Ex Parte Abayhan et al

Patent Trial and Appeal Board

Jul 19, 2016

11622952 (P.T.A.B. Jul. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111622,952 01112/2007
25541 7590 07/21/2016
NEAL, GERBER, & EISENBERG
SUITE 1700
2 NORTH LASALLE STREET
CHICAGO, IL 60602
FIRST NAMED INVENTOR
Ayberk Abayhan
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
19180.1002 3943
EXAMINER
DEMEREE, CHRISTOPHER R
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
07/2112016 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):
twilliams@ngelaw.com
tmcdonough@ngelaw.com
ipusmail@ngelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte A YBERK ABA YHAN, STEPHEN A. SMITH and
ROBERT J. SCHAEFER
Appeal2014-005853
Application 11/622,952 1
Technology Center 3700
Before JAMES P. CAL VE, FREDERICK C. LANEY, and
ARTHUR M. PESLAK, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ayberk Abayhan et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1--45. The Examiner
rejected claims 1--45 under 35 U.S.C. § 103(a) as unpatentable over
Sandstrom (US 5,938, 112, iss. Aug. 17, 1999), Unger (US 3,720,365, iss.
Mar. 13, 1973), and Toussant (US 2002/0179612 Al, pub. Dec. 5, 2002).
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is Solo Cup Operating
Corporation. Appeal Br. 2 (filed December 23, 2013).
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Application 11/622,952
We REVERSE.
SUMMARY OF DECISION
INVENTION
Appellants' "invention relates to pressed paperboard containers, such
as disposable paper plates and bowls, having increased strength and
rigidity." Spec. i-f 2.
Claims 1, 14, 29, and 38 are independent claims. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A paperboard container comprising:
a substantially round body of paperboard having a
characteristic diameter with a bottom wall and a sidewall
extending upward from the bottom wall;
a rim extending outward from the sidewall; and
pleats of folded paperboard material formed along score
lines of the paperboard, each pleat extending outwardly through
a portion of the sidewall and a portion of the rim along a pleat
length, iv herein a plurality of the pleats have a pleat length ivith
a non-linear extent that does not reside along any radial line
passing through the center of said substantially round body.
Appeal Br. 25 (Claims App.) (emphasis added).
ANALYSIS
Each of the independent claims includes a limitation for the claimed
paper plate to have, inter alia, a plurality of pleats having a pleat length with
a non-linear extent that does not reside along any radial line passing through
the center of the paperboard body (hereinafter "non-linear pleats"). See
Appeal Br. 25-30 (Claims App.). Appellants focus their appeal on that
claim limitation and argue the Examiner does not establish a proper
foundation to conclude a skilled artisan would have known at the time of the
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Application 11/622,952
invention to construct a paper plate with non-linear pleats. Id. at 7, 9-10.
Specifically, Appellants assert that the cited references, Sandstrom, Unger,
and Toussant, do not disclose non-linear pleats; nor do they support the
Examiner's conclusion that a skilled artisan would have known to modify
the radial pleat design of Sandstrom' s paper plates to be non-linear pleats.
Id. at 8-11, 15-19. Further, Appellants assert their test data, comparing the
non-linear pleat design against the prior art radial pleat design, shows
unexpected results because the claimed pleats significantly improve the
strength of the paper plates, which is evidence of nonobviousness that
outweighs any evidence the Examiner cites to the contrary. Id. at 21-23.
The Examiner agrees, "Sandstrom lacks pleats with a non-linear
extent that do not reside along any radial line passing through the center of
the plate." Final Act. 2. Noting Unger discloses a plate formed solely from
thermoplastics, the Examiner, nevertheless, finds "Unger teaches a plate
comprising an embossed region (i.e. pleat) over the rim of the plate forming
a 'lazy S' shape (30; Col 2 lines 35--40) that is non-linear and does not reside
on a radial line while maintaining good strength characteristics (Col 2 lines
55---60) while giving the plate a more pleasing aesthetic appearance." Id. at
3. The Examiner further clarifies "it is considered that the pleats
[Sandstrom] and embossments [Unger] address the need to maximize the
structural integrity of the sidewall of a plate." Id. at 5. In addition, the
Examiner finds "Toussant teaches a disposable plate comprising various
alternative rim designs (see Figures 4--7); said disposable plate being made
of paperboard, plastic or foam using any of the known methods in the art
(Par. 0017 and 0023)." Id. at 3. Considering what Sandstrom, Unger, and
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Application 11/622,952
Toussant show a skilled artisan knew at the time of the invention, the
Examiner concludes,
it would have been obvious to one of ordinary skill in the art to
apply Unger's teaching of an arcuate pleat to maintain good
strength characteristics and give a more pleasing aesthetic
appearance in the plate to Sandstrom's paper plate since it is
known in the art of disposable plates that the materials of
paperboard and plastic can be used interchangeably, as taught by
Toussant.
Id. Lastly, the Examiner "notes it would have been an obvious matter of
design choice to change the shape of Sandstrom's pleats, since such a
modification would have involved a mere change in the shape of a
component." Id. at 6.
Consistent with the description in Appellants' Specification (see Spec.
i-fi-1 3, 4 ), the plain meaning of "pleats" is "a fold ... made by doubling
material over on itself." Pleat Definition, Meriam-Webster.com,
http://www.merriam-webster.com/ dictionary/pleat (last visited on July 14,
2016); see also, Appeal Br. 16 ("pleat" is "a vertical fold in cloth or other
material"). In accordance with the plain meaning of "emboss," the "lazy S"
design is the Unger plates is formed in the thermoplastic material through a
series of "raised elements" without any folds of material over on itself.
Unger 1:53---60, 2:40-42; see Emboss Definition, Meriam-Webster.com,
http://www.merriam-webster.com/ dictionary/pleat (last visited on July 14,
2016). As Appellants correctly point out, the "embossed portion" of Unger
is distinct from a pleat. Appeal Br. 16. Therefore, the embossing in Unger
cannot properly be relied upon to find the prior art discloses the use of an
arcuate pleat as the Examiner has done. See Final Act. 3.
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Although in the Final Action, as well as the Answer, the Examiner
refers to "embossed region (i.e. pleat)" and states a skilled artisan would
"apply Unger' s teaching of an arcuate pleat" (Final Act. 3; Ans. 3), the
Examiner later "notes" in the Answer that Sandstrom "is relied upon to teach
the pleats; not Unger or Toussant." Ans. 5 (emphasis added). The
Examiner asserts "Unger is [actually] relied upon to teach a plate reinforcing
elements with a plate sidewall with a non-linear extent (Col 2 lines 35--40
and 55---60)." Id. "Further, Unger's rim embossments and Sandstrom's
pleats both endeavor to accomplish the same utility-strengthening
disposable plates." Id. at 6 (citing Unger, col. 2, lines 54---68).
For the reasons we discuss above, Unger cannot properly be relied
upon to disclose pleats. Unger, however, also does not teach reinforcing a
plate by having a plate sidewall with a non-linear extent, as the Examiner
suggests. We agree with Appellants that "no portion of Unger teaches that
rim embossments may strengthen a disposable plate." Reply Br. 3.
Appellants correctly point out that "Unger specifically lists other features of
the plate as being structural enhancements for improving the structural
strength of the plate," such as, the junction on the inside of the plate where
the bottom and sidewall merge, the junction on the outside of the plate
where the rim and the sidewall merge, and the curvature of the sidewall and
bottom. Id. (citing Unger 2:28-33, 3:6-9). The portion of Unger cited by
the Examiner to support such a finding instead discloses improved resistance
to bending from line junction joints 26, 28, as compared to the prior art's use
of "a generous radii blending the plate rim into the plate side wall and the
plate sidewall into the plate bottom." See Unger, col. 2, lines 54---68.
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Regarding the aesthetic benefits, Unger describes the embossed
"raised elements" as the critical feature for enabling a manufacturer to
"enhance the appearance" of a plate, rather than the "lazy S" configuration
between those elements. See id. at 1:52---67. In particular, Unger teaches
"minor deviations go unnoticed," because"[ w ]hen a plurality of raised
elements are used, even though more ink may be deposited on some
elements than on others, the overall impression to a viewer is that the
printing is concentric with the outer rim." Id. at 1:61---66 (emphasis added).
The Examiner does not explain how modifying Sandstrom's linear pleats 50
to become Appellants' claimed non-linear pleats, even if a proper teaching
could be found in the references, would result in anything similar to the
"raised elements" for enhancing the aesthetics of a plate that Unger teaches
for embossed elements 34. Nor do we find any evidence of a recognized
commonality between Appellants' non-linear pleats and the aesthetic
benefits Unger attributes to having "raised elements."
As a result, a preponderance of the evidence does not support the
Examiner's reliance on the "lazy S" configuration in Unger to show it was
known to reinforce a plate sidewall with a non-linear pleat and/or improve
the aesthetic appearance of the plate. Therefore, a rational connection does
not exist between the Examiner's factual findings and the Examiner's reason
for modifying the pleats of Sandstrom with "lazy S" configuration of Unger
in the manner claimed. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
("[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.").
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Finally, turning to the Examiner's "design choice" rationale,
Appellants' test data showing improvement in the strength of the claimed
paper plate persuades us that the claimed non-linear pleats were not merely a
design choice. Appellants' tests comparing the strength of the claimed paper
plate to prior art paper plates, with pleats, shows the claimed paper plates
exhibited significantly improved strength characteristics. See Spec. i-f 39.
Appellants note, "the only significant difference between the [claimed]
plates [tested] and the control plates [tested] was the orientation of the
pleats," therefore, the strength benefits measured are "closely tied and
directly attributable to the use of [the non-linear] pleats." Appeal Br. 22.
We note also Appellants expressly identify Sandstrom as an example of
prior art pleated paper plates (Spec. i-f 7) and the Specification likewise
depicts prior art pleated paper plates similar to those shown in Sandstrom
(compare Spec. Figs. 1-3 with Sandstrom Fig. 4). See In re Chu, 66 F.3d
292, 299 (Fed. Cir. 1995) (finding of "obvious design choice" precluded
where the claimed structure and function it performs are different from the
prior art) (citation omitted).
Unger issued on March 13, 1973, which is more than two decades
before the filing of the Sandstrom application. Importantly, Sandstrom
identifies a primary objective for the disclosed invention is "to provide a
paperboard container in the form of a paper plate having a rim and sidewall
configuration which better withstands a load force placed thereon when
being held by the consumer with either one or two hands." Sandstrom 3 :23-
27. Notably absent from Sandstrom (as well as the other cited references) is
any suggestion or recognition that altering the radial orientation of the pleats
can affect the strength of the paper plate.
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The absence of any such recognition is significant in this case because
Sandstrom was motivated to use pleats that would give the best strength
characteristic possible and the information Unger discloses was available to
a skilled artisan more than two decades before Sandstrom' s invention. As
such, Appellants' test data showing superior strength characteristics for non-
linear pleats versus radial pleats demonstrates, by a preponderance of the
evidence, the claimed non-linear pleats were not a recognized design choice
by those of skill in the art at the time of the invention.
The Examiner dismissed Appellants' test data because "Unger []
already conducted the tests showing that reinforcing elements with a non-
linear extent resist bending (Unger; Col 2 line 57---Col 3 line 12)." Ans. 7.
We do not find any support for the Examiner's position. As discussed
above, Unger does not suggest the embossed "lazy S" strengthens the plate.
In fact, regarding the test data, Unger expressly states, "[i]t is believed that
the line junction in my container design and the curvature of the sidewall
and bottom contribute to its improved strength." Unger 3: 6-9. As a result,
there is no support for the notion that Unger already provides testing data
showing the "lazy S" configuration resists bending. Thus, the Examiner's
reason for ignoring the probative value of Appellants' test results was
erroneous, as was the failure to factor into the obviousness analysis the
unexpected test results disclosed by Appellants.
Therefore, for the foregoing reasons, we do not sustain the Examiner's
obviousness rejections of independent claims 1, 14, 29, and 38. Because the
Examiner's analysis of dependent claims 2-13, 15-28, 30-37, and 39--45
fails to cure the identified deficiencies associated with their respective
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independent claim, we also do not sustain the Examiner's obviousness
rejection of claims 2-13, 15-28, 30-37, and 39--45.
SUMMARY
We reverse the Examiner's decision to reject claims 1--45.
REVERSED
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