Ex Parte Piai et al

Patent Trial and Appeal Board

Oct 25, 2018

14568853 (P.T.A.B. Oct. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/568,853 12/12/2014
29157 7590
K&L Gates LLP-Chicago
P.O. Box 1135
CHICAGO, IL 60690
10/29/2018
FIRST NAMED INVENTOR
Guido Piai
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.
3712036-02329 1088
EXAMINER
LETTMAN, BRYAN MATTHEW
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
10/29/2018 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 GUIDO PIAI and STEP AN ETTER
Appeal2017-005030
Application 14/568,853
Technology Center 3700
Before MICHAEL L. HOELTER, PA TRICK R. SCANLON, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
Decision rejecting claims 1-13 and 19. An oral hearing was held on
October 4, 2018, and a transcript of that hearing is included in the record
("Transcript"). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2017-005030
Application 14/568,853
CLAIMED SUBJECT MATTER
Claims 1 and 19 are independent, with claims 2-13 depending from
claim 1. Claim 1 is representative of the claims on appeal, and is reproduced
below:
1. A beverage production module comprising:
a pump for delivering a fluid from a tank to an extraction
chamber;
a power source for applying a voltage to the pump; and
a controller for operating the pump and for controlling
the voltage applied from the power source to the pump, the
controller is configured to operate the pump after a start at a
first reduced voltage level; after a first predefined time, to
operate the pump at a normal operation voltage; and, during the
operation of the pump, to operate the pump for a second
predefined time at a second reduced voltage level.
REJECTIONS
1. Claims 1--4, 10-13, and 19 are rejected under 35 U.S.C. § 103 as
being unpatentable over Chen (US 2005/0011364 Al, published Jan. 20,
2005) and Kokubo (US 7,021,725 B2, issued Apr. 4, 2006).
2. Claims 5 and 7-9 are rejected under 35 U.S.C. § 103 as being
unpatentable over Chen, Kokubo, and Cheng (US 2004/0062059 Al,
published April 1, 2004).
3. Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over
Chen, Kokubo, and Kamiya (US 6,293,099 Bl, issued Sept. 25, 2001).
OPINION
Claim Construction
The preamble of claim 1 recites "[a] beverage production module."
Much of the dispute between Appellant and the Examiner concerns whether
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Application 14/568,853
the problems addressed by references not specifically directed to "beverage
production modules" are relevant to the claims. Accordingly, we find it
worthwhile to make the scope of the claims clear for the record. Although
the Examiner appears to import meaning from the preamble, limiting the
claim to "beverage production modules" (see Final Act. 3 (finding that
"Chen teaches a beverage production module")), we do not agree that the
preamble limits the claims.
"In general, a preamble limits the invention if it recites essential
structure or steps, or if it is 'necessary to give life, meaning, and vitality' to
the claim." Catalina Mktg. Int'!, Inc. v. Coo/savings.com, Inc., 289 F.3d
801, 808 (Fed. Cir. 2002). A preamble, however, "generally is not limiting
when the claim body describes a structurally complete invention such that
deletion of the preamble phrase does not affect the structure or steps of the
claimed invention." Id. at 809. One guidepost for determining the effect of
a preamble on claim scope is whether the preamble language provides
antecedent basis for any limitation in the body of the claim. Id. at 808. A
preamble describing the purpose or intended use of an invention generally
does not limit the claim. Id. at 809.
In claim 1, the preamble simply recites an intended use of the "pump,"
"power source," and "controller." The body of the claim defines the
complete structure, leaving no reason to resort to the preamble to understand
the structure recited in the body of the claim. Moreover, the preamble
provides no antecedent basis for any limitation in the body of the claim. We
also note that at oral argument, Appellant was asked what makes the
preamble limiting, but failed to provide any persuasive explanation. See,
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e.g., Transcript 5:20-8:2 (arguing that the recitation of"an extraction
chamber" in the body of the claim somehow makes the preamble limiting).
Accordingly, the preamble of claims 1-13 is not limiting. For similar
reasons, the preamble of claim 19 is also not limiting.
Claims 1-4, 10-12, and 19
Appellant argues claims 1--4, 10-12, and 19 as a group. 1 See Appeal
Br. 6-10, 15. We select claim 1 as representative. Claims 2--4, 10-12, and
19 stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). The
Examiner finds that Chen teaches the "pump," "power source," and
"controller" recited in claim 1, but does not specifically teach "the controller
is configured ... to operate the pump for a second predefined time at a
second reduced voltage level." Final Act. 5---6. The Examiner cites Kobuko,
for example, as teaching a pump controller that operates in the manner
recited in claim 1, and proposes modifying Chen's teachings accordingly "in
order to 'reduce operation sound of the motor."' Id. at 5-6 ( citing Kokubo,
2:52-57, 10:60---64, 11 :59-12:7, Figs. 2 and 5).
Appellant does not dispute the Examiner's findings with respect to
Chen or Kobuko2, or the further rationale related to the time period for
1 Although Appellant addresses claim 19 under a separate heading,
Appellant simply recites the limitations of that claim and reasserts the
arguments presented with respect to claim 1. See Appeal Br. 15. "A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim." 3 7 C.F .R.
§ 4I.37(c)(iv).
2 We note that because the preamble is not limiting, based on the fact there
is no dispute that Kobuko teaches the "controller" limitation and the
discussion at oral hearing (see Transcript 12:5-13:6 (acknowledging that
Kuboko has a pump and power source as recited)), Kobuko, itself, discloses
each limitation recited in claim 1.
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Application 14/568,853
reduced voltage operation. See Appeal Br. 6-10. Appellant's arguments
focus on whether Kobuko is analogous art (id. at 9--10) and whether the
Examiner has provided sufficient rationale to combine Kobuko 's teachings
with those of Chen (id. at 7-9).
"A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention." In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC
v. MGA Entm't, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011), and In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
Two separate tests define the scope of analogous art:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is
not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
Id. (quoting In re Bigio, 381 F.3d at 1325).
The preponderance of the evidence before us supports the Examiner's
position that Kobuko is at least "reasonably pertinent to the particular
problem with which the inventor is involved." The Examiner references
"pump noise" as the problem. See, e.g., Ans. 10-11. Appellant does not
dispute that Kobuko is reasonably pertinent to the problem of pump noise,
contending, instead, that "the particular problem with which the inventor is
involved" in the pending application is "fixing the problem of improving
user friendliness and quality of the produced beverage in a beverage
production module." Appeal Br. 9--10; see also Reply Br. 4 (citing the
problem as "beverage quality").
Regardless of whether the "pump," "power source," and "pump
controller" recited in claim 1 improve beverage quality in some manner,
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Appellant's Specification makes clear that another problem addressed is
pump noise. See Spec. ,r 62. At oral hearing, Appellant attempted to
address the discussion of pump noise in paragraph 62, noting that "a
distinction here in that certainly a reduction in noise is an advantage that
Appellant found by this invention, but that the actual problem solved is the
beverage preparation." Transcript 9: 13-17. Appellant also provides a
Declaration from Gilles Gauillet under 37 C.F.R. § 1.132 ("Declaration") in
support if its position that "improv[ing] the 'in cup quality' of the beverage"
such that "the creation of the crema can be controlled and enhanced" is the
problem addressed by the invention. Appeal Br. 8 ( citing Declaration ,r 7).
The Specification explains, however, that "[ n ]ormally, the pump within the
first five seconds after the start of a coffee is louder." Spec. ,r 62. To
address this problem, "noise reduction is achieved by dimming the pump,"
which "means to reduce the intensity." Id.
Accordingly, we are not apprised of Examiner error regarding the
determination that Kobuko is at least "reasonably pertinent to the particular
problem with which the inventor is involved."
Appellant additionally disputes the Examiner's proposed rationale to
modify Chen's teachings to include the reduced voltage control from
Kobuko to reduce motor noise because
there is no evidence in the record whatsoever suggesting that
the operation sound of the motor is a problem in beverage
production modules, let alone that the operation sound of the
motor of a beverage production module was a problem
recognized by the skilled artisan at the time of the claimed
invention.
Appeal Br. 7. Appellant's contention is not persuasive.
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Application 14/568,853
The Examiner cites Kobuko as evidence that noise was a problem in
pumps, generally. Final Act. 6 (citing Kokubo, 2:52-57); Ans. 10. Indeed,
there is no dispute that Kobuko states that it is desired "to reduce ...
operation sound ( or noise) to the extent possible" for "a hydraulic pump and
a motor." Kobuko, 1 :62---64. Appellant offers no argument or evidence to
dispute the Examiner's determination that Chen's pump suffers from the
same problem as that taught by Kobuko, arguing, instead, that the
Examiner's finding must be specific to a pump in a "beverage production
module." See Appeal Br. 7.
Here, the Examiner has provided evidence that noise was a problem in
pumps, which Appellant has not rebutted in a persuasive manner. Moreover,
Appellant's Specification, itself, acknowledges that noise is a problem in
pumps used in a "beverage production module." See Spec. ,r 62.
For at least these reasons, the preponderance of the evidence supports
the Examiner's rejection of claims 1--4, 10-12, and 19 as unpatentable over
the combined teachings of Chen and Kobuko.
Moreover, we note that the Examiner finds that Kobuko teaches each
element of claim 1 when that claim is properly construed such that the
preamble is not limiting. See Final Act. 5 (finding that Kobuko teaches each
limitation of the "controller" limitation, as well as a "pump" and a "power
source"). As noted above, Appellant does not dispute any of those findings.
Claim 13
Claim 13 depends from claim 1, and further recites that "the controller
is configured to maintain the voltage at the first reduced voltage level for the
first predefined time." The Examiner acknowledges that "Chen is silent as
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Application 14/568,853
to how the voltage is varied and Kokubo is silent as to how long the time
periods are." Final Act. 6. Appellant contends that
Kokubo does not disclose maintaining the voltage at the
first reduced voltage level for the first predefined time. Instead,
Kokubo merely discloses a motor inter-terminal voltage
becoming equal to or less than a voltage threshold in a period
during which a motor control signal is at a low level (supply of
electricity to the motor is stopped) prompts the control
apparatus to change the motor control signal to a high level
(resumes the supply of electricity) for a predetermined time, to
thereby control the rotational speed of the motor; and when the
cause of the start of ABS control is not a demand for
excessively abrupt braking, the voltage threshold is lowered to
reduce the rotational speed of the motor during a predetermined
period of time immediately after the start of ABS control.
Appeal Br. 11.
The Examiner makes no specific finding in the Final Action that
Kokubo teaches this feature. See Final Act. 5---6. In the Answer, the
Examiner responds that "the operation during the first predefined time is
entirely at the first reduced voltage level (VO in Fig. 5, annotated above)."
Ans. 12. Figure 5 of Kobuko, as well as the Examiner's annotated version
ofKobuko's Figure 5 from the Answer are reproduced below.
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Application 14/568,853
(a)
Vee
{b}
High
Vcont Low--"""
I
I
FIG.5
I
t1 t2 t3 t4 t5 t6 t7 i tS
i
ta
ABS CONTROL,._, -+----.; ABS CONTROL
STOPPED ~ . EXECUTED
t9 t10t11 t12 tl3 t14t15
Figure 5 of Kobuko "is a time chart showing example changes in the motor
inter-terminal voltage and motor control signal." Kobuko, 5: 1-2.
First Predefined
Pei iod of Time at
First Reduced
Voltage
·t
\h;;<,:'"" .. , ....
Normal
Operation
Voltage
Annotation of Kokubo Figure 5.
9
Second P1·edefined
Period of Time at
Second Reduced
Voltage
Appeal2017-005030
Application 14/568,853
The Examiner's annotated version of Kobuko 's Figure 5 includes the portion
showing changes in voltage, as well as the Examiner's annotations
indicating the "first predefined period of time at first reduced voltage,"
"normal operation voltage," and "the "second predefined period of time at
second reduced voltage."
Notably, the Examiner provides no further discussion or citation to the
Kobuko's description to support this finding. Accordingly, the Examiner
has failed to establish sufficiently that claim 13 is unpatentable over the
combined teachings of Chen and Kobuko.
Claim 5-9
Claim 5 depends from claim 4, which depends from claim 1, and
further recites that "the pump comprises a circuit comprising a Buck
converter." Claim 4 recites that "the power source provides a direct current
DC voltage to the pump." The Examiner finds that Chen teaches that the
power source provides DC voltage to its pump (Final Act. 5), and Appellant
does not dispute that finding. With respect to the "Buck converter," the
Examiner finds that Cheng teaches use of Buck converter in a pump motor
system, and reasons that it would have been obvious to use a Buck converter
in Chen's system because "it is well known in the art to do so, as evidenced
by Cheng." Id. at 7 (citing Cheng ,r,r 34, 43).
Claim 6 depends from claim 4, which depends from claim 1, and
further recites that "the pump comprises a circuit comprising a motor
chopper." The Examiner finds that Kamiya teaches a motor chopper to
control a pump motor and reasons that it would have been obvious to use a
motor chopper in Chen's system because "it is well known in the art to do
so, as evidenced by Kamiya." Final Act. 8 (citing Kamiya 4:41--44).
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Claim 7 depends from claim 1, and further recites that "the power
source provides an alternating current AC voltage to the pump." With
respect to this limitation, the Examiner finds that Cheng teaches use of "AC
voltage to drive a pump," and reasons that it would have been obvious to use
an AC voltage in Chen's system because "it is well known in the art to do
so, as evidenced by Cheng." Id. at 7 (citing Cheng ,r 34).
Appellant does not dispute the Examiner's findings. Instead,
Appellant contends that "the Examiner merely provided a conclusory
statement and did not articulate reasoning with some rational underpinning
to support the proposed modification of Chen and Kokubo to include the
Buck-converter of Cheng" and, because "Cheng is directed to 'power supply
systems employing a bi-directional power module, useful in [ ... ] electric
vehicles' ... the skilled artisan would not have applied the teachings of
Cheng to the beverage preparation machine of Chen." Appeal Br. 12
( emphasis omitted). Similar to the response to the rejection of claim 5,
Appellant also contends that "the Examiner merely provided a conclusory
statement and did not articulate reasoning with some rational underpinning
to support the proposed modification of Chen and Kokubo to include the
motor chopper of Kamiya." Id. at 13.
"When there is a design need ... to solve a problem and there are a
finite number of identified, predictable solutions, a person of ordinary skill
has good reason to pursue the known options within his or her technical
grasp." KSR Int 'l v. Teleflex Inc., 550 U.S. 398, 421 (2007). With respect to
claim 5, for example, the Examiner responds that "the articulated rational[ e]
is that what is claimed is obvious because it is well known in the art, and ...
Cheng ... [is] cited as evidence of this." Ans. 12. Cheng explains that, in
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DC devices, "a buck converter [is used] to lower an output voltage where
desirable." Cheng ,r 43. There is no dispute that a Buck converter is one
well-known way to lower an output voltage.
Moreover, we note that Appellant's Specification is essentially silent
as to any details of the "Buck converter" ( claim 5), the "motor chopper"
(claim 6), and "provid[ing] an alternating current AC voltage to the pump"
( claim 7). Such silence supports an inference that such technical
requirements involve no more than ordinary skill. See Lindemann
Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F .2d 1452, 1463
(Fed. Cir. 1984) (explaining that "the specification need not disclose what is
well known in the art."); see also In re Myers, 410 F.2d 420,424 (CCPA
1969) ("A specification is directed to those skilled in the art and need not
teach or point out in detail that which is well-known in the art.").
Appellant does not argue claims 8 and 9 separately. For the reasons
set forth above, we are not persuaded of Examiner error in the rejection of
claims 5-9.
DECISION
We AFFIRM the Examiner's decision to reject claims 1-12 and 19
under 35 U.S.C. § 103.
We REVERSE the Examiner's decision to reject claim 13 under
35 U.S.C. § 103.
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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