Ex Parte Ozanne

Patent Trial and Appeal Board

Oct 31, 2016

13140518 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/140,518 06/17/2011
29157 7590
K&L Gates LLP-Chicago
P.O. Box 1135
CHICAGO, IL 60690
11/02/2016
FIRST NAMED INVENTOR
Matthieu Ozanne
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3712036-01299 8244
EXAMINER
COX, STEPHANIE A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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 MATTHIEU OZANNE
Appeal2015-004575
Application 13/140,518
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1 through 7, 12 through 18, 23 and 24. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
The subject matter on appeal is generally directed to a process for
preparing a beverage in a beverage machine using a capsule comprising tea
leaves. (Spec. 2, 11. 9-10.)
1 Appellant identifies the Real Party in Interest as Nestec S.A. (Appeal Brief
filed September 9, 2014, ("App. Br.") 2.)
Appeal2015-004575
Application 13/140,518
Details of the appealed subject matter are recited in representative
claims 1 and 12, which are reproduced below from the Claims Appendix to
the Appeal Brief:
1. A process for the preparation of a beverage in a beverage
machine using a capsule comprising tea leaves, the process
compnsmg:
a) introducing hot water delivered from a pumping and
heating member in the capsule to submerge the tea leaves in the
capsule enclosure;
b) letting the tea leaves soak;
c) introducing hot water into the capsule until the
required volume of beverage is delivered; and
continuously delivering water from the pumping and
heating member during the three steps and continuously
introduced in the capsule from the beginning of step a) until the
end of step c ).
12. A process for the preparation of a beverage in a beverage
machine using a capsule comprising tea leaves, the process
compnsmg:
a) introducing hot water delivered from a pumping and
heating member in the capsule to submerge the tea leaves in the
capsule enclosure;
b) letting the tea leaves soak;
c) introducing hot water into the capsule until the
required volume of beverage is delivered; and
continuously delivering water from the pumping and
heating member during the three steps and at least partially sent
to waste during step b ) .
In the Answer entered on January 20, 2015, ("Ans.") the
Examiner maintains the final rejection of claims 1-7, 12-18, 23, and
24 under 35 U.S.C. § 103(a) as unpatentable over the disclosures of
U.S. patent application publication 2004/0197444 Al published in the
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Application 13/140,518
name of Halliday et al. on October 7, 2004 (hereinafter referred to as
"Halliday").
DISCUSSION
Having considered the evidence on this appeal record and each of
Appellant's contentions, we affirm the Examiner's§ 103(a) rejection of
claims 1---6 and 23 as unpatentable over Halliday for the reasons set forth in
the Final Office Action entered June 18, 2014 ("Final Act.") and the
Answer, but reverse the Examiner's§ 103(a) rejection of claims 7, 12-18,
and 24 as unpatentable over Halliday for the reasons set forth in the Appeal
Brief. We add the discussion below primarily for emphasis and
completeness.
Claims 1, 2, and 4-62
Appellant does not dispute the Examiner's finding that Halliday
discloses a process for preparing a beverage (brewing process) that
comprises introducing hot water from a pump and heating mechanism into a
capsule containing tea leaves until a required volume of beverage is
delivered. (Compare Final Act. 3 with App. Br. 5-7.) Nor does Appellant
dispute the Examiner's finding that Halliday discloses that this brewing
process can include a fast or slow charge of the capsule with water with or
2 We limit our discussion to those claims separately argued, and claims not
separately argued stand or fall with the argued claims. 37 C.F.R.
§ 41.37(c)(l)(iv). Appellant argues claims 1, 2, and 4---6 as a group on the
basis of claim 1. (See generally App. Br. 5-7.) Therefore, for the purposes
of this appeal, we select claim 1 as representative, and decide the propriety
of the rejection of claims 1, 2, and 4---6 based on claim 1 alone.
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without a soaking step, and further includes brew/mixing and purge steps.
(Compare Final Act. 3 with App. Br. 5-7.) Based on the above undisputed
findings, the Examiner concludes that because Halliday discloses that the
brewing process can be performed without a soaking step3, it would have
been obvious to one of ordinary skill in the art to continuously deliver water
during the brewing process to provide sufficient water to the beverage
ingredients in a cartridge to meet all three steps, including the soaking step
involving continuous delivery of water, recited in claim 1 to produce a
desired volume of beverage. (Final Act. 3.)
Appellant argues that Halliday does not disclose or suggest
continuously delivering water from the pump and heating mechanism during
steps corresponding to steps a, b, and c recited in claim 1 because Halliday
discloses that "soaking is obtained by implementation of a pause, which
interrupts the flow of water." (App. Br. 5---6.)
However, as the Examiner correctly finds, Halliday discloses a
brewing process that does not involve a soaking period, or pause, that
interrupts the flow of water. (Final Act. 3 citing Halliday Table 3.)
Specifically, Halliday discloses a process for preparing tea that includes
3 The soaking steps in Halliday and claim 1 are described differently. While
the soaking step in Halliday is defined as leaving water delivered to a
capsule containing beverage ingredients for a predetermined period of time,
the soaking step recited in claim 1 is defined as providing the continuous
flow of water into a capsule containing tea leaves. Compare Halliday i-f 214
with claim 1.
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charging a cartridge containing tea leaves with water output from a water
heater using a pump to provide a low rate of uninterrupted water flow, which
Halliday refers to as a "slow charge without soak," followed by a
brewing/mixing step involving pumping additional water output from the
heater through the cartridge to produce tea. (Halliday i-fi-f 17, 176, 177, 181
(Table 3), 208-213, 215.)
This continuous delivery of water during the slow charge without soak
and brewing/mixing steps suggested by Halliday is within what is set forth
by claim 1 which recites "continuously delivering water from the pumping
and heating member during the three steps and continuously introduce[ing
water] in the capsule from the beginning of step a) until the end of step c)"
so as to allow soaking of the beverage ingredients to occur in step b) during
this continuous flow of water into the capsule until a desired volume of tea is
produced." Claim 1, by requiring a flow of water from the beginning to the
end and designating such flow of water as steps a), b ), and c ), without
specifying the rate at which water flows continuously into the capsule during
each of steps a, b, and c, encompasses Halliday' s suggested tea preparing
process involving a continuous flow of water into a cartridge containing tea
leaves. Although Appellant's Specification describes preferred flow rates
for these steps, such preferred embodiments in the Specification do not limit
the scope of claim 1, which is broadly recited to include any flow rates for
steps a, b, and c. Loctite Corp. v. Ultraseal Ltd., 781F.2d861, 867 (Fed.
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Application 13/140,518
Cir. 1985) ("Generally, particular limitations or embodiments appearing in
the specification will not be read into the claims."); In re Priest, 582 F.2d
33, 37 (CCPA 1978), citing In re Prater, 415 F.2d 1393, 1405 (CCPA 1969)
(We have consistently held that no "applicant should have limitations of the
specifications read into a claim where no express statement of the limitations
is included in the claim."). The Specification also does not define the term
"soaking" in step b) recited in claim 1 to exclude Halliday' s continuous
delivery of water into a cartridge containing tea leaves until a desired
volume of a tea is produced.
Accordingly, contrary to Appellant's arguments, Halliday's disclosure
of an initial "slow charge without soak," followed by a brewing/mixing step
suggests continuously delivering water from the pump and heating
mechanism into the cartridge until preparation of the tea is complete,
corresponding to continuously delivering water into the capsule throughout
the three steps recited in claim 1.
Appellant further argues that one of ordinary skill in the art would not
have modified Halliday' s process to continuously deliver water during the
brewing process in order to produce a beverage in a shorter amount of time
as the Examiner supposedly asserts, because Halliday already solves the
problem of faster beverage production by having a "fast charge" flow rate
option. Appellant also contends that the Examiner's supposed assertion that
one of ordinary skill in the art would have modified Halliday' s process to
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provide for continuous delivery of water "based on user preference" is an
unsupported conclusory statement that cannot serve as the basis for an
obviousness rejection.4 (App. Br. 6-7.)
However, as discussed above, Halliday suggests continuously
delivering water from the pump and heating mechanism into the cartridge
until preparation of the tea is complete, as recited in claim 1, and Halliday's
disclosures need not be modified to arrive at this suggestion. (Halliday i-fi-1
176, 177, 181(Table3), 208-213, 215.) It follows that Appellant's
arguments grounded in the Examiner's supposed, proposed motivation for
modifying Halliday' s disclosures are unpersuasive of reversible error.
We accordingly sustain the Examiner's rejection of claims 1, 2, and
4---6 under§ 103(a).
Claim 3
Claim 3 indirectly depends from claim 1 and recites that during step
b ), water is delivered from the pumping and heating member at a soaking
flow of between 20 and 80 ml/min.
Appellant does not dispute the Examiner's finding that Halliday
discloses that the pump provides a maximum flow rate of 900 ml/min, and
further discloses that the pump can be driven at a percentage of the
4 Contrary to Appellant's arguments, we find no statement in the rejection of
claim 1 in the Final Office Action indicating or suggesting that the Examiner
proposes a modification of Halliday's disclosures. (Final Act. 3.)
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maximum flow rate. (Compare Final Act. 4 with App. Br. 7-8.) The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art at the time of the invention to determine the optimum flow rate
through routine experimentation to produce a beverage having the desired
taste. (Final Act. 4.)
Appellant argues that Halliday discloses that "soaking is obtained by
implementation of a pause, which interrupts the flow of water," and
Halliday therefore teaches that the flow rate during the soaking stage is
0 ml/min. (App. Br. 7.) Appellant further argues that Halliday teaches a
"slow" flow rate of 325 ml/min, and even if one of ordinary skill would have
been motivated to continuously deliver water from the pumping and heating
member during the soaking stage to produce a beverage in a shorter amount
of time as supposedly alleged by the Examiner, the flow rate recited in
claim 3 (20-80 ml/min) would be at most 1/4 of the "slow" flow rate of
Halliday, and would therefore be contrary to the Examiner's proposed
motivation of producing a beverage in a shorter period of time. (App. Br. 7-
8.)
However, as the Examiner correctly finds, Halliday discloses that the
pump provides a maximum flow rate of 900 ml/min, and Halliday further
discloses that the flow rate of water can be a percentage of the maximum
flow rate, and preferably can be 10% to 100% of the maximum flow rate.
(Final Act. 4; Halliday i-f 176.) Accordingly, Halliday impliedly discloses
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Application 13/140,518
that the flow rate of the water can be any percentage of 80 ml/min, including
percentages below 10%, such as the flow rate recited in claim 3. Merck &
Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("[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." (second alteration in original) (quoting In re Lamberti,
545 F.2d 747, 750 (CCPA 1976))); In re Boe, 355 F.2d 961, 965 (CCPA
1966) ("All of the disclosures in a [prior art] reference must be evaluated for
what they fairly teach one of ordinary skill in the art.").
In addition, we agree with the Examiner that one of ordinary skill in
the art reasonably would have understood that the flow rate of the water
would affect the flavor of the tea produced, with a slower flow rate
providing longer contact between the water and tea leaves to result in a
stronger flavor, and a faster flow rate providing shorter contact between the
water and tea leaves to result in a weaker flavor. Therefore, it would have
been well within the ambit of one of ordinary skill in the art to determine a
flow rate that would yield tea having the desired flavor, and in so doing, the
skilled artisan reasonably would have arrived at the optimum flow rate
recited in claim 3.
In further contesting the rejection of claim 3, Appellant repeats the
same arguments advanced in connection with claim 1. (App. Br. 8.)
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However, as discussed above, such arguments are unpersuasive of reversible
error.
Therefore, we sustain the Examiner's rejection of claim 3 under§
103(a).
Claim 23
Claim 23 depends from claim 1 and recites that step b) is performed
for a period of time that is 5 seconds to 50 seconds.
Appellant does not dispute the Examiner's finding that Halliday
discloses that the delivery time for beverages can be between 5 and 120
seconds, depending on the type of beverage. (Compare Final Act. 5 with
App. Br. 10-11.) Based on this undisputed finding, the Examiner concludes
that one of ordinary skill in the art could determine an appropriate time
period for step b) through routine experimentation depending on the desired
strength of the beverage and the type of the beverage ingredients used.
(Final Act. 5.)
Appellant argues that Halliday does not disclose or suggest a typical
delivery time for tea beverages, much less a time period for soaking tea
leaves. (App. Br. 10.) Appellant further argues that even if one of ordinary
skill would have been motivated to continuously deliver water from the
pumping and heating member during the soaking step to produce a beverage
in a shorter amount of time as supposedly alleged by the Examiner, the
soaking period of 5 to 50 seconds recited in claim 23 would be contrary to
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Application 13/140,518
the Examiner's proposed motivation of producing a beverage in a shorter
period of time. (App. Br. 11.)
However, as discussed above, claim 1, from which claim 23 depends,
places no limitation on the flow rates for steps a), b ), and c ), and we find no
disclosure in the Specification that limits the flow rates of the three steps.
As discussed above, Halliday discloses an initial "slow charge without
soak," and any portion of Halliday's "slow charge without soak" lasting
from 5 to 50 seconds for the type of beverage involved (i.e., tea leaves)
therefore constitutes step b) as recited in claim 23 because claims 1 and 23
do not distinguish the flow rate of step b) from that of step a) or c) and only
require continuous delivery of water during the three steps.
Accordingly, Appellant's arguments are unpersuasive of reversible
error, and we sustain the rejection of claim 23 under 35 U.S.C. § 103(a).
Claim 7
The Examiner finds that "Halliday clearly teaches a filtering wall that
extends below a median horizontal plane (i.e. it is inserted into the capsule)
so that the overflow aperture is located above the place [sic: plane] (i.e. the
beverage exits at the top of the capsule)." (Ans. 7.)
However, we agree with Appellant that the Examiner does not carry
the burden of establishing a prima facie case of obviousness of the subject
matter of claim 7. (App. Br. 8-10.) In particular, the Examiner does not
demonstrate that Halliday discloses a capsule comprising an enclosure
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containing tea leaves, a filtering wall defining at least one filtering side of
the enclosure, and an overflow wall located in a path of the brewed liquid
after the filtering wall and comprising at least one overflow aperture, in
which the filter wall extends from below a median horizontal plane passing
through the enclosure when the capsule is position so that the overflow
aperture is located above the plane, as recited in claim 7. Although the
Examiner appears to rely on the disclosures of paragraphs 106, 108, 116,
123, and 126 ofHalliday,5 which refer to Halliday's Figures 8 and 11, as
disclosing the subject matter of claim 7 (Final Act. 4), we find no disclosure
in these portions of Halliday indicating that the filter 4 6 extends from below
a median horizontal plane passing through the enclosure 130 when the
capsule is position so that the overflow aperture 55 is located above the
plane, as recited in claim 7.
On this record, the Examiner simply does not identify any disclosure
in Halliday that shows a filter extending from below a median horizontal
plane passing through the enclosure to provide an overflow aperture above
that plan, and we therefore do not sustain the Examiner's rejection of
claim 7 under 35 U.S.C. § 103(a).
5 Although the Examiner cites to paragraphs 16 and 126 of Halliday in the
Answer, the Examiner cites to paragraphs 106, 108, 116, 123, and 126 in the
Final Office Action. (Ans. 7; Final Act. 4.)
6 Reference numerals refer to Figure 11 of Halliday.
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Application 13/140,518
Claims 12-18 and 247
Independent claim 12 recites steps a), b ), and c) that correspond to
steps a), b ), and c) recited in claim 1, and claim 12 further recites
"continuously delivering water from the pumping and heating member [into
a capsule containing tea leaves] during the three steps and at least partially
sent [some of the water from the pumping and heating member] to waste
during step b ) . "
The Examiner finds that Halliday discloses in paragraphs 168 and 169
that excess water not dispensed into a receptacle is collected and sent to
waste, and the Examiner determines that this teaching constitutes disclosure
of at least partially sending water to waste as recited in claim 12. (Final Act.
4.)
Paragraph 168 of Halliday describes the beverage preparation
machine depicted in Figure 35 and indicates that the machine includes a
dispense station 270 comprising a drip tray 272. Paragraph 169 explains that
when a beverage is produced by the machine, a receptacle is preferably
placed as close to the cartridge head 250 as possible to minimize spraying
7 For the purposes of this appeal, we select claim 12 as representative, which
is the broadest claim of claims 12-18 and 24, and decide the propriety of the
rejection of claims 12-18 and 24 under 35 U.S.C. § 103(a) based on claim
12 alone.
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and splashing of the beverage leaving the machine. Paragraphs 168 and 169
of Halliday thus discloses that tea produced by the machine from water that
flows through the cartridge and out of the cartridge head 250, which sprays
and splashes and does not enter a receptacle, is collected in a drip tray.
Although claim 12 is grammatically awkward, it requires that the
water from the pumping and heating member continuously delivered to a
capsule containing tea leaves during the three steps recited in claim 12 be at
least partially sent (diverted) to waste during step b ). Consistent with the
language of claim 12, Appellant's Specification also states that when water
is at least partially sent to waste during step b ), "[some] hot water is not
introduced in the capsule" and is instead sent to waste. (Spec. 3, 11. 15-19.)
Thus, sending water to waste in the manner recited in claim 12, as correctly
interpreted, involves diverting some of the flow of water otherwise delivered
to a capsule containing tea leaves to waste, without passing through the
capsule during step b). The Examiner's interpretation to the contrary is
unreasonable and inconsistent with the Specification. In re Suitco Surface,
Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (explaining that the broadest
reasonable interpretation standard does not give the Patent Office an
unfettered license to interpret the words in a claim without regard for the full
claim language and the written description.); In re Abbott Diabetes Care,
Inc., 696 F.3d 1142, 1148-50 (Fed. Cir. 2012) (finding the Patent Office's
construction unreasonably broad because it was "unreasonable and
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Application 13/140,518
inconsistent with the language of the claims and the specification"); In re
Baker Hughes, Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000) (explaining that
the PTO cannot adopt a construction that is "beyond that which was
reasonable in light of the totality of the written description" in the
Specification).
Accordingly, we agree with Appellant that Halliday's disclosure in
paragraphs 168 and 169 of collecting sprayed or splashed tea in a drip tray
that was prepared from water passed through a cartridge does not constitute
at least partially sending water to waste in the manner recited in claim 12.8
Therefore, the Examiner's evidence and explanation are insufficient to
establish a prima facie case of obviousness for the subject matter recited in
claim 12, and we accordingly do not sustain the rejection of claims 12-18
and 24 under 35 U.S.C. § 103(a).
CONCLUSION
In view of the reasons set forth above, we affirm the Examiner's
decision rejecting claims 1---6 and 23 under§ 103(a), but reverse the
8 We advise both the Examiner and Appellant that the recitation in claim 12
of "continuously delivering water ... at least partially sent to waste during
step b )"is, at best, grammatically incorrect. For the purposes of
clarification, we encourage Appellant and the Examiner to amend claim 12
to correct the grammar consistent with the disclosure at page 3, lines 15-19
of the Specification, e.g., "continuously delivering water from the pumping
and heating member into the capsule during the three steps and at least
partially [diverting such water] to waste during step b)."
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Examiner's decision rejecting claims 7, 12-18, and 24 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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