Ex Parte Yoakim

Patent Trial and Appeal Board

Mar 1, 2018

13513781 (P.T.A.B. Mar. 1, 2018)

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.
13/513,781 06/04/2012 Alfred Yoakim 3712036-01594 3516
29157 7590 03/05/2018
K&T Oates T T .P-Phiraan
EXAMINER
P.O. Box 1135
CHICAGO, IL 60690
DANG, KET D
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
03/05/2018 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 ALFRED YOAKIM
Appeal 2017-001553
Application 13/513,781
Technology Center 3700
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Alfred Yoakim (“Appellant”)1 seeks our review under 35 U.S.C.
§ 134 of the Final Rejection of claims 1-8, 14-16, and 19-21.2 We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.
1 The Appellant identifies Nestec S.A., as the real party in interest. (App.
Br. 2.)
2 Claims 9-13 have been withdrawn. Claims 17 and 18 have been cancelled.
Appeal 2017-001553
Application 13/513,781
THE INVENTION
Claim 1 is illustrative, and is reproduced below with emphasis added:
1. A capsule-based beverage preparation machine, comprising:
at least one sensor for monitoring a number of consumed
capsules and automatically determining a type of each of the
consumed capsules; and
a communication module for enabling communication
with a remote server via a communication network and for
submitting the number of consumed capsules and the type of each
of the consumed capsules to the remote server, the
communication module being adapted to receive from the server
an indication of a necessary service functionality depending on
submitted number of consumed capsules and type of each of the
consumed capsules.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Arellano US 2003/0191558 A1 Oct. 9,2003
Temite et al. (“Temite”) US 2008/0245236 A1 Oct. 9, 2008
The following rejection is before us for review:
Claims 1-8, 14-16, and 19-21 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Arellano and Temite.
ISSUE
Did the Examiner err in rejecting claims 1-8, 14-16, and 19-21 under
35 U.S.C. § 103(a) as being unpatentable over Arellano and Temite?
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Application 13/513,781
ANALYSIS
The rejection of claims 1—8, 14—16, and 19—21 under 35 U.S.C. § 103(a) as
being unpatentable over Arellano and Ternite.
Independent claim 1 and dependent claims 2—8, 16, and 19
Claim 1 recites “[a] capsule-based beverage preparation machine”
comprising at least one sensor and:
a communication module for enabling communication with a
remote server via a communication network and for submitting
the number of consumed capsules and the type of each of the
consumed capsules to the remote server, the communication
module being adapted to receive from the server an indication
of a necessary service functionality depending on submitted
number of consumed capsules and type of each of the
consumed capsules.
(App. Br. 15, Claims Appendix).
The Examiner points to beverage dispensing device 12 disclosed in
Arellano as meeting the claimed communication module limitation. (Final
Act. 3) (“a communication module (12, i.e. dispensing device)”). The
Examiner cites paragraphs 26, 29, 33, 34, and 48 of Arellano (Final Act. 3;
Ans. 2-3 and 7-8).
We have reviewed said cited passages, but do not find there the claim
limitation at issue. We are uncertain as to what disclosure in Arellano the
Examiner is relying upon to show the claimed communication module as
functionally limited, i.e., for “submitting the number of consumed capsules
and the type of each of the consumed capsules to the remote server” and
“receiv[ing] from the server an indication of a necessary service
functionality depending on submitted number of consumed capsules and
type of each of the consumed capsules.” In setting out the prima facie case
of obviousness, the Examiner did not specifically indicate where in Arellano
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Application 13/513,781
such a communication module is disclosed. The Appellant points this out,
arguing that Arellano does not disclose a communication module as claimed
(App. Br. 8). The Examiner responds by arguing that “dispenser (12) can
receive an indication of a necessary service functionality such as status data
indicating the amount of beverage remaining and dates and times when
beverage dispensing occurred” (Ans. 8) {citing Arellano, paras. 29, 33, 48).
Paragraph 29 of Arellano discloses that “dispenser 12 can output data for
viewing through an output display means 25” and “[t]he output data can
include beverage configuration information such as status data indicating the
amount of beverage remaining, usage information such as the time and dates
when beverage dispensing occurred, or other data.” But we see no
indication in paragraph 29 that dispenser 12 receives the output data from a
remote server as claimed. And the Examiner has not explained where in
Arellano it is disclosed that dispenser 12 submits the number and type of
consumed capsules to the remote server.
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966). See alsoKSRInt'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734
(2007) (“While the sequence of these questions might be reordered in any
particular case, the [Graham] factors continue to define the inquiry that
controls.”) We do not see how, and the Examiner has not adequately
explained how, beverage dispensing device 12 meets the claimed
“communication module.” This is due to an inadequate determination of the
scope and content of Arellano and the difference between the claimed
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Appeal 2017-001553
Application 13/513,781
communication module and what Arellano discloses.
A prima facie case of obviousness has not been made out in the first
instance by a preponderance of the evidence. Accordingly, we reverse the
rejection of independent claim 1. For the same reasons, we also do not
sustain the rejection of dependent claims 2-8, 16, and 19. Cf. In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if
the independent claims from which they depend are nonobvious”).
Independent claim 14 and dependent claim 20
Claim 14 recites “[a] beverage preparation machine” comprising three
structural elements: (1) “at least one sensor” and (2) “a control unit,” and
(3) “a communication module.” (App. Br. 16, Claims Appendix).
In rejecting independent claim 14, the Examiner takes the position
that Arellano discloses the claimed “communication module” in
communications path 16 (Final Act. 4; see also, Ans. 4).
The Appellant disputes the Examiner’s finding and argues that
Arellano does not disclose a communication module as claimed (App.
Br. 11).
Arellano at paragraph 23 discloses that “communications path 16 can
be implemented using a network such as the Internet, wide-area-network
(WAN), local-area-network (LAN), or other network.” As shown in
Figure 1 of Arellano, communications path 16 is separate and distinct from
beverage dispensing device 12. We do not see how, and the Examiner has
not adequately explained how, communications path 16 is “a communication
module” of a beverage preparation machine.
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Application 13/513,781
A prima facie case of obviousness has not been made out in the first
instance by a preponderance of the evidence. Accordingly, we reverse the
rejection of independent claim 14. For the same reasons, we also do not
sustain the rejection of dependent claim 20.
Independent claim 15 and dependent claim 21
Claim 15 recites a system comprising (1) “a beverage preparation
machine” and (2) “a remote server” (App. Br. 17, Claims Appendix).
Regarding independent claim 15, the Examiner’s discussion, in total,
amounts to:
With respect to claim 15, Temite et al. teaches a capsule (1) in a
capsule extraction unit (B), circulating a carrier liquid (R)
through the capsule (1) in the extraction unit and by dispensing
a resulting beverage (See figures 4 and 5; para. 0072-0073).
(Final Act. 5; see also, Ans. 5).
The Examiner has not addressed claim 15 as a whole and all its
limitations. (Final Act. 5). Nor has the Examiner indicated that we should
look to any of the other rejections to illuminate the rejection of claim 15.
A prima facie case of obviousness has not been made out in the first
instance by a preponderance of the evidence. Accordingly, we reverse the
rejection of independent claim 15. For the same reasons, we also do not
sustain the rejection of dependent claim 21.
DECISION
The decision of the Examiner to reject claims 1-8, 14-16, and 19-21
is reversed.
REVERSED
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