Ex Parte Cook et al

Patent Trial and Appeal Board

Mar 23, 2016

12320030 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/320,030 01/16/2009
22242 7590 03/23/2016
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
Matthew R. Cook
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.
20273-133915-US 2641
EXAMINER
COLLINS, RA VEN
ART UNIT PAPER NUMBER
3788
MAILDATE DELIVERY MODE
03/23/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExparteMATTHEWR. COOK, THOMAS Z. FU, and
BARRY SILVERSTEIN
Appeal 2014-00113 7
Application 12/320,030
Technology Center 3700
Before LINDA E. HORNER, ERIC C. JESCHKE, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2014-00113 7
Application 12/320,030
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
12 and 21-33. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a protective sleeve. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A sleeve for encircling a container, comprising:
a body having a first edge and a second edge and a surface
between the edges;
wherein the sleeve includes raised or depressed images
produced by embossing or debossing the surface;
wherein the raised or depressed images are arranged in
columns that begin at the first edge of the sleeve and terminate at
the second edge of the sleeve;
wherein the raised or depressed images are oriented in a
direction different than images in adjacent columns; and
wherein gaps between the columns define air channels
from the first edge to the second edge.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hermanson
Coffin
Dickert
Sadlier
Guloy
Smith
us 2,622,051
us 5,205,473
us 5,826,786
US 6,422,456 B 1
US 2005/0146073 A 1
US 2006/0027640 Al
2
Dec. 16, 1952
Apr. 27, 1993
Oct. 27, 1998
July 23, 2002
July 7, 2005
Feb.9,2006
Appeal 2014-00113 7
Application 12/320,030
REJECTIONS
The Examiner made the following rejections:
I. Claims 1-3, 5, 7-9, 11, and 12 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dickert in view of
Hermanson.
II. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dickert in view of Hermanson and in view of
Smith.
III. Claims 6 and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dickert in view of Hermanson in view
of Coffin.
IV. Claims 21-23, 25, and 27-32 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Sadlier in view of Guloy in
view of Hermanson.
V. Claim 24 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Sadlier in view of Guloy in view of
Hermanson in view of Smith.
VI. Claims 26 and 33 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Sadlier in view of Guloy in view of
Hermanson in view of Coffin.
OPINION
Rejection I: Claims 1-3, 5, 7-9, 11, and 12
The Examiner relies on Dickert in view of Hermanson in rejecting the
claims subject to the first ground of rejection. The Examiner found, in
relevant part, that Dickert discloses a sleeve that "includes raised or
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Appeal 2014-00113 7
Application 12/320,030
depressed images over the surface (col. 3, 11. 28-43); wherein the images are
arranged in columns that begin at a first edge of the sleeve and terminate at a
second edge of the sleeve (Fig. l)[; and] gaps between the columns [that]
define air channels from the first edge to the second edge (col. 1, 11. 22-38)."
See Final Act. 2-3; Ans. 3, 8.
Hermanson was added to teach "embossments and depressions on a
surface." Ans. 8. The Examiner found that "Figure 4 of Hermanson
displays an embossed surface of offset diamonds that also allows for proper
airflow away from the sleeve and container in the same manner as disclosed
by [A ]ppellants." Id.
Appellants argue the claims subject to the first ground of rejection as a
group. Appeal Br. 4-7. We select claim 1 as representative of the group,
and claims 2, 3, 5, 7-9, 11, and 12 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv). With respect to claim 1, Appellants argue that Dickert
does not disclose "air channels" defined by gaps between adjacent columns
of images and does not include columns with raised or depressed images that
are oriented in a direction different than images in adjacent columns.
Appeal Br. 4-5. Figure 1 of Dickert clearly shows columns of embossments
which "can take the form of nubs and depressions." Col. 3, 11. 28-29.
Figure IA "shows an embossure pattern for the outside and inside surfaces
of the sleeve which is positive/negative in terms of having alternating raised
areas and depressed areas, but is not a mirror image of the one formed on the
opposite surface of the sleeve." Col. 3, 11. 35--40. We agree with the
Examiner (Ans. 8) that there are channels that allow air to flow that are
formed by the embossed pattern of nubs and depressions as shown in Figure
1. The pattern illustrated in Figure IA forms substantially straight channels
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Appeal 2014-00113 7
Application 12/320,030
with a 45° vertical pitch and sinuous channels vertically across the height of
the sleeve.
Appellants argue that the Figure 5 embodiment shown in Dickert
would produce horizontal channels, if any. Reply Br. 2-3. Figure 5 shows
embossments that extend both up and down from the plane of the raw
material. Col. 3, 11. 8-13. The nubs and depressions illustrated in Figure 5,
when the sleeve is disposed about a cup, form spiral channels between them
allowing air to circulate from the bottom edge to the top edge of the sleeve.
The Appellants' argument that Figure 5 shows only horizontal channels is
not persuasive because Figure 5 is not consistent with horizontal
corrugations. Horizontal corrugations would not show the vertical line on
the right-hand edge of Figure 5.
Appellants also argue that Hermanson does not include columns with
raised or depressed images that are oriented in a direction different from the
images in adjacent columns. Appeal Br. 5. The Examiner found, however,
that the nubs and depressions of Dickert "allow[] for the pattern to extend
into and out of the sleeve and become orientated in a direction different than
the images in the adjacent column." Ans. 8. 1 For the reasons that follow,
we agree with this finding as to Dickert. The Specification does not define
"oriented" or use any etymologically related word. We are left then with the
common ordinary meaning of "oriented." Merriam-Webster.com gives the
following as the most nearly appropriate definition of the verb "orient": "to
place (something) in a particular position or direction."
http://www.merriam-webster.com/dictionary/orient (last viewed March 4,
1 Appellants do not specifically address this finding in the Reply Brief when
responding to the points raised on page 8 of the Answer. See Reply Br. 2-3.
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Appeal 2014-00113 7
Application 12/320,030
2016 ). Dickert specifically says that the embossing pattern can take the
form of nubs and depressions. Col. 3, 11. 28-29. In addition, in describing
Figure 5, Dickert says
[B]oth sides of the cup holder sleeve 20 bear embossments, i.e.,
there are embossments on the side that is to be the sleeve interior
between side edge 1 Oc and fold line 11 as well as on the side that
is to be the sleeve exterior between side edge 1 Od and fold line
12.
Col. 3, 11. 8-13. Thus Dickert teaches raised or depressed images oriented in
a direction different than images in adjacent columns, as required by claim
1. Dickert also teaches embossments which project in both directions from
the base material and which are arranged in columns. Figure IA shows
vertical columns of embossments where alternate embossments project in
opposite directions. Connecting contiguous embossments that project in the
same direction yields columns which spiral at a 45° angle around the sleeve,
an arrangement of "columns" clearly contemplated by the Specification. See
Spec. 5, para. 39 (describing that the air channels may have a vertical pitch
of approximately 45° with reference to the vertical axis from the top to the
bottom of the sleeve).
In view of the foregoing, Appellants do not apprise us of error, and we
affirm the rejection of claims 1-3, 5, 7-9, 11, and 12.
Rejection II: Claim 4
Appellants argue the deficiencies of Dickert and Hermanson as
applied to claim 1, and further argue that Smith does not cure those
deficiencies. But as noted above, Dickert and Hermanson render claim 1
obvious. Appellants do not contest that Smith teaches the subject matter
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Application 12/320,030
added by claim 4. Accordingly, Appellants do not apprise us of error, and
the rejection of claim 4 is affirmed.
Rejection III: Claims 6 and 10
As discussed above in connection with claim 1, Dickert discloses
raised or depressed images oriented in opposite directions that define
channels with a 45° lead angle around the sleeve. Accordingly, Appellants
have not apprised us of error, and the rejection of claim 6 is affirmed.
We note that Appellants addressed claim 10 only in their Reply, and
only as it is included with the group consisting of claims 1-12. Reply Br. 2-
5. The rejection of claim 10 is affirmed for the same reasons that the
rejection of claim 1 is affirmed.
Rejection IV: Claims 21-23, 25, and 27-32
The Examiner relies on Sadlier in combination with Guloy and
Hermanson to reject claims 21-23, 25, and 27-32. The Examiner finds that
both Sadlier and Guloy present embossed images, and that Sadlier teaches
that embossments in one column may be oriented differently from
embossments in an adjacent column, as shown in Figure 1. Ans. 9.
Appellants argue the claims subject to the fourth ground of rejection as a
group. Appeal Br. 7-8; Reply Br. 5-6. We select claim 21 as
representative, and claims 22, 23, 25, and 27-32 stand or fall with claim 21.
37 C.F.R. § 41.37(c)(l)(iv). In particular, Appellants argue that "Figure 1 of
Sadlier ... does not include embossed images or embossed images oriented
in alternating directions." Reply Br. 5. For the reasons that follow, we
agree with the Examiner's findings as to Sadlier.
An enlarged portion of Figure 1 of Sadlier showing a vertical cross
section of a cup wall is reproduced below:
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Appeal 2014-00113 7
Application 12/320,030
• • -.. • a
Figure 1 is a vertical cross-sectional elevational view of a cup made
according to the invention in Sadlier. Col. 3, 11. 13-14.
In the enlargement shown above, a vertical corrugation is visible in
cross-section at 18 and the area just to the right with no sectioning in the
Figure is the adjacent leg of the corrugation. The oppositely oriented
embossments are also shown in Figure 4A, perhaps more clearly because the
view is taken in horizontal cross-section. In this view, the projections and
depressions of the corrugations are equal and opposite. Sadlier says that
"[i]nstead of scores or corrugations embossed dimples or any other type of
integral deformities can be formed into the sheet." Col. 6, 11. 1-3.
Appellants fail to appreciate what is shown in Figure 1 of Sadlier, and
simply deny that it includes "embossed images or embossed images oriented
in alternating directions." Reply Br. 5. Because Sadlier shows equal and
opposite corrugations in Figure 1, as the Examiner found, and more clearly
in Figure 4A, and further discloses that the corrugations can be replaced with
embossed dimples, Appellants fail to apprise us of error. Accordingly, we
affirm the rejection of claims 21-23, 25, and 27-32.
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Application 12/320,030
Rejection V: Claim 24
Claim 24 is rejected over Sadlier in view of Guloy, Hermanson, and
Smith. The Examiner found that Smith teaches the depth of embossments
claimed in claim 24, and Appellants' argument centers on the failure of
Sadlier and Guloy to teach the "raised or depressed images [that] are
oriented in a direction different than images in adjacent columns." Appeal
Br. 9. This is the same as the argument presented in connection with claim
21, and it fails to apprise us of error for the same reasons. Accordingly, the
rejection of claim 24 is affirmed.
Rejection VI: Claims 26 and 33
Claims 26 and 33 are rejected over combination of Sadlier, Guloy,
Hermanson, and Coffin. Appellants argue that the combination of Sadlier
and Guloy fails to teach "raised or depressed images [that] are oriented in a
direction different than images in adjacent columns." Appeal Br. 9. This is
the same argument as presented in connection with claim 21, and it fails to
apprise us of error for the same reasons discussed in connection with claim
21. Accordingly, the rejection of claims 26 and 33 is affirmed.
DECISION
For the above reasons, the Examiner's rejection of claims 1-12 and
21-33 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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