Ex Parte Stieger et al

Patent Trial and Appeal Board

May 21, 2013

10538583 (P.T.A.B. May. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MISCHA STIEGER and ALFRED YOAKIM
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Appeal 2011-003071
Application 10/538,583
Technology Center 3700
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Before LINDA E. HORNER, BARRY L. GROSSMAN, and
NEIL A. SMITH, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/538,583

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1 and 3-12. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Claims 1 and 11 are independent claims. Claim 1 is illustrative of the
subject matter on appeal, and recites:
1. A nozzle that can be fitted onto a steam outlet of a
coffee machine intended to froth a liquid, the nozzle
comprising:
a mouth for receiving the steam,
a restriction in a continuation of the mouth,
a flared zone along the axis of the restriction and of the
mouth to allow the liquid out, having a cross section
approximately equal to the cross section of the mouth,
approximately perpendicular to the mouth, an inlet pipe
for allowing in liquid, and
an air intake formed directly on the inlet pipe as a hole, a
slit or a pipe which opens into the inlet pipe, wherein the nozzle
is disposable and configured in one piece formed from an
assembly of two injection-molded welded plastic shells that are
compatible with food use.

REFERENCES
The Examiner relied upon the following prior art references:

REJECTION
Appellants seek review of the Examiner’s rejection of claims 1 and 3-
12 under 35 U.S.C. § 103(a) as unpatentable in view of Probst and Cicchetti.
Cicchetti US 5,768,981 Jun. 23, 1998
Probst US 6,499,389 B1 Dec. 31, 2002
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ANALYSIS
Regarding the rejection of independent claim 1, the Examiner, in
relevant part, made inconsistent findings regarding Probst. The Examiner
first found that the nozzle disclosed in Probst is “configured in one piece
formed from an assembly of two injection-molded welded plastic shells that
are compatible with food use.” Ans. 3-4 (emphasis added). However, after
stating that Probst disclosed a one-piece, plastic assembly, the Examiner
then found that Probst “does not show the nozzle being made of one piece,
nor the material it is made of.” Id. at 4 (emphasis added). The Examiner did
not make the same inconsistent findings regarding independent claim 11.
Regarding claim 11, the Examiner found only that “Probst does not show the
nozzle being made of one piece, nor the material it is made of.” Ans. 7.
For both claims 1 and 11, the Examiner also found that “Cicchetti
teaches a mostly-one piece (25) housing of a mouth (15), outlet (20) and
perpendicular milk inlet (17).” Ans. 4, 7. Based on these findings, the
Examiner determined it would have been obvious to a person having
ordinary skill in the relevant technology to “have provided the device of
Probst with a unitary housing as suggested by Cicchetti.” Id.
Regarding the claim limitation that the nozzle is “disposable,” the
Examiner found that “Probst and Cicchetti do not teach a disposable nozzle
piece per se,” (Ans. 4, 7) but found that the nozzle resulting from the
proposed combination of Probst and Cicchetti was “capable of being
disposable.” Id.
Appellants argue in relevant part that “the cited references fail to
disclose or suggest a nozzle configured in one piece.” App. Br. 12, Reply
Br. 2-3. Appellants also argue that the Specification makes clear that a
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“disposable” nozzle as claimed is one that is readily replaced more
frequently than the end of its useful life, which is not disclosed or suggested
by the applied references. Reply Br. 4-5. Additionally, Appellants argue
that the references “teach away” from a one piece configuration. Reply Br.
4.
In response, the Examiner acknowledged that “Probst teaches a
multitude of parts for its ‘nozzle arrangement’” and “Cicchetti teaches a
fewer number of parts to accomplish the same if not similar arrangement.”
Ans. 8. The Examiner determined that “it can only be of an extension of
reasonable logic to extend this thinking [i.e., fewer parts] to a one-piece
disposable nozzle, as claimed.” Id. The Examiner also determined that to
“make a piece disposable is an extension of common sense, as just about
every manufactured good has a lifespan that requires eventual disposal or
recycling.” Id. at 8-9.
Devices for emulsifying a mixture of steam, air and milk for making
cappuccinos, lattes, and other exotic coffee drinks are well-known and
commonly seen in most coffee shops. These devices require frequent
cleaning because the milk adheres to the internal surfaces and can lead to
bacterial growth. Substitute Spec. 3, ll. 8-13. Cicchetti, on which the
Examiner relies for a “mostly-one piece” assembly, addresses this need for
regular cleaning by disclosing a device which enables easy and safe steam-
cleaning. Cicchetti, 1:22-23. The disclosed structure uses slidable blocking
members for closing the delivery outlet, so that an inner-cleaning cycle may
be performed by circulating steam for cleaning through the assembly. Id. at
1:32-34. Probst discloses a device for making a steam-milk-air mixture for
cappuccinos and similar drinks wherein the mixture is formed in a vacuum
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chamber after the premixing of the milk with air is mixed intensively again,
and swirled, in the emulsifying chamber. The mixture remains in the
emulsifying chamber as long as possible, where it is emulsified into a fine-
pored mixture due to the continuous flow of steam energy. Probst, 2:32-38.
We agree with Appellants that the preponderance of evidence based
on the applied references does not disclose or suggest a nozzle that is
disposable and configured in one piece, as called for in the claims.
The Examiner’s determination that making integral, as one piece,
what the applied references admittedly disclosed as being made in several
pieces would have been obvious is not an adequate articulation of the
obviousness of the claimed subject matter. Schenck v. Nortron Corp., 713
F.2d 782, 785 (Fed. Cir. 1983). Cicchetti, on which the Examiner relies for
a “mostly-one piece” assembly, requires moveable parts to facilitate using
steam to clean the internal components. The need for multiple moveable
parts in Cicchetti to allow for the internal steam cleaning would not have led
one of ordinary skill in the art to the use of a one piece nozzle. We agree
with Appellants that the applied references fail to disclose or suggest a one
piece nozzle and the Examiner has failed to adequately explain why one of
ordinary skill in the art would have been led to a one piece construction.
Reply Br. 4.
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted).
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As argued by Appellants, the Specification provides numerous
examples establishing that a “disposable” nozzle, as called for in the claims,
is one that is readily replaced more frequently than the end of its useful life.
Reply Br. 4-5.
Appellants’ Specification provides no specific definition for the term
“disposable,” other than the examples provided in Appellants’ argument
cited above stating that the nozzle is disposed of daily or a few times
through the day. See, e.g., Substitute Spec. 4, ll. 12-14; 7, ll. 20-22.
If the specification does not assign or suggest a particular definition to
a claim term, it is appropriate to consult a general dictionary definition of the
word for guidance in determining the ordinary and customary meaning of
the claim term as viewed by a person of ordinary skill in the art. Comaper
Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). A common
definition of “disposable” is “designed to be disposed of after use”1 or
“designed to be used once and then thrown away.”2 These definitions are
consistent with the Specification’s use of “disposable” to mean disposed of
regularly and prior to the end of its useful life.
Thus, giving the claims their broadest reasonable interpretation
consistent with the Specification as it would be interpreted by one of
ordinary skill in the art, the disposable nozzle called for in the claims is one
that is disposed of regularly and disposed of prior to the end of its useful life.

1 THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE (4th
ed. 2009), available at http://www.thefreedictionary.com/disposable (last
accessed May 18, 2013).
2 MERRIAM-WEBSTER DICTIONARY, available at http://www.merriam-
webster.com/dictionary/disposable (last accessed May 18, 2013).
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The Examiner’s determination that the claimed invention would have been
obvious in view of the applied references because “every manufactured good
has a lifespan that requires eventual disposal or recycling” (id. at 8-9) is
based on an unreasonably broad interpretation of “disposable.”
Because the applied references fail to disclose or suggest, in relevant
part, a one piece, disposable nozzle as called for in claims 1 and 3-12, we
cannot sustain the rejection.
DECISION
Upon consideration of the record as a whole in light of Appellants’
contentions and the preponderance of relevant evidence, we REVERSE the
Examiner’s decision rejecting claims 1 and 3-12.

REVERSED

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