Appeal No. 2006-1213
Application 10/396,557
The claimed method encompassed by representative independent claim 192 involves the
steps of puncturing a food substance containing cartridge with at least one puncture member of
an extraction device in a part of the cartridge containing “a solids retention member,” and after
“injecting an extraction fluid to open another portion of the cartridge” so as to extract the food
from the cartridge, “removing the puncture member from the opening, such that the solids
retention member retains the solid substance within the interior of the” cartridge. Dependent
claim 20 specifies that “the solids retention member . . . recloses when the puncture member is
removed,” and dependent claim 22 specifies that “the solids retaining member comprises a
fabric.”
In order to establish a prima facie case of obviousness under § 103(a), the examiner must
show that some objective teaching, suggestion or motivation in the applied prior art taken as a
whole and/or knowledge generally available to one of ordinary skill in this art would have led
that person to the claimed invention as a whole, including each and every limitation of the claims
arranged as required by the claims, without recourse to the teachings in appellants’ disclosure.
See generally, In re Kahn, 441 F.3d 977, 985-88, 78 USPQ2d 1329, 1334-37 (Fed. Cir. 2006);
In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002); In re Rouffet,
149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996);
In re Fritch, 972 F.2d 1260, 1265-66, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Fine, 837 F.2d 1071,
1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469,
473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
Cartridges or capsules containing solid food preparations for use in dispensing machines,
wherein the contents are extracted with a fluid under pressure, are known in the art as seen from
Favre and acknowledged by appellants in the specification (page 1, ll. 22-28). Appellants further
acknowledge the problem of retaining unextracted solid substances in the cartridge or capsule
2 We suggest that upon further prosecution of the appealed claims subsequent to this appeal, the
examiner consider the language “[a] method for preparing extracting,” “a food product that
comprises the food substance and a solid substance” and “extraction of the to food” in the
preamble, first clause and second clause of claim 19, respectively.
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