GPCP IP Holdings LLC

Patent Trials and Appeals Board

Mar 16, 2022

2021004476 (P.T.A.B. Mar. 16, 2022)

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. 15/480,143 04/05/2017 Shawn A. Oakes 30654-USA 4465 31743 7590 03/16/2022 Georgia-Pacific LLC 133 Peachtree Street NE GA030-23 Atlanta, GA 30303 EXAMINER POON, ROBERT ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 03/16/2022 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): gplawpatents@gapac.com koch_PAIR@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHAWN A. OAKES Appeal 2021-004476 Application 15/480,143 Technology Center 3700 Before BENJAMIN D. M. WOOD, MICHAEL J. FITZPATRICK, and LISA M. GUIJT, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42(a) (2022). Appellant identifies the real party in interest as GP IP Holdings, LLC. Appeal Br. 4. Appeal 2021-004476 Application 15/480,143 2 CLAIMED SUBJECT MATTER The claims are directed to a disposable cup lid with a reclosable, slideable drink opening cover. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A reclosable cup lid, comprising: a rim portion defining an outer perimeter; a sidewall that extends upwardly from the rim portion; an upper surface that slopes from a first end thereof to a second end thereof; a cavity disposed within the sidewall and above the upper surface; a drink aperture disposed within the cavity and formed through at least a portion of the upper surface to allow fluid flow therethrough; a slideable tab at least partially disposed within the cavity, the slideable tab having at least two generally straight and generally parallel sides, and wherein the cavity has at least two opposing sides that are generally straight, providing a track for the slideable tab, the generally straight and generally parallel sides of both the slideable tab and the cavity have complementary cross-sectional profiles that are S-shaped, C- shaped, or a modified shape thereof; and a shoulder disposed within an inner portion of the sidewall, the shoulder located above the cavity and proximate the generally straight and generally parallel sides of the cavity, wherein the slideable tab comprises an overhang configured to rest on an adjacent portion of the shoulder. REFERENCES Name Reference Date Frankenberg US 1,153,379 Sept. 14, 1915 Wilson US 3,338,468 May 24, 1965 Wong US 2008/0190946 A1 Aug. 14, 2008 Cai US 7,753,224 B2 July 13, 2010 Newman US 9,238,529 B1 Jan. 19, 2016 Appeal 2021-004476 Application 15/480,143 3 REJECTIONS Claims Rejected 35 U.S.C. § References/Basis 1-15, 20 112(b) Indefiniteness 1-3, 6-11, 16, 18, 19 103 Newman, Cai, Frankenberg 4, 5, 17 103 Newman, Cai, Frankenberg, Wong 12-15, 20 103 Newman, Cai, Frankenberg, Wilson OPINION Claims 1-15 and 20-§ 112(b)-Indefiniteness Independent claim 1 recites that “the generally straight and generally parallel sides of both the slideable tab and the cavity have complementary cross-sectional profiles that are S-shaped, C-shaped, or a modified shape thereof.” Appeal Br. 21 (emphasis added). Independent claim 20 contains a similar limitation. Id. at 24. The Examiner determines that “it is not clear what a modified shape[] is since there is no such technical definition for the term.” Final Act. 2. The Examiner reasons that “a modified shape can be any shape having infinite possibilities.” Id. Appellant responds that a claim term does not need to have a “technical definition” provided in the Specification as long as the term would be understood by one of ordinary skill in the art when read in light of the Specification. Appeal Br. 9-10. According to Appellant, “the specification discloses and makes clear that the claimed cross-sectional profiles can be ‘S-shaped, C-shaped or any other suitable curved, non- straight profile including profiles similar to an S-shape, such as in the shape of the number 5.’” Id. at 10 (citing Spec. ¶ 19) (emphasis omitted). Appeal 2021-004476 Application 15/480,143 4 The Examiner counters that “paragraph 19 is completely silent regarding any modified shape,” and notes that it “simply states [that] transitions can be curved, squared, or have any other shape of profile, or combinations thereof.” Ans. 8. The Examiner submits that the term “‘modified shape thereof’ . . . would encompass an infinite number of possibilities that go beyond a curved, non-straight profile described in the disclosure.” Id. Appellant responds in the Reply Brief that “[n]o person of ordinary skill in the art would interpret the claim language ‘complementary cross-sectional profiles that are S-shaped, C-shaped, or a modified shape thereof’ to be ‘any shape.’” Reply Br. 3. During prosecution, a claim may be rejected as indefinite “when the boundaries of the protected subject matter are not clearly delineated and the scope is unclear.” Manual of Patent Examining Procedure § 2173.02(I). We agree with the Examiner that “S-shaped, C-shaped, or a modified shape thereof” is unclear. Ans. 7. Although the language encompasses modifications to an S-shaped or C-shaped cross-sectional profile, it does not limit the type or extent of such modifications, or require the resulting modified S- or C-shape to actually resemble an ‘S’ or ‘C’. The excerpt from the Specification on which Appellant relies2 does not further limit the scope of this language. First, the excerpt describes a specific embodiment, not the invention itself, and thus cannot be used to limit the scope of the claim. See Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1341 (Fed. Cir. 2014) (holding that “it is improper to read limitations from a preferred embodiment described in the specification-even if it is the only 2 Although Appellant cites paragraph 19 of the Specification, the quoted text is from paragraph 23. See Spec. ¶ 23. Appeal 2021-004476 Application 15/480,143 5 embodiment-into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited” (citation omitted)). For example, it would be improper to read this language as limited to only “curved, non-straight” profiles, as the claim language itself does not contain any such limitation, and one can modify an S-shape such that it is composed entirely of several straight lines.3 Final Act. 7. Second, even if we were to read this excerpt into the claims, the excerpt provides little guidance as to what would constitute a “suitable curved, non-straight profile” and be sufficiently similar to an S-shape and C-shape (other than the shape of the letter 5, which includes straight portions). Final Act. 7. For the above reasons, we sustain the Examiner’s rejection of claims 1-15 and 20 under 35 U.S.C. § 112(b) as indefinite. Claims 1-3, 6-11, 16, 18, and 19-§ 103-Newman, Cai, and Frankenberg The Examiner finds that Newman teaches most of the limitations of the reclosable cup recited in independent claims 1 and 16, including a rim portion (flange 60); a sidewall extending upwardly from the rim portion (annular rim 50); an upper surface (top surface 43); a cavity (top surface 42); a drink aperture (80); a slideable tab at least partially disposed within the cavity, the slideable tab having two generally straight and generally parallel sides (slider 30); and the cavity having two generally straight opposing sides (slider grooves 48). Final Act. 3 (citing Newman Figs. 1-3). The Examiner also finds that “Newman does not teach the tab comprising an overhang, the 3 Indeed, the provided example-changing an ‘S’ to a ‘5’-is the result of changing a curved portion of the ‘S’ to a straight portion. See Appeal Br. 10; Spec. ¶¶ 21, 23. Appeal 2021-004476 Application 15/480,143 6 overhang configured to rest on adjacent portion of the shoulder.” Final Act. 4.4 The Examiner therefore relies on Frankenberg for the missing limitations, finding that Frankenberg discloses a lid for a container,5 the lid having a slideable tab (sifting member 13) having an overhang (guide flanges 16) that rests on a shoulder (guide portions 12) within the sidewalls of the lid and located above a cavity (horizontal flat portion 9 of closure 8). Id. (citing Frankenberg Figs. 1, 6). In the Answer, the Examiner clarifies that Frankenberg’s shoulder “comprises a horizontal flange portion (11)” in addition to guide portions 12. Ans. 10 (emphasis omitted). The Examiner determines that one of ordinary skill in the art would have found it obvious “to incorporate an overhang to the Newman slider and a shoulder above the cavity as suggested by Frankenberg in order to better facilitate guiding along the shoulder.” Id. at 7 (citing Frankenberg 1:75-85). Appellant responds, inter alia, that “[t]here is no evidence outside the Applicant’s own specification to conclude that it would have been obvious to incorporate an overhang to the Newman slider and a shoulder above the cavity ‘to better facilitate guiding along the shoulder.’” Appeal Br. 13 (emphasis omitted) (quoting Final Act. 4). Appellant asserts that “Newman’s track 48 is identical to Frankenberg’s track 12,” and “[t]here is no objective evidence that any of these modifications to Newman would 4 The Examiner also finds that Newman does not explicitly teach that the upper surface slopes from a first end to a second end, and relies on Cai for this limitation. Final Act. 3-4. This combination is not disputed. 5 The Examiner apparently considers the entire top 2 of Frankenberg’s container as corresponding to the claimed top. See Ans. 8-9. Appeal 2021-004476 Application 15/480,143 7 ‘better facilitate guiding along the shoulder’-a shoulder that doesn’t exist in either reference.” Id. at 15 (quoting Final Act. 4). In the Answer, The Examiner responds that “incorporating features of Frankenberg closure to that of Newman would have been obvious to one of ordinary skill in the art to facilitate guiding of the tab since the overhang would move along the shoulder as taught by Frankenberg.” Ans. 9-10. In the Answer, the Examiner further clarifies that the proposed modification “is to incorporate a shoulder and an overhang to Newman as taught by Frankenberg,” such that “[n]o part of Newman is removed or replaced.” Ans. 11. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The Examiner “has the initial duty of supplying the factual basis for its rejection,” and “may not, because [of] doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” Id. The Examiner proposes adding an overhang to slider 30 (presumably on top of raised wall 34 of the slider) and a shoulder (presumably to top surface 42). Adding structure to a device likely increases the cost of the device and the complexity of its manufacture. But added cost and Appeal 2021-004476 Application 15/480,143 8 manufacturing complexity “does not necessarily obviate any or all reasons to combine teachings.” Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). We must weigh these disadvantages against evidence in the record suggesting that the additional structure provides a commensurate benefit to the device. See In re Schweickert, 676 Fed. Appx. 988, 995 (Fed. Cir. 2017) (holding that because the Board found that combining the references resulted in “additional complexity,” the Board “needed to explain why a skilled artisan would still have a reason to combine” the references) (citing Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1368 (Fed. Cir. 2016)). The Examiner finds that one of ordinary skill in the art would have added Frankenberg’s horizontal portion 11, guide portions 12, and guide flange 16 to Newman’s lid “to facilitate guiding of the tab since the overhang would move along the shoulder.” Ans. 9-10. But Newman already discloses structure that guides the tab as it moves: “a pair of spaced apart slider grooves 48 in the top surfaces 42 and 43 . . . wherein slider 30 may be engaged in sliding friction within the slider grooves 48 and movable therein between a drink aperture covering position . . . and a vent flap covering position.” Newman 2:8-13, Figs. 1, 2. The Examiner does not point to any evidence that this structure is inadequate, or that adding Frankenberg’s structure would materially improve the operation of Newman’s slider. We are not persuaded that one of ordinary skill in the art would add structure to Newman’s lid to perform a function already performed by existing structure, adding to the cost and complexity of the lid, without any discernable benefit. Accordingly, the Examiner’s reason to combine Newman and Frankenberg lacks a rational underpinning, and we do Appeal 2021-004476 Application 15/480,143 9 not sustain the Examiner’s rejection of claims 1 and 16, as well as claims 2, 3, 6-11, 18, and 19, which ultimately depend therefrom, as unpatentable over Newman, Cai, and Frankenberg. Claims 4, 5, and 17-§ 103-Newman, Cai, Frankenberg, and Wong The Examiner’s rejection of claims 4 and 5, which ultimately depend from independent claim 1; and of claim 17, which depends from independent claim 16; is based on the combination of Newman and Frankenberg, which, as discussed above, is not supported by a rational underpinning. Therefore, for the reasons discussed above, we do not sustain the Examiner’s rejection of claims 4, 5, and 17 as unpatentable over Newman, Cai, Frankenberg, and Wong. Claims 12-15 and 20-§ 103-Newman, Cai, Frankenberg, and Wilson Independent claim 20, like claims 1 and 16, requires the slideable tab of the lid to have an overhang that rests upon a shoulder. Appeal Br. 23 (Claims App.). Claims 12-15 ultimately depend from claim 1. The Examiner relies on the combination of Newman and Frankenberg to teach a lid with the claimed overhang and shoulder. As discussed above, the Examiner’s reason to combine Newman and Frankenberg lacks a rational underpinning. Therefore, we do not sustain the Examiner’s rejection of claims 12-15 and 20 as unpatentable over Newman, Cai, Frankenberg, and Wilson. Appeal 2021-004476 Application 15/480,143 10 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-15, 20 112(b) Indefiniteness 1-15, 20 1-3, 6-11, 16, 18, 19 103 Newman, Cai, Frankenberg 1-3, 6-11, 16, 18, 19 4, 5, 17 103 Newman, Cai, Frankenberg, Wong 4, 5, 17 12-15, 20 103 Newman, Cai, Frankenberg, Wilson 12-15, 20 Overall Outcome 1-15, 20 16-19 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a) (2022). See 37 C.F.R. § 1.136(a)(1)(iv) (2022). AFFIRMED IN PART