Ex Parte Kirschner et al

Board of Patent Appeals and Interferences

Jun 20, 2012

10908350 (B.P.A.I. Jun. 20, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/908,350 05/09/2005 Jonathan Kirschner 25040-1185 5350
29052 7590 06/21/2012
SUTHERLAND ASBILL & BRENNAN LLP
999 PEACHTREE STREET, N.E.
ATLANTA, GA 30309
EXAMINER
ALEXANDER, REGINALD
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
06/21/2012 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 LOUIS JOSEPH HEINSZ
____________________

Appeal 2009-014810
Application 10/908,350
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

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Application 10/908,350

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
23-28. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
THE INVENTION
The claims are directed to a pod for use in the automatic brewing of
coffee, tea, and other beverages. Spec. 1. Claims 23 and 25, reproduced
below, illustrate the claimed subject matter:
23. A pod for holding an amount of mixable material,
comprising:
a substantially rigid sidewall;
a substantially rigid base; and
a lid;
said sidewall comprising an inside diameter and a usable height
extending from said base to said lid;
said usable height and said inside diameter comprising a ratio
of less than about 0.44.

25. A coffee pod, comprising:
a substantially rigid sidewall;
a substantially rigid base;
a lid; and
coffee grinds positioned therein;
wherein over seventy-five percent (75%) percent of said coffee grinds
comprise a particle size distribution of between about 200 and about 300
microns.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hu
Halliday
US 6,832,542 B2
US 7,340,990 B2
Dec. 21, 2004
Mar. 11, 2008
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Dalton US 2003/0039731 A1 Feb. 27, 2003

REJECTIONS
The Examiner made the following rejections:
Claims 23 and 24 stand rejected under 35 U.S.C §102(b) as being
anticipated by Halliday. Ans. 3.
Claim 25-27 stand rejected under 35 U.S.C §102(e) as being
anticipated by Dalton. Ans. 3.
Claim 28 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Halliday and Hu. Ans. 4.

ANALYSIS
Claims 23, 24 – Anticipation – Halliday
Claim 23 recites a pod for holding an amount of mixable material
comprising a substantially rigid sidewall, a substantially rigid base, and a lid,
where the ratio of the sidewall’s “usable height” – the distance from the base
to the lid – and inside diameter is less than about 0.44. App. Br. 11 (Claims
Appendix). Claim 24 is identical to claim 23 except that it recites a usable
height/inside diameter ratio of about 0.3 or less. Id. The Examiner found
that Halliday discloses a pod, as depicted in Figs. 11 and 29, with the ratio of
the sidewall’s usable height and inside diameter between 0.3-0.43. Ans. 3-4.
Appellants respond that Halliday discloses a pod with an “aspect ratio” of
between 0.3-0.43,1 but that Halliday’s aspect ratio is not the same as the
claimed ratio because the height used to calculate Halliday’s aspect ratio
does not extend from the base to the lid. App. Br. 5.

1 As Appellants point out, App. Br. 5, Halliday actually discloses an aspect
ratio as low as 0.10.
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We agree with the Examiner that the claimed ratio reads on Halliday’s
aspect ratio. Halliday defines aspect ratio as “the ratio of the maximum
internal vertical height of the interior 120 . . . against the internal breadth of
the interior 120.” Halliday, col. 5, ll. 17-20 (emphasis added); see Fig. 11.
The “interior 120,” refers to the interior of the entire cartridge, or pod, which
is comprised of an outer member 2 – which includes curved annular wall 13
and closed top 11 – an inner member 3, and a laminate 5. Halliday, col. 4, ll.
48-53; col. 5, ll. 36-37; Fig. 11. The “maximum internal height” of interior
120 thus necessarily extends from closed top 11 to laminate 5, and there is
no dispute that the laminate 5 corresponds to the claimed lid and that the
“closed top” 11 corresponds to the claimed base. App. Br. 5 (referring to
“base 11” and “lid 5”). Thus, the “maximum internal vertical height of the
interior 120” extends from the base (top 11) to the lid (laminate 5), as recited
in claims 23 and 24. We sustain the Examiner’s rejection of claims 23 and
24.
Claims 25-27 – Anticipation – Dalton
Claims 25-26 are drawn to a “coffee pod” containing coffee grinds
having a particular size distribution – for claim 25, 75% of the coffee grinds
are between 200 and 300 microns; for claim 26, 80% of the coffee grinds are
between about 220 and about 250 microns. App. Br. 11. Claim 27 is drawn
to a method of brewing coffee with the coffee pod of claim 25. Id. The
Examiner found that Dalton discloses a coffee pod containing coffee grinds
having a particle size distribution2 of from about 300 microns to about 1750

2 Like the claims at issue, Dalton uses “particle size distribution” to mean
that “at least about 80% of the particles of that particular ingredient
contained within the referenced extraction chamber are, by weight, within
the stated particle size distribution.” Dalton, ¶ 243.
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microns, and also discloses a pod with soluble instant coffee particles having
a particle size distribution of between 150 microns and 1700 microns. Ans.
3 (citing Dalton, ¶¶ 243, 250). The Examiner alternatively concluded that
the claimed particle size distribution does not structurally limit the claimed
coffee pod, but rather is merely a statement of intended use.
As an initial matter, we disagree with the Examiner that the claimed
particle size distribution does not structurally limit the claimed coffee pod.
In our view the claims are not drawn to an empty container intended to be
used to hold coffee grinds of a particle size, but to containers already filled
with coffee of that size. Coffee grinds of the requisite size are part of the
claimed structure. We therefore conclude that the coffee grinds structurally
limit the claimed coffee pod.
We also disagree that Dalton describes coffee grinds having the
claimed particle size distribution. Dalton discloses coffee grinds having a
range of particle size distributions that is much larger than the claimed
range, and overlaps claim 25’s range only at a single point: The lower end
of Dalton’s range is the same as the upper limit of the claimed range (there is
no overlap with claim 26’s range). While it is true that a single species can
anticipate a claimed range, the disclosure of a particular range does not
normally constitute the specific disclosure of the endpoints of that range.
Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006).
Given the minimal overlap between Dalton’s range and claim 25’s range, it
cannot be said that Dalton discloses the claimed range with sufficient
specificity to anticipate this limitation of the claim. See Id. at 999 (prior art
disclosure of 100 to 500° C temperature range does not anticipate claimed
range of 330 to 450° C, even though claimed range is entirely within prior
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art range, because “no reasonable fact finder could conclude that the prior art
describes the claimed range with sufficient specificity to anticipate this
limitation of the claim”).
Further, even if the disclosed range for the soluble instant-coffee
particles anticipates the claimed range – and we are not making any such
finding – it appears clear from the record that soluble instant-coffee flakes
are not the same as the claimed coffee grinds. Coffee grinds are prepared by
grinding roasted coffee beans. Dalton, ¶ 237. Instant coffee is prepared by
spray- or freeze-drying aqueous coffee extract, and results in particles that
are soluble in water. Dalton, ¶ 249. The claimed coffee grind limitation
does not read on instant coffee. The rejection of claims 25-27 is not
sustained.
Claim 28 – Obviousness – Halliday, Hu
Claim 28 depends from claim 23, and additionally requires that “the
substantially rigid sidewall and the substantially rigid base substantially
resist deformation at about at least 10 bar.” App. Br. 11. The Examiner
found that Hu discloses a beverage pod that is “capable of withstanding up
to 10 bars of pressure during use . . . without the sidewall 120 or base 122
deforming.” Ans. 4 (citing Hu Figs. 13, 14). 3 Appellants dispute that Hu
teaches such a container. App. Br. 8.
We have examined those portions of Hu relied upon by the Examiner,
but are unable to find any teaching that Hu’s capsule is able to withstand a
pressure of 10 bars without deforming. It appears to us that the only

3 The Examiner also cites to “para. 3, line 6” of Hu. However, Hu is an
issued patent and therefore its paragraphs are not numbered. Hu’s third
paragraph is found in the “Background of the Invention” section and does
not specifically discuss Hu’s invention.
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teaching in Hu concerning the ability of Hu’s capsule to withstand pressure
of a given amount concerns the capsule embodiment shown in Figs. 1 and 2.
Hu teaches that the sidewall and base of that capsule are to be made of a
“pressure resistant but elastically deformable material . . . able to withstand
an inside pressure of several bars; i.e., 1.5 to 15 bars, preferably 2-6 bars,
while being capable of expanding outwardly as a response to such building-
up of pressure.” Hu, col. 14, ll. 60-67 (emphasis added). This teaching is
inconsistent with the claimed requirement that the pod resist deformation at
about at least 10 bar. Accordingly, we find that the Examiner has not shown
by a preponderance of evidence that Hu discloses a pod that can withstand
deformation at about at least 10 bar. The rejection of claim 28 is not
sustained.
DECISION
For the above reasons, the Examiner’s rejection of claims 23 and 24 is
affirmed. The Examiner’s rejection of claims 25-28 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) (2009).

AFFIRMED-IN-PART

MP