, respectively,
there would be “no need to ensure a water tight seal about the lip of the
pod.” App. Br. 7-8. But Appellants provide no evidence in support of this
assertion. Moreover, as stated above, Sylvan teaches establishing a
watertight seal at the lip of the pod notwithstanding the use of needles 42
and 22.
Appeal 2010-003080
Application 10/908,880

8
claims 20, 21, 24 and 35.
Claim 22
Claim 22 depends from claim 20 and additionally requires that the
pod comprise “about five (5) to about eight (8) grams of a plastic material.”
Reply Br. 4. The Examiner found that the amount of plastic used in making
the pod is a matter of routine optimization and design choice, and that one
skilled in the art would be motivated to make the pod with as little plastic as
possible to keep costs low. Ans. 4, 7-8. Appellants respond that the lip is
designed to use as little plastic as possible while still being able to withstand
operational pressure without deforming. App. Br. 8 (citing Spec. ¶ 59). We
agree with the Examiner. Appellants have not shown that the claimed range
is critical or that it would be beyond ordinary skill to optimize the amount of
plastic needed to make a pod that is sufficiently strong while minimizing the
amount of material used.
Claims 31 and 37
Claim 31 depends from claim 22, and additionally recites “a rigid,
substantially nondeformable pod.” Reply Br. 6. Claim 37 depends from
claim 20 and likewise recites “a rigid pod.” Id. The Examiner noted that
“the term ‘rigid’ and the phrase ‘substantially non-deformable’ have
different degrees of rigidity or non-deformability.” Ans. 8. The Examiner
further found that Sylvan’s pod keeps its form when placed in the pod
holder, demonstrating some degree of rigidity. The Appellants argue that
Sylvan discloses a “yieldably pierceable” pod rather than a rigid,
substantially non-deformable pod. App. Br. 9.
We agree with the Examiner that claims 31 and 37 are obvious over
Sylvan. First, as noted by the Examiner, the claims do not specify under
Appeal 2010-003080
Application 10/908,880

9
what circumstances – i.e., over what ranges of pressures and/or temperatures
– the pod must be rigid or rigid and substantially nondeformable. As such
the claims do not exclude these properties at standard room pressure and
temperature. Second, Sylvan does describe a pod that is apparently rigid and
nondeformable under at least some circumstances despite being “yieldably
pierceable.” For example, Sylvan describes one object of the invention to be
“to provide an improved beverage filter cartridge [pod] which maintains its
integrity and that of the filter even when the cartridge is dually penetrated
for inflow and outflow.” Sylvan, col. 1, ll. 64-67. We sustain the rejection
of claims 31 and 37.

Claims 23, 25, 26, 28, and 34 – Obviousness – Sylvan and Cortese ’161
Claim 23
Claim 233 depends from claim 20, and additionally requires that the
dispenser comprise a “turret assembly” that in turn comprises the pod
holder. Reply Br. 4. The Examiner found that Cortese ’161 discloses a
turret for supporting multiple pods, and that it would have been obvious to
one skilled in the art to combine Sylvan’s pod holder with the turret
assembly taught in Cortese, to “provid[e] a continuous brewing operation
which allows for several cups of beverage to be brewed without having to
stop and change the pod.” Ans. 5. Appellants contend that needles 42 and
22 are fixed within Sylvan’s pod holder, and thus “[t]here is no way to have
a rotating turret if each pod holder has fixed injection needles therein.” App.
Br. 10. The Examiner disagrees, proffering one way in which needles 42
and 22 could be combined with a rotating turret (i.e., each pod holder would

3 Appellants do not separately argue the patentability of claims 25 and 26.
Appeal 2010-003080
Application 10/908,880

10
have its own lower needle 22, which would rotate along with its pod holder,
with the turret; a single upper needle 42 would be part of the injection head
assembly).
We believe that the Examiner has the better argument. First,
Appellants do not specifically address the Examiner’s proffered way of
combining Sylvan with Cortese ’161, much less allege that it would be
unworkable or beyond ordinary skill. Second, Appellants’ analysis is little
more than attorney argument, to which we ascribe little weight. See In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney's argument in a
brief cannot take the place of evidence.”). We therefore sustain the
Examiner’s rejection of claim 23.
Claims 28, 34
Claims 28 and 34 depend from claims 20 and 33, respectively, and
additionally require that the injection head provide water pressurized at
about 1.4 to 14 kilograms per square centimeter (about 20 to about 200
pounds per square inch) to the pod. Reply Br. 5-6. The Examiner found that
it was within ordinary skill to optimize the water pressure range. Ans. 5.
Appellants contend that the water pressure “must be sufficient for the fluid
to spread out over the lid of the pod and penetrate the apertures and the
brewing material.” App. Br. 10 (citing Spec. ¶ 58).
We do not find the Appellants’ argument to be persuasive. First, as
the Examiner noted, neither claim specifically requires apertures over which
pressurized water must be spread. Second, as noted above, normally a
claimed range cannot by itself confer patentability on a claim unless the
applicant can show that range to be critical. Appellants have not directed us
to any part of the Specification that supports the notion that this range is
Appeal 2010-003080
Application 10/908,880

11
critical for any reason. On the contrary, the Specification states (Spec.14, ¶
57) that the claimed water pressure “may” be used, indicating that it is
optional rather than critical.
Claims 38 and 39 – Obviousness – Sylvan and Cortese ’394
Claims 38 and 39 depend from claim 33, and additionally require that
the pod’s lid (claim 38) or base (claim 39) comprise “a plurality of apertures
therein.” Reply Br. 7. The Examiner found that Cortese ’394 discloses a
beverage pod 65 with a perforated lid 66 and perforated base 67, as well an
injection head assembly for delivering hot water to the pod and beverage
material, and concluded that it would have been obvious to one skilled in the
art to substitute the pod and injection assembly of Sylvan with that taught in
Cortese as an alternative means to provide hot water to the pod without
damaging the pod. Ans. 5-6. Appellants respond that Sylvan uses needles
42 and 22 to inject and remove fluid from the pod, so that having
perforations on the lid or base would serve no purpose. App. Br. 11. We do
not find this argument to be persuasive. First, Appellants mischaracterize
the combination that the Examiner proposed, which was not simply the
substitution of the pod of Cortese ’394 for Sylvan’s pod, but rather the
substitution of the pod and injection assembly of the former for that of the
latter. Ans. 5-6. Appellants’ argument does not directly address this
combination. Second, the substitution of Cortese ’394’s pod and injection
assembly for Sylvan’s amounts to the substitution of one known element for
another to yield predicable results, and therefore would have been obvious.
See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Appeal 2010-003080
Application 10/908,880

12
DECISION
For the above reasons, the Examiner’s rejection of claims 20-28, 31,
and 33-39 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)(1)(iv) (2011).

AFFIRMED

mls