Ex Parte Trost et al

Patent Trial and Appeal BoardJan 31, 2018

13916659 (P.T.A.B. Jan. 31, 2018)

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. 13/916,659 06/13/2013 Steven M. Trost 26959.99 3778 55709 7590 02/02/2018 STRATEGIC SOLUTIONS INTERNATIONAL, LLC 2823 W 28th Ave STILLWATER, OK 74074 EXAMINER ELOSHWAY, NIKI MARINA ART UNIT PAPER NUMBER 3728 NOTIFICATION DATE DELIVERY MODE 02/02/2018 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): STEVE@SSI.US Steve@Trost.us S arahTrost @ yahoo, com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN M. TROST and JOSEPH W. PRUITT Appeal 2017-004645 Application 13/916,659 Technology Center 3700 Before BRETT C. MARTIN, LYNNE H. BROWNE, and NATHAN A. ENGELS, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—31. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2017-004645 Application 13/916,659 THE INVENTION Appellants’ claims are directed generally “to an insulating container comprising a vessel and a wrap.” Spec. 12. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An insulating container, comprising: a vessel and a wrap; said vessel having a wall, said wall having one or more protrusions on one side of said wall that are matched to one or more corresponding recesses on the opposite side of said wall, wherein said protrusions have a substantially consistent wall thickness, and said wrap cooperates with said protrusions thereby defining one or more void spaces between said wall and said wrap, said void spaces having a depth between about 5 mm and about 12 mm, thereby providing insulating properties to said container. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Fremin US 4,919,983 Apr. 24, 1990 Okushita US 2004/0226948 A1 Nov. 18,2004 REJECTIONS The Examiner made the following rejections: Claims 1—10, 13—20, and 22—31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Okushita. Ans. 2. Claims 11, 12, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Okushita and Fremin. Id. 2 Appeal 2017-004645 Application 13/916,659 ANALYSIS The Examiner finds that Okushita teaches all of the claimed elements except for the sizing of the voids recited in claim 1. Final Act. 2. After first asserting that one of ordinary skill in the art would increase only the void size to meet the claimed limitation {Id.), in the Answer, presumably in response to Appellants’ arguments (App. Br. 7), the Examiner alters the rejection to conclude that it would have been obvious simply to scale up the entire container to achieve the claimed void size (Ans. 2). Appellants provide three reasons for why this upscaling would not have been obvious to one of ordinary skill in the art and also provide a Declaration of Robert P. Grant in support of the same. Reply. Br. 4. Taken together, we find Appellants’ arguments persuasive in showing that the Examiner’s rejection is improper. First, as Appellants state, upsizing the cup of Okushita would result in a cup originally intended as a hand-held sized container for rehydrating dried soup with hot water into a gallon-sized container, which would no longer be suitable for holding with one hand while consuming the soup with the other. Reply Br. 7. Additionally, we agree that such upscaling would result in a cup whereby “scaling up the container to achieve the claimed depth of void spaces would result in a container that cannot sustain the claimed depth of void spaces when being held by hand and cannot even sustain the desired separation between container and sleeve taught by Okushita” because “the paper sleeve [would] immediately collapse onto the sidewall of the paper cup when held.” Id. Such would go against explicit disclosure in Okushita that “teach[es] that a critical element related to their container design depends upon the sleeve and the ribs being able to withstand the force required to properly grip and hold the cup by hand without undue warping of 3 Appeal 2017-004645 Application 13/916,659 the sleeve.” Reply Br. 10 (citing Okushita 123). The Examiner has made no compensation for the effects of increased size utilizing the same materials intended for a smaller cup. As Appellants point out, an increase in the size of the span of the depth would increase deflection, thus no longer making the cup suitable to maintain the void depth as intended. Reply Br. 11. While there may be instances where an increase in size is within the capability of one of ordinary skill in the art, in this particular case such an upscaling would essentially require an entire redesign to deal with the new problems created by the increase in size. Because the Examiner provides no explanation as to why such a redesign would also be within the ordinary skill of one in this art or even what such changes would/could be made, we cannot sustain the rejection. Eremin does not cure the deficiencies noted above with regard to Okushita and so we also do not sustain the rejections over Okushita and Fremin. DECISION For the above reasons, we REVERSE the Examiner’s decision to reject claims 1—31. REVERSED 4