Ex Parte Leser et alDownload PDFPatent Trial and Appeal BoardDec 8, 201713525640 (P.T.A.B. Dec. 8, 2017) Copy Citation 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. 13/525,640 06/18/2012 Chris K. Leser 5723-221131 6835 23643 7590 12/12/2017 Barnes & Thornburg LLP (IN) 11 S. Meridian Street Indianapolis, IN 46204 EXAMINER PERREAULT, ANDREW D ART UNIT PAPER NUMBER 3788 NOTIFICATION DATE DELIVERY MODE 12/12/2017 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): INDocket@btlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRIS K. LESER, CHARLES T. WALLACE, PHILIP A. DRISKILL, JOHN B. EULER, JASON J. PALADINO, MILAN C. MARAVICH, DANIEL O. DAVIS, JEFFREY A. MANN, and RANDY A. BOWLDS Appeal 2016-004406 Application 13/525,640 Technology Center 3700 Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and BRANDON J. WARNER, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Chris K. Leser et al. (Appellants)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision, set forth in the Final Action (June 23, 2015; hereinafter “Final Act.”), rejecting claims 1—10, 13—21, and 27.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 The Appeal Brief (Oct. 2, 2015; hereinafter “Appeal Br.”) identifies Berry Plastics Corporation as the real party in interest. Appeal Br. 1. 2 Claims 11 and 12, which are the only other pending claims, have been withdrawn from consideration. Appeal Br. 1. Appeal 2016-004406 Application 13/525,640 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A drink cup comprising a base including a bottom adapted to set on a generally flat surface and a sleeve-shaped side wall extending upwardly from the bottom, the base including an interior region bounded by the bottom and the sleeve-shaped side wall and terminating at a rim and a brim mated to the rim of the base to lie in spaced-apart relation to the bottom and to frame an opening into the interior region formed in the base, wherein the sleeve-shaped side wall of the base comprises a first polypropylene polymeric material and the brim comprises a different second polypropylene polymeric material. REJECTIONS3 I. Claim 27 stands rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. II. Claims 1, 2, 6—8, 13—16, 18, 19, and 27 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lin (US 2012/0241462 Al, published Sept. 27, 2012), Park (US 5,348,795, issued Sept. 20, 1994), and Boyer (US 2008/0118738 Al, published May 22, 2008). III. Claims 3—5, 9, 10, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lin, Park, Boyer, and Gervasio (US 2003/0228336 Al, published Dec. 11, 2003). 3 The Examiner’s Answer (Feb. 11, 2016; hereinafter “Ans.”) withdraws a rejection of claims 13—21 and 27 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Ans. 5; see Final Act. 4-5. 2 Appeal 2016-004406 Application 13/525,640 IV. Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Lin, Park, Boyer, and Holcomb (US 2007/0056964 Al, published Mar. 15, 2007). DISCUSSION Rejection I—Written Description The Examiner finds that Appellants’ Specification fails to provide support for the limitations in claim 27 that “the base consists of a first polypropylene polymeric material and the brim consists of a second polypropylene polymeric material different from the first polypropylene polymeric material” (Appeal Br. 17 (Claims App.) (emphasis added)). Final Act. 5. The Examiner explains that “[fjirst and second polypropylene polymeric materials are disclosed in [Appellants’ Specification],” but Appellants have failed to identify where the original Specification limits the materials to consisting of first and second polypropylene polymeric materials exclusively. Ans. 6 (italics omitted). More specifically, the Examiner points out that the materials of the base and the brim are described in Appellants’ original Specification as being polypropylene-U/.svv/, which allows for inclusion of additional elements in these materials. Id. Appellants contend that “[f]irst and second polypropylene polymeric materials are disclosed in [Appellants’ Specification].” Appeal Br. 8. Appellants also submit that “the recitation of ‘consists’ in claim 27 means that the claimed first polypropylene polymeric material excludes other ingredients and the claimed second polypropylene polymeric material excludes other ingredients.” Id. Notably, Appellants do not identify any disclosure in their original Specification that either the base or the brim is 3 Appeal 2016-004406 Application 13/525,640 formed from a material excluding all ingredients other than polypropylene polymeric material. As the Examiner points out (Ans. 6), the Specification describes the base and brim as being formed from “polypropylene-based” materials. Spec. 24, 31. The language “polypropylene-based” requires polypropylene as one of the ingredients, but leaves open the possibility of other ingredients, in addition to the polypropylene, being present in the material. Accordingly, the disclosure of “polypropylene-based” materials does not provide support for the limitation in claim 27 that the base and brim consist of polypropylene polymeric materials exclusively. In the Reply Brief (Mar. 18, 2016; hereinafter “Reply Br.”), Appellants point out, correctly, that claimed subject matter need not be described in haec verba in order to satisfy the written description requirement of 35 U.S.C. § 112, first paragraph. Reply Br. 3; see Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc). However, in order to satisfy the written description requirement, “the disclosure of the application relied upon [must] reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (citing In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). As noted above, Appellants do not point to, nor do we discern, any disclosure in the original application conveying that the base and brim are made from materials that exclude all ingredients other than polypropylene polymeric material. Thus, the disclosure of the application fails to show that Appellants were in possession of the invention claimed in claim 27. Accordingly, we sustain the rejection of claim 27 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 4 Appeal 2016-004406 Application 13/525,640 Rejection II—Obviousness based on Lin, Park, and Boyer Claims 1, 2, 6—8, and27: The Examiner finds that Lin discloses a cup substantially as recited in independent claims 1 and 27 comprising a first material for the base (cup 10) and a second, different material for the brim (lip 20). Final Act. 6. Specifically, Lin discloses a base (“paper-made cup 10”) comprising paper material and a brim (lip 20 made of “plastic material, biobase plastic material or bio-degradable plastic material”). Lin||17, 18. However, the Examiner finds that Lin “does not specifically disclose specifics of the [materials]”—namely, a “cellular polymeric/polypropylene” for the base and a “non-cellular polymeric/polypropylene” for the brim. Final Act. 6. The Examiner determines that it would have been obvious to make Lin’s base (cup 10) of a cellular non-aromatic polymeric/polypropylene material, as taught by Park, for its “excellent cushion and insulative properties” and to make the brim (lip 20) of a non-cellular non-aromatic polymeric/polypropylene material, as taught by Boyer, “to provide improved stiffness and rigidity.” Id. (citing Park, abstract, 17:54—68; Boyer || 1—4, 29). Appellants submit that Lin’s goal is to improve heat isolation in paper cups. Appeal Br. 9. In other words, according to Appellants, the Examiner’s proposed modification of Lin to replace Lin’s paper material with polymeric material “ignores Lin’s goal which is to make a better paper cup [by arranging a gap and isolation part (sleeve) 30 for maintaining the temperature of the beverage in the paper cup], not to make a non-paper cup.” Id. Appellants contend that “[a] proposed modification of a prior art device that would render the prior art device unsatisfactory for its intended purpose 5 Appeal 2016-004406 Application 13/525,640 is improper,” and, “[accordingly, one of ordinary skill in the art would not make Lin’s cup with Park’s material as this would remove the reason for Lin’s improvement of providing an insulative gap between walls of a paper cup.” Id. We do not agree with Appellants that modifying Lin’s cup by making it of a polymeric material, as taught by Park, would render Lin’s cup unsatisfactory for its intended purpose. The Examiner notes, “the intended purpose of Lin is to contain, insulate, protect, and dispense a product.” Ans. 9; see Lin 14. Park discloses a polypropylene foam material having resiliency and low thermal conductivity that is “not only suitable for cushion packaging but also for insulation applications.” Park 17:65—68. Accordingly, the material taught by Park would be suitable for the intended purpose of Lin’s cup. See In re Leshin, 277 F.2d 197, 199 (CCPA 1960) (holding that the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art). Appellants also submit that the rejection does not explain how replacing Lin’s paper material with Park’s cellular non-aromatic polypropylene polymeric material results in a base comprising a first polypropylene polymeric material and a brim comprising a different second polypropylene polymeric material, as required in claims 1 and 27. Appeal Br. 9. This argument does not identify error in the rejection because it ignores the Examiner’s application of Boyer. See Ans. 10. Additionally, Appellants argue that “Park’s teaching that it is an advantage to use open-cell, low density propylene polymer foam rather than closed-cell foams is not a suggestion for modification of Lin since Lin uses paper, not cellular foam material.” Appeal Br. 10. Whether or not Park’s 6 Appeal 2016-004406 Application 13/525,640 polymer foam possesses improved cushioning or insulative properties relative to the paper material of Lin’s base, Park’s teaching that the disclosed polypropylene foam has good resiliency and low thermal conductivity (rendering it suitable for both cushion packaging and insulation applications) conveys that it would be a suitable material for Lin’s cup (the purpose of which is to contain and thermally insulate a hot beverage to keep the beverage hot). See Park 17:65—68; Lin || 2, 4—6. Thus, the Examiner’s reasoning that it would have been obvious to use Park’s material to form Lin’s cup “to provide excellent cushion and insulative properties” (Final Act. 6) has rational underpinnings. For the above reasons, Appellants’ arguments do not apprise us of error in the rejection of independent claims 1 and 27. Thus, we sustain the rejection of independent claims 1 and 27, as well as dependent claims 2 and 6—8, for which Appellants do not present any separate arguments for patentability, as unpatentable over Fin, Park, and Boyer. See Appeal Br. 11. Claims 13—16, 18, and 19: Independent claim 13 requires the brim material to comprise “a non- cellular non-aromatic polymeric material.” Appeal Br. 16 (Claims App.). Appellants argue that because Fin’s brim of non-cellular polymeric material is self-supporting (i.e., rigid), it would not have been obvious to modify it by providing Boyer’s material. Appeal Br. 10. This argument is not persuasive because Boyer’s material is specifically designed to demonstrate stiffness or rigidity (i.e., be self-supporting). Boyer || 4, 19, 55. Thus, Boyer’s material would be suitable for use in Fin’s brim. 7 Appeal 2016-004406 Application 13/525,640 Appellants also argue that “Boyer discloses only material having interconnected pores or cells and does not disclose a non-cellular non aromatic polymeric material.” Appeal Br. 10. The Examiner responds that Boyer discloses the same polymer (“PRO-FAX SC204”) disclosed by Appellants as an illustrative example for the non-cellular non-aromatic polymeric material. Ans. 10—11 (citing Boyer 129); see Specification Amendment filed Dec. 17, 2014 (hereinafter “Spec. Amendment”). Boyer discloses “PRO-FAX SC204” as a suitable polypropylene to be used in the polymeric matrix. Boyer 129. Appellants’ Specification characterizes this commercially available polymer as an illustrative example of “a non-cellular non-aromatic polymeric material.” Spec. Amendment (paragraph added to immediately follow 149). Appellants do not provide any explanation why the Examiner’s finding—that Boyer’s disclosed polymer (“PRO-FAX SC204”) is a non-cellular non-aromatic polymeric material—is unreasonable, given this characterization of the commercially available polymer “PRO-FAX SC204” by Appellants. Appellants also contend that the Examiner does not explain how Fin’s cup with Park’s polypropylene foam material would be modified in view of Boyer and, thus, fails to “provide the required prima facie basis for the rejection.” AppealBr.il. This argument lacks merit. As adequately explained in the rejection itself, and as emphasized by the Examiner in responding to Appellants’ argument, the Examiner proposes to modify Fin in view of Park by providing Park’s material within the base and proposes to further modify Fin in view of Boyer by providing Boyer’s material within the brim. Final Act. 6; Ans. 12. 8 Appeal 2016-004406 Application 13/525,640 For the above reasons, Appellants do not apprise us of error in the rejection of independent claim 13. Accordingly, we sustain the rejection of claim 13, as well as claims 14—16, 18, and 19, for which Appellants present no separate arguments for patentability aside from their dependence from claim 13, as unpatentable over Lin, Park, and Boyer. See Appeal Br. 11. Rejection III—Obviousness Based on Lin, Park, Boyer, and Gervasio The Examiner finds that Gervasio teaches a “concave cross section of a rim to accommodate convex brim with a circular cross section (112 with top of 110)” and determines it would have been obvious to modify Lin to provide these features. Final Act. 7. The Examiner does not specify where such a concave rim cross section is taught in Gervasio. To the extent that the Examiner relies on Gervasio’s drawings to support this finding, Gervasio’s drawings lack sufficient clarity and detail to convey the shape of the rim and, thus, do not support the Examiner’s finding. See Appeal Br. 12 (pointing out the deficiencies in Gervasio’s drawings in this regard). The Examiner adds that Lin’s Figure 1 shows “such a known shape.” Ans. 13. However, Lin’s Figure 1 depicts a unitary brim and base, with a heat isolation part extending downwardly from the brim, and, thus, does not support the Examiner’s finding. In summary, the Examiner does not establish by a preponderance of the evidence that a concave rim cross section to accommodate a convex brim with a circular cross section was known in the art at the time of Appellants’ invention, much less that an arrangement “wherein the top surface of the rim of the base has a concave cross-section providing the top surface with a concave shape arranging outwardly away from the interior region of the 9 Appeal 2016-004406 Application 13/525,640 base,” as required in claim 3, was known. Appeal Br. 15 (Claims App.) (emphasis added); see Reply Br. 7 (pointing out that Lin’s top surface faces upward, not outward). Further, the Examiner’s remarks on pages 7—8 of the Final Action and pages 12—13 of the Answer do not coherently explain why it would have been obvious to modify Lin to have such a rim shape. Accordingly, we do not sustain the rejection of claim 3, or claims 4 and 5, which depend from claim 3, as unpatentable over Lin, Park, Boyer, and Gervasio. We also do not sustain the rejection of claims 9, 20, and 21 as unpatentable over Lin, Park, Boyer, and Gervasio because the Examiner does not articulate any findings or reasoning addressing the brim comprising a core and an endless tube-shaped outer surface surrounding the core, as required in these claims (Appeal Br. 16, 17 (Claims App.)); see Appeal Br. 12-13. With respect to claim 10, Appellants argue that “Gervasio’s rim 112 is the end of wall 110 and is not a separate member having a circular cross- section as required by claim 10.” Appeal Br. 13. This argument does not apprise us of error in the rejection of claim 10 because it attacks Gervasio individually, rather than in combination with Lin, which discloses the lip as a plastic member separate from the wall of paper-made cup 10. Moreover, Appellants’ assertion that Gervasio’s element 112 is not a separate member from wall portion 110 amounts to mere speculation. See Gervasio 129 (describing “a circumferential lip 112 of the container 100”). Accordingly, we sustain the rejection of claim 10 as unpatentable over Lin, Park, Boyer, and Gervasio. 10 Appeal 2016-004406 Application 13/525,640 Rejection IV-—Obviousness Based on Lin, Park, Boyer, and Holcomb Appellants’ only argument in contesting the rejection of claim 17 is that “Holcomb is not cited for and does not make up for the deficiency in Lin, Park and Boyer . . . with respect to the rejection of claim 13.” Appeal Br. 13. Having been apprised of no such deficiency, for the reasons discussed above in addressing claim 13, we also sustain the rejection of claim 17 as unpatentable over Lin, Park, Boyer, and Holcomb. DECISION The Examiner’s decision rejecting claim 27 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is AFFIRMED. The Examiner’s decision rejecting claims 1,2, 6—8, 10, 13—19, and 27 under 35 U.S.C. § 103(a) is AFFIRMED. The Examiner’s decision rejecting claims 3—5, 9, 20, and 21 under 35 U.S.C. § 103(a) is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 11 Copy with citationCopy as parenthetical citation