Ezaz-Nikpay, Khosro et al.

Patent Trials and Appeals Board

Feb 3, 2020

14433904 - (D) (P.T.A.B. Feb. 3, 2020)

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.
14/433,904 04/07/2015 Khosro Ezaz-Nikpay 43149.10 2726
26486 7590 02/03/2020
BURNS & LEVINSON, LLP
125 HIGH STREET
BOSTON, MA 02110
EXAMINER
LACHICA, ERICSON M
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
docketing@burnslev.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KHOSRO EZAZ-NIKPAY,
DANIEL KOHN, HENDRICK SABERT,
HIROMI SASAKI, and AURELIE SCHMITT
____________

Appeal 2019-003851
Application 14/433,904
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 16, 17, 36–38, and 42 of Application
14/433,904 Final Act. (September 11, 2017). We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Zendegii Ltd. as the real party in interest.
Appeal Br. 3.
Appeal 2019-003851
Application 14/433,904
2
I. BACKGROUND
The ’904 Application describes a method for rapidly dispensing
beverages from the contents of a cartridge which has been inserted into a
machine. Spec. ¶ 1. The ’904 Application describes the cartridge as
containing solid freeze-dried fruit or vegetable ingredients and/or freeze-
dried fruit or vegetable juices. Id.
Claim 16 is representative of the ’904 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief (emphasis
added).
16. A method of producing a beverage, the method
comprising:
breaking a seal of a sealed flexible, expandable cartridge
having an exterior and an interior, wherein the cartridge
comprises loose, dry freeze-dried fruit and/or vegetable
ingredients in its interior;
introducing a charge of chilled water into the interior of
the cartridge; and acting with a kneading mechanism on or
from the exterior of the cartridge to apply shear force to the
freeze-dried fruit and/or vegetable ingredients, the cartridge
being expandable so that the freeze-dried fruit and/or vegetable
ingredients are able to be agitated vigorously in the interior of
the cartridge and to contact the freeze-dried fruit and/or
vegetable ingredients with the water under low hydrostatic
pressure applied by the kneading mechanism, which is less than
10 kiloPascal, to produce a beverage reconstituted from the
freeze dried fruit and/or vegetable ingredients.
Appeal Br. 15 (emphasis added).
Appeal 2019-003851
Application 14/433,904
3
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:2
1. Claims 16, 36, and 42 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Colston,3 Coffee Detective,4
Peterson,5 and MacMahon.6 Final Act. 3–6.
2. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Colston, Coffee Detective, Peterson,
MacMahon, and Rapparini.7 Final Act. 6–7.
3. Claims 37 and 38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Colston, Coffee Detective,
Peterson, MacMahon, and Hedenburg.8 Final Act. 7–8.
III. DISCUSSION
Appellant’s initial brief argues for reversal of all of the rejections at
issue based upon the limitations in claim 16. See Appeal Br. 5–14. We,
therefore, select claim 16 as representative of the claims subject to this

2 Claims 18–35 and 39–41 are withdrawn from consideration by the
Examiner pursuant to 37 C.F.R § 1.42(b) as drawn to a non-elected
invention. Final Act. 1, 2.
3 US 6,805,041 B2, issued Oct. 19, 2004.
4 3 Ways to make and enjoy iced coffee drinks at home, Coffee Detective,
July 15, 2011, http://www.coffeedetective.com/iced-coffee-drinks-at-
home.html (accessed Mar. 31, 2017) (hereinafter “Coffee Detective”).
5 US 2011/0076361 A1, published Mar. 31, 2011.
6 US 2009/0311384 A1, published Dec. 17, 2009.
7 US 2012/0100259 A1, published Apr. 26, 2012.
8 US 4,550,653, issued Nov. 5, 1985.
Appeal 2019-003851
Application 14/433,904
4
ground of rejection and limit our discussion to this claim. 37 C.F.R.
§ 41.37(c)(1)(iv). For the reasons set forth below, we do not reach
Appellant’s separate argument for reversal of the rejection of claim 42.
Reply Br. 2.
A. Rejection of claims 16, 36, and 42 as unpatentable over the
combination of Colston, Coffee Detective, Peterson, and
MacMahon.
According to Appellant, the combination of Colston, Coffee
Detective, Peterson, and MacMahon does not describe or suggest the
following element of claim 16: “acting with a kneading mechanism . . . to
contact the freeze-dried fruit and/or vegetable ingredients with []water under
low hydrostatic pressure applied by the kneading mechanism, which is less
than 10 kiloPascal.” Appeal Br. 7.
There is no dispute that a low hydrostatic pressure of about 10
kiloPascal is equivalent to about 0.1 bar gauge. Final Act 4; Appeal Br. 8.
Appellant argues that Colston “is deficient with respect to applying
low hydrostatic pressure[,] which is less than 10 kilo[P]ascal, via a kneading
mechanism.” Appeal Br. 8. Appellant contends that Colston is distinguished
from claim 16 because the reference “actually teaches . . . that the aqueous
fluid is injected at a pressure from about 0.1 to about 16 bar gauge.” Id.; see
Colston 7:35–38. In other words, Appellant argues that Colston’s low
hydrostatic pressure applied by fluid injection does not describe or suggest
the “low hydrostatic pressure applied by the kneading mechanism” of claim
16. Appeal Br. 7–8.
The Examiner responds that “Colston teaches that low pressures
beginning at about 0.1 bar gauge w[ere] well known and conventional to use
in making beverages at the time of the invention.” Answer 13 (the Examiner
Appeal 2019-003851
Application 14/433,904
5
found that Colston teaches “using low pressure brewing and that the
pressures used can be from about 0.1 to about 16 bar gauge”) (citing Colston
3:9–11; 7:35–36).
The Examiner further responds by finding that Peterson describes a
suitable cartridge pressure range of 1–2 psi, which “overlaps the claimed
pressure range of less than 10 kilo[P]ascal.” Answer 16 (citing Peterson
¶ 48); see also Answer 17. The Examiner concludes that because “Colston,
Coffee Detective, Peterson, and MacMahon teach[] that a variety of
pressures and temperature, including ambient and/or near freezing
temperatures, and low pressures, e.g.[,] 1–2 psi, were suitable conditions for
making beverages from a flexible cartridge,” the applied prior art
“reasonably teaches the claimed limitations” (Answer 17–18) (emphasis
added).
We determine that the Examiner has not provided adequate reasoning
to rebut Appellant’s arguments. In particular, the Examiner does not provide
any evidence or explanation of why the low hydrostatic pressure applied by
fluid injection would have described or suggested use of Colston’s kneading
mechanism to apply similarly low, or even lower, pressure. Compare
Colston 7:35–36; Peterson ¶ 48 with Colston 14:22–31; Fig. 4. See also KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to
identify a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention
does.”).
To the extent that the Examiner found that Colston’s apparatus “is
adaptable to carry out . . . low pressure beverage brewing” (Colston 3:9–11),
Answer 13, the Examiner has not made any findings showing that Colston’s
kneading mechanism is adaptable to apply hydrostatic pressure less than 10
Appeal 2019-003851
Application 14/433,904
6
kiloPascal. Evidence in the record thus provides an insufficient nexus
between low hydrostatic pressures, which are applied by fluid injection, and
Colston’s kneading mechanism to “agitate the contents of” a cartridge “by
oscillating or peristaltic pumping of the” cartridge’s membrane. Colston
14:30–31; see, e.g., Final Act 12–13. In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”).
In the absence of a reasoned explanation why the ordinarily skilled
artisan would have used Colston’s kneading mechanism to apply low
hydrostatic pressure conventionally associated with liquid injection, we infer
that the Examiner has engaged in impermissible hindsight in concluding that
the applied prior art renders claim 16 obvious. In re Rouffet, 149 F.3d 1350,
1358 (Fed. Cir. 1998) (“hindsight” is inferred when the specific
understanding or principal within the knowledge of one of ordinary skill in
the art leading to the modification of the prior art in order to arrive at
appellant’s claimed invention has not been explained).
In view of the foregoing, we determine that the Examiner reversibly
erred in rejecting claim 16 as unpatentable over the combination of Colston,
Coffee Detective, Peterson, and MacMahon. Accordingly, we also reverse
the rejection of claims 36 and 42, which depend from claim 16.
B. Rejection of claim 17 as unpatentable over the combination of
Colston, Coffee Detective, Peterson, MacMahon, and
Rapparini.
Appellant argues that the rejection of claim 17 as unpatentable over
the combination of Colston, Coffee Detective, Peterson, MacMahon, and
Appeal 2019-003851
Application 14/433,904
7
Rapparini should be reversed because the Examiner has not established a
prima facie case of obviousness with respect to independent claim 16.
Appeal Br. 13 (“Rapparini does not cure the deficiencies of the collective
teachings of” Colston, Peterson, and MacMahon). As discussed above, we
have reversed the rejection of claim 16. We, therefore, also reverse the
rejection of claim 17.
C. Rejection of claims 37 and 38 as unpatentable over the
combination of Colston, Coffee Detective, Peterson,
MacMahon, and Hedenberg.
Appellant essentially argues that the rejection of claims 37 and 38 as
unpatentable over the combination of Colston, Coffee Detective, Peterson,
MacMahon, and Hedenberg should be reversed because the Examiner has
not established a prima facie case of obviousness with respect to
independent claim 16. Id. (“[T]he rejection presents no sound rationale for
modifying Colston in view of” Coffee Detective, Peterson, MacMahon, and
Hedenberg “to arrive at the presently claimed invention”). As discussed
above, we have reversed the rejection of claim 16. We, therefore, also
reverse the rejection of claims 37 and 38.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
16, 36, 42 103(a) Colston, Coffee Detective, Peterson, MacMahon 16, 36, 42
17 103(a) Colston, Coffee Detective, Peterson, MacMahon, Rapparini 17
Appeal 2019-003851
Application 14/433,904
8
Claims Rejected 35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
37, 38 103(a) Colston, Coffee Detective, Peterson, MacMahon, Hedenberg 37, 38
Overall Outcome 16, 17, 36–38, 42
REVERSED