Ex Parte Leser et al

Patent Trial and Appeal Board

Dec 8, 2017

13525640 (P.T.A.B. Dec. 8, 2017)

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withdrawn from consideration.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.
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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
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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.
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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
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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
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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.
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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.
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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
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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.
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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
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