YETI Coolers, LLC

Patent Trials and Appeals Board

Mar 24, 2021

2021001954 (P.T.A.B. Mar. 24, 2021)

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.
15/804,759 11/06/2017 Matthew Joseph Petrillo 008117.02097\US 1028
161921 7590 03/24/2021
BANNER & WITCOFF, LTD.
71 SOUTH WACKER DRIVE
SUITE 3600
CHICAGO, IL 60606
EXAMINER
NEWAY, BLAINE GIRMA
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
03/24/2021 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):
PTO-161921@bannerwitcoff.com
yeticoolers.pair@anaqua.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW JOSEPH PETRILLO and
JOHN ALAN TOLMAN

Appeal 2021-001954
Application 15/804,759
Technology Center 3700
____________

Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and
JEREMY M. PLENZLER, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, YETI Coolers, LLC,1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s Non-Final Action rejecting claims 1–6 and 8–26. 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.
Appellant identifies itself as the sole real party in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
The Specification
The Specification relates to “[c]ontainers [that] can be filled with hot
or cold drinkable liquids, such as water, coffee, tea, a soft drink, or an
alcoholic beverage, such as beer,” and which “help maintain the temperature
of the liquid.” Spec. ¶2.
The Claims
Claims 1–6 and 8–26 are rejected. Non-Final Act. 1. Claims 27–30
are withdrawn. Id. Claim 7 is cancelled. Appeal Br. 16. No other claims
are pending. Id. at 15–21. Independent claim 1 is representative and
reproduced below.
1. An insulating device comprising:
a container comprising:
a first inner wall having a first end with a threaded
sidewall and an opening extending into an internal reservoir;
a second outer wall forming an outer shell of the
container, the second outer wall having a second end configured
to support the container on a surface;
a sealed vacuum cavity forming an insulated double wall
structure between the first inner wall and the second outer wall;
a lid adapted to seal the opening of the container, the lid
comprising:
an upper portion having a frustoconical surface spaced
between a circular top surface and a cylindrical surface, the
upper portion further having a handle that is integrally-molded
to the lid at two diametrically opposed points;
a lower portion comprising:
a sidewall having a threaded area adapted to be
received into the threaded sidewall of the first inner wall
of the container;
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an upper gasket positioned above the threaded area
of the sidewall, wherein the upper gasket is configured to
be compressed between the sidewall of the lid and a top
portion of the container;
a channel extending around a lower area of the
sidewall configured to retain a lower gasket,
wherein the lower gasket is configured to compress
against a lip structure extending from the first inner wall of the
container when the threaded area of the lower portion of the lid
is received by the threaded sidewall of the first inner wall of the
container,
wherein the lower gasket has a c-shaped cross-section,
wherein the lower gasket comprises a radially extending
vent structure, and
wherein the lower gasket and the radially extending vent
structure are configured to compress in a radial direction when
compressed against the lip structure.
Id. at 15–16.
The Examiner’s Rejections
The following rejections, all pursuant to 35 U.S.C. § 103, are before
us:
1. claims 15–20 as unpatentable over Goto,2 Lin,3 Mays,4 and
Corsette5 (Non-Final Act. 3);
2. claims 1–6, 8, 9, 13, and 14 as unpatentable over Goto, Lin,
Mays, Corsette, and Bondin6 (id. at 5);
3. claim 21 as unpatentable over Goto, Lin, Mays, Corsette, and

2 US 6,170,693 B1, issued Jan. 9, 2001 (“Goto”).
3 US 8,215,511 B1, issued July 10, 2012 (“Lin”).
4 UK 678,830, published Sept. 10, 1952 (“Mays”).
5 US 3,596,808, issued Aug. 3, 1971 (“Cossette”).
6 FR 993,552, published Nov. 2, 1951 (“Bondin”).
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Janson7 (id. at 9);
4. claims 22–25 as unpatentable over Lin, Mays, Corsette,
Bondin, and Janson (id. at 10);
5. claims 10 and 11 as unpatentable over Goto, Lin, Mays,
Corsette, Bondin, and Janson (id. at 12);
6. claim 12 as unpatentable over Goto, Lin, Mays, Corsette,
Bondin, and Shibuki8 (id. at 13); and
7. claim 26 as unpatentable over Lin, Mays, Corsette, Bondin,
Janson, and Goto (id.).
DISCUSSION
Appellant argues against the rejection of claim 1 (Rejection 2) and
then simply relies on those same arguments for the remaining claims and
rejections. Accordingly, we address the rejection of claim 1 first.
Rejection 2
Goto discloses a drinking receptacle. Goto Title. The Examiner
found that Goto teaches much, but not all, of the subject matter of claim 1.
Non-Final Act. 5–6. The exceptions are: (1) the “frustoconical” and
“handle” limitations of the “lid” for which the Examiner relies on a
modification in view of Lin; (2) the lower gasket “c-shaped cross section”
limitation for which the Examiner relies on a modification in view of Mays;
and (3) the lower gasket having a “radially extending vent structure”
limitation for which the Examiner relies on a modification in view of
Corsette. Id. at 6–9.

7 US 2005/0153637 Al, published July 14, 2005 (“Janson”).
8 US 2015/0232232 Al, published Aug. 20, 2015 (“Shibuki”).
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Appellant argues that the proposed modification does not satisfy the
claim language reciting that “the lower gasket and the radially extending
vent structure are configured to compress in a radial direction.” Appeal Br.
4–9. Appellant concedes that “Corsette discloses the gasket portion 38a
includes radial grooves 44, which communicate with the outside
atmosphere.” Id. at 5. But Appellant argues that Corsette’s gasket and
radial grooves “are compressed between two structures . . . in the axial
direction only.” Id. at 5–6. Appellant’s argument is inapposite, as pointed
out by the Examiner. See Ans. 3 (“However, it is the examiner’s positon
that the compression in the radial direction is taught by Mays which teaches
a c-shaped gasket (fig. 4) and not Corsette.”). Indeed, in the Non-Final
Action, the Examiner found that “Mays teaches a gasket 43 having a c-
shaped cross-section wherein the gasket 43 is capable of compressing in a
radial direction when compressed against a lip structure.” Non-Final Act. 7
(citing Mays Fig. 4, 3:6–10). The Examiner’s proposed modification
incorporates Corsette’s vents but not Corsette’s gasket. Thus, Appellant’s
criticism of Corsette as not disclosing radial compression of its gasket and
vents does not apprise us of error. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”).
Appellant argues that “[t]he proposed modification of Corsette’s
gasket renders Corsette’s pump device inoperable for its intended purpose.”
Appeal Br. 10. This argument, like the one addressed immediately above, is
inapposite given that the Examiner’s rejection is not based on a modification
of Corsette’s gasket.
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Appellant argues that “Corsette teaches away from the claimed
invention” in that it “teaches preventing compression of the gasket portion
38a and radial grooves 44 in the radial direction and would lead a person of
ordinary skill in a direction divergent from the path taken by the Applicant.”
Appeal Br. 11. However, the Examiner found that May teaches radial
compression of a gasket. Non-Final Act. 7; Mays 3:6–10, Fig. 4. Appellant
does not dispute that finding or otherwise address May’s teaching. That
deficiency alone renders the teaching away argument unpersuasive. See e.g.,
Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)
(“Where the prior art contains ‘apparently conflicting’ teachings (i.e., where
some references teach the combination and others teach away from it) each
reference must be considered ‘for its power to suggest solutions to an artisan
of ordinary skill. . . . consider[ing] the degree to which one reference might
accurately discredit another.” (citation omitted)); see also In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more
than one alternative does not constitute a teaching away from . . .
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed.”). Ultimately, Appellant fails to
explain how Corsette’s axially compressed gasket teaching would lead a
person of ordinary skill in the art away from the specific teaching of May on
which the Examiner relies.
Appellant argues that the rejection relies on impermissible hindsight
with respect to the modification in view of Corsette. Appeal Br. 10. This is
so, according to Appellant, because the Examiner:
explicitly states the Applicant’s own basis as rationale for adding
the vents of Corsette to the modified gasket of Goto. Compare
Office Action, p. 7, (“[i]t would have been obvious to one of
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ordinary skill in the art at the time of the invention was file to
have provided the lower gasket of the modified Goto, vents, for
the predictable result of venting trapped air during closing the
lid” (emphasis added) with Application, ¶[40] “the vent structure
246 may allow a gas pressure within the reservoir 112 to be
lowered by allowing a portion of gas to escape through the
threaded interface between structures 182 and 212, while
preventing a liquid stored in the reservoir 112 from leaking.”
Appeal Br. 10. But the relevant question, with respect to hindsight, is
whether the Examiner identified an adequate reason for why a person of
ordinary skill in the art would have made the proposed modification at the
time of the alleged invention without resorting to Appellant’s Specification.
In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (“The ‘motivation-
suggestion-teaching’ requirement protects against the entry of hindsight into
the obviousness analysis, a problem which § 103 was meant to confront.”);
Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008)
(“We are mindful that in KSR [Int’l Co. v. Teleflex Inc., 550 U.S. 398
(2007)], the Supreme Court made clear that a finding of teaching,
suggestion, or motivation to combine is not a ‘rigid rule that limits the
obviousness inquiry.’ . . . We must still be careful not to allow hindsight
reconstruction of references to reach the claimed invention without any
explanation as to how or why the references would be combined to produce
the claimed invention.”).
Appellant argues that the Examiner “fails to cite to any reference for
supporting the alleged rationale of venting trapped air during closing of the
lid.” Appeal Br. 10. However, the Examiner cited Corsette’s teaching that
its vented gasket allows for air to enter the container to maintain (or re-
establish) equilibrium with atmospheric pressure. Non-Final Act. 7;
Corsette 3:46–48 (“combined gasket and diaphragm valve 38 which
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functions . . . to admit atmospheric air into the container whenever the fluid
pressure within the container drops appreciably below atmospheric
pressure”).9 The Examiner concluded that “[i]t would have been obvious to
one of ordinary skill in the art at the time the invention was filed to have
provided the lower gasket of the modified Goto, vents, for the predictable
result of venting trapped air during closing of the lid.” Non-Final Act. 7. It
is true that the Examiner did not cite a reference for the specific concept of
venting out trapped air. But the Examiner did cite a reference for teaching a
vent extending radially through a gasket to allow for a liquid-dispensing
container to maintain (or re-establish) equilibrium with atmospheric
pressure. That is adequate. The person of ordinary skill is not an automaton
but rather possesses an ordinary skill, creativity, and common sense. KSR,
550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”); Perfect Web Techs., Inc. v. InfoUSA, Inc.,
587 F.3d 1324, 1329 (Fed. Cir. 2009) (“[W]hile an analysis of obviousness
always depends on evidence that supports the required Graham factual
findings, it also may include recourse to logic, judgment, and common sense
available to the person of ordinary skill that do not necessarily require
explication in any reference or expert opinion.”).
In KSR, the Court held that the lower court had erred “in its
assumption that a person of ordinary skill attempting to solve a problem will
be led only to those elements of prior art designed to solve the same
problem.” 550 U.S. at 420. The Court noted: “Common sense teaches,

9 The Examiner erroneously cited Corsette at “col. 3, lines 48-50” but we
understand that lines 46–48 were intended, and Appellant has not taken issue
with respect to the citation.
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however, that familiar items may have obvious uses beyond their primary
purposes.” Id. There is no need to resort to Appellant’s Specification
because the skilled artisan would understand that a known vent structure for
allowing air to enter a container could obviously be adapted to allow air to
exit a container because both are processes to maintain (or re-establish)
equilibrium with atmospheric pressure. Appellant’s hindsight argument is
not persuasive of error.
Appellant argues that the proposed modification does not satisfy the
claim language reciting “an upper portion having a frustoconical surface
spaced between a circular top surface and a cylindrical surface” (emphasis
added). Appeal Br. 9. For these features, the Examiner relied on Lin. Non-
Final Act. 7 (citing Lin 2:49–51, Figs. 1–8). Appellant points out, however,
the portion of Lin that the Examiner relies on for a cylindrical surface, i.e.,
element 22, is “a ‘flared brim’ which forms ‘a continuation of the parabolic
shape 40’ and lid body 34.” Appeal Br. 9 (citing Lin 4:60–65, Figs. 4–7).
The Examiner responds that “fig. 2 (the top view of fig. 1) of Lin clearly
shows that element 22 is not ‘flared’.” Ans. 4. We understand the Examiner
to be pointing out that, because element 22 is not visible in Figure 2, it must
not extend radially further than lip 20 and thus must have a cylindrical
surface. The Examiner is correct that logic dictates that element 22 should
be visible in Figure 2 if it indeed forms “a continuation of the parabolic
shape 40.” Lin 4:64.
The problem for the Examiner, however, is that the weight of the
evidence shows that Lin element 22 is not cylindrical. For starters, Lin
refers to that structure as a “vertically flared brim 22.” Lin 4:63. Secondly,
several Lin figures show the brim 22 as lacking a cylindrical surface.
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Figures 1 and 4 through 7 clearly show flaring. Figures 8, 9, and 17 also
show flaring but less pronounced. Notably, all of Lin’s seventeen Figures
purportedly show views with respect to the same “preferred embodiment.”
Lin 3:48–4:14. In view of Lin’s explicit description of element 22 as
vertically flared and a continuation of a parabolic shape and in view of
multiple Lin Figures illustrating it as such, we cannot sustain the Examiner’s
finding that element 22’s absence from Figure 2 disclose or teaches a
cylindrical surface. Cf. In re Wilson, 312 F.2d 449, 454 (CCPA 1963)
(“Patent drawings are not working drawings and this argument is predicated,
moreover, on a greatly enlarged section of a small drawing obviously never
intended to show the dimensions of anything.”); In re Chitayat, 408 F.2d
475, 478 (CCCPA 1969) (“In view of the absence in Frank’s specification of
any written description of the quantitative value of the image displacement
relative to fiber diameter, the arguments based on mere measurement of the
drawings appear to us of little value.”).
For this reason, we reverse the rejection of claim 1, as well as that of
claims 2–6, 8, 9, 13, and 14, which ultimately depend from claim 1. See In
re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are
nonobvious under section 103 if the independent claims from which they
depend are nonobvious.”).
Rejections 1, 3–7
Appellant relies on the same arguments for these rejections as it does
for Rejection 2. See Appeal Br. 12–13.
For Rejections 4–7, that is sufficient to warrant reversal as all of the
subject claims (i.e., claims 10–12 and 22–26) recite, or incorporate by
reference, a “cylindrical surface” limitation (Appeal Br. 16–20) for which
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the Examiner relies on Lin’s vertically flared brim 22. Rejections 4–7 are
reversed.
For Rejections 1 and 3, however, Appellant fails to apprise us of error,
as the subject claims (i.e., claims 15–21) do not recite, or incorporate by
reference, a “cylindrical surface” limitation. Appeal Br. 17–18. Rejections
1 and 3 are affirmed.
SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
15–20 103 Goto, Lin, Mays,
Corsette
15–20
1–6, 8, 9,
13, 14
103 Goto, Lin, Mays,
Corsette, Bondin
1–6, 8, 9,
13, 14
21 103 Goto, Lin, Mays,
Corsette, Janson
21
22–25 103 Lin, Mays, Corsette,
Bondin, Janson
22–25
10, 11 103 Goto, Lin, Mays,
Corsette, Bondin,
Janson
10, 11
12 103 Goto, Lin, Mays,
Corsette, Bondin,
Shibuki
12
26 103 Lin, Mays, Corsette,
Bondin, Janson, Goto
26
Overall
Outcome
15–21 1–6, 8–
14, 22–
26

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)(1)(iv) (2019).
AFFIRMED IN PART