Ex Parte Besser et al

Patent Trial and Appeal Board

Aug 12, 2013

11239517 (P.T.A.B. Aug. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN BESSER and JAY RIGBY
____________________

Appeal 2011-007311
Application 11/239,517
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and
PATRICK R. SCANLON, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
22-41. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The Invention
Appellants’ claimed invention relates to a “sleeve or container to hold
beverages containing liquids at extreme temperatures likely to cause hand
discomfort.” Spec. para. [0001]. Claims 22 and 29 are the independent
claims on appeal. Claim 22, reproduced below, is illustrative of the claimed
subject matter:
22. A container for beverage consumption
including an end and a sidewall terminating at said
end, said sidewall including an outer surface and
an inner surface, said inner surface defining an
enclosure together with said end, said sidewall
further including a first array comprising a first
plurality of cantilevered projections away from
said sidewall, the sidewall including a second array
comprising a second plurality of cantilevered
projections away from the sidewall, and wherein
the arrays are spaced apart from each other such
that the sidewall includes areas in which no arrays
are present around its perimeter, and wherein each
of the first plurality of cantilevered projections
outline a spiked shape, and wherein the projections
include a polymer configured to flex in response to
hand pressure, and wherein the second plurality of
projections are ribs, which are oriented
horizontally and which are spaced apart from each
other within the first array.

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Evidence Relied Upon

The Rejections
The following rejections are before us on appeal:
I. Claims 25, 38, 40, and 41 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.1
II. Claims 22-28, 39, and 41 under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
III. Claims 29, 35, 37, and 38 under 35 U.S.C. § 102(b) as anticipated by
Stowell.
IV. Claims 22, 23, 25, 26, 28, 29, and 31-38 under 35 U.S.C. § 103(a) as
unpatentable over Policappelli, Dutt, and Stowell.
V. Claims 31-34 and 36 under 35 U.S.C. § 103(a) as unpatentable over
Stowell.
VI. Claims 24, 27, 30, and 39 under 35 U.S.C. § 103(a) as unpatentable
over Policappelli, Dutt, Stowell, and Harman.
VII. Claims 30 and 39 under 35 U.S.C. § 103(a) as unpatentable over
Stowell and Harman.

1 The Examiner withdrew claims 28 and 37 from this ground of rejection.
Ans. 3.
Dutt
Stowell
Policappelli
Harman
US 4,747,511
US Re. 34,194
US 5,762,230
US 6,839,940 B2
May 31, 1988
Mar. 16, 1993
Jun. 9, 1998
Jan. 11, 2005
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OPINION
Objection
The Office Action that is the subject of this Appeal also included an
objection to the amended drawings that were filed July 6, 2010, as new
matter under 37 C.F.R. § 1.83(a).2 See Office Action dated Oct. 9, 2010, at
2. Appellants contend that arguments associated with these amended figures
were submitted to overcome the rejections3 under 35 U.S.C. § 112. Reply
Br. 2-3. However, as correctly noted by the Examiner, the limitations at
issue in the objection do not relate to limitations at issue in the rejections.
See Ans. 11. Specifically, the Examiner’s objection to Figures 5 and 6
relates to the shape and depth of the radial extension of the horizontal ribs 6,
and additionally for Figure 6 relates to the uniform pattern of spikes 7 and
the vertically aligned ribs 6. Office Action dated Oct. 9, 2010, at 2.
Regarding the rejections under 35 U.S.C. § 112, the limitations at issue are:
the first and second arrays facing away from each other on opposite sides of
the container (claims 25 and 38); the presence of a third array (claims 40 and
41); the first array being spaced apart from, yet within the second array
(claim 22); and the absence of density units (claims 26, 27, 39, and 41).
Office Action dated Oct. 9, 2010, at 3-4; Ans. 4-5.
Beyond the fact that the objections do not relate to the rejections,
Appellants did not seek review of the objection. See App. Br. 7-8 (not
listing the objection); Ans. 11 (stating this is not an appealable matter);

2 We agree with Appellant that the Examiner’s comments regarding prior
submittals (other than those of July 6, 2010) are not relevant to this appeal.
See App. Br. 14; Office Action dated Sep 9, 2010, at 2.
3 Rejections I and II.
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Reply Br. 2 (agreeing with the Examiner that this matter is best resolved by
petition).
Consequently, we do not address the objection.
Rejection I - Written Description
Claims 25 and 38
The Examiner determined that Appellants’ original disclosure did not
adequately support an orientation where the first and second arrays face each
other on opposite sides of the container as called for in claims 25 and 38.
Ans. 4.
Independent claims 22 and 29 each call for first and second arrays
comprised of a plurality of cantilevered projections away from the sidewall.
The Specification defines “out facing ribs” (the plurality of projections that
comprise the array) as ribs that project away from the axis 12 through the
cylinder formed by the beverage holding portion of the cup. Spec., para.
[00015]; see also paras. [0002] (stating Figure 1 depicts outward
projections), [00010] (defining axis 12); fig. 1. Therefore, the projections of
the first and second arrays of claims 22 and 29 project away from the axis of
the container.
Claim 25 depends from claim 22, and claim 38 depends from claim
29, each reciting that “the arrays face each other on opposite sides of the
container.” Therefore, claims 25 and 38 each call for a first and a second
array of outward projections that face each other on opposite sides of the
container.
Appellants assert that, “Appellants’ Specification is replete with
discussions about variations of the arrays.” App. Br. 14. In support of this
contention, Appellants cite original claim 28. App. Br. 14-15. However,
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original claim 28 provides no support for a first and a second array of
outward projections that face each other on opposite sides of the container.
Appellants also note that the Specification states that, “[a]lthough, the arrays
8 can appear back to back on opposite sides of sleeve 2, they can also be
spaced apart from one another to offer a slimmer profile.” App. Br. 14-15
(quoting Spec., para. [00013]); see also Reply Br. 3 (repeating the argument
and citing to the same paragraph of the Specification but omitting the
citation to claim 28). This portion of the Specification relates to an
embodiment that includes a sleeve,4 and describes that the ribs may be
oriented back to back with respect to the sleeve, and also describes that the
arrays may be spaced apart to create a slimmer profile. Such disclosure does
not provide support for a first and a second array of outward projections that
face each other on opposite sides of the container.
We agree with the Examiner that Appellants’ Specification does not
describe an embodiment having first and second arrays that project away
from the sidewall and face each other on opposite sides of the container and
does not demonstrates that Appellants had possession of the invention of
claims 25 and 38. Accordingly, we sustain the rejection of claims 25 and 38
for failing to comply with the written description requirement.
Claims 40 and 41
The Examiner determined that Appellants’ original disclosure did not
adequately support a third array as called for in claims 40 and 41. Ans. 4.

4 Appellants’ disclosure describes embodiments including sleeves having
arrays and embodiments where the sleeve is integrated with the container 4
to form a single unit. Spec., para. [00020]; see e.g., claim 1, withdrawn,
(directed to a sleeve) and claim 22 (directed to a container that does not call
for a sleeve).
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Appellants repeat the argument used against claims 25 and 38. App. Br. 14-
15; Reply Br. 3. We agree with the Examiner that these examples provide
no indication that a third array may be present. See Ans. 11.
Appellants’ argument fails to demonstrate error in the rejection of
claims 40 and 41, and accordingly, we sustain the rejection of these claims
for failing to comply with the written description requirement.
Rejection II - Indefiniteness
Claims 22-28
Claim 22 recites that the first array and second arrays are “spaced
apart from each other,” and also calls for the ribs of the second array to be
“spaced apart from each other within the first array.”
The Examiner determined that claim 22 is indefinite because the first
and second arrays cannot both be spaced apart and yet the second array be
within the first array. Ans. 5, 12.
Appellants argue that, “[t]his assertion is so inconsistent and so
confusing that Appellant is unable to even respond to the Examiner's
statement.”5 App. Br. 15.
We agree with Appellants. The rejection merely recites the claim
language of claim 22 and presents the conclusory assertion that both
limitations cannot be fulfilled. See Ans. 5, 12. The relevant inquiry is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). The rejection is not accompanied by a cogent explanation of why

5 Appellants make no additional argument regarding this rejection in the
Reply Brief.
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both limitations cannot be fulfilled. For example, an array can be both
spaced apart from and radially within another such that the sidewall includes
areas in which no arrays are present around its perimeter.
Accordingly, the Examiner failed to make a prima facie case, and we
do not sustain the rejection of independent claim 22, and its dependent
claims 23-28, as indefinite.
Claims 26, 27, 39, and 41
Claims 26, 27, 39, and 41 each call for the arrays to be made of a
substance having a density either greater than or less than one.
The Examiner determined that these claims are indefinite because no
unit of measure for density is specified, “[w]ithout a unit of measure, the
density limitations do not further limit their respective claims and the claims
should be deemed incomplete.” Ans. 5.
This rejection, like the rejection of claim 22 for indefiniteness, makes
no reference to the Specification even though the claim must be read in light
of the Specification. See Orthokinetics, 806 F.2d at 1576. Additionally, the
rejection focuses upon the failure to further limit the claims from which the
claims at issue depend.6 The proper focus is whether a person of ordinary
skill in the art would understand what is claimed. Id.
The Specification states that polypropylene has a density of 0.91,
polyethylene has a density of 0.94, and polystyrene has a density of 1.07.
Spec., para. [00014].
Although no units are provided for these densities in the claims or in
the Specification, it is readily ascertainable that polypropylene has a density

6 This is a proper concern under 35 U.S.C. § 112, fourth paragraph, but not
under 35 U.S.C. § 112, second paragraph.
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of 0.91 to 0.94 g/cm3 (grams per cubic centimeter), polyethelene has a
density of 0.91 to 0.96 g/cm3, and polystyrene has a density of 1.06 to 1.12
g/cm3. CRC Handbook of Chemistry and Physics, pp. 13-4, 15-39 (94th ed.
2013-2014). Each of the claimed densities falls within this known range of
densities when expressed in grams per cubic centimeter. In light of this, a
person of ordinary skill in the art could understand that the densities
expressed in Appellants’ disclosure are in g/cm3. See generally Wellman,
Inc. v. Eastman Chemical Co., 642 F.3d 1355, 1367 (Fed. Cir. 2011) (noting
that in determining indefiniteness an inventor need not explain every detail
because a patent is read by those of skill in the art, and, in particular, well
known industry standards need not be repeated in a patent).
For these reasons, we agree with Appellants that claims 26, 27, 39,
and 41 are not indefinite as the Examiner determined. See Reply Br. 3-4.
Rejection III - Anticipation by Stowell
Appellants argue that contrary to the Examiner’s finding, Stowell’s
cavity 16 is not capable of use as a container for beverage consumption.
Reply Br. 6. Specifically, Appellants point out that we do not know if cavity
16 is waterproof and has the integrity to maintain fluid. Reply Br. 6.
The Examiner stated that “[a] beverage could be placed in the cavity
and Stowell is capable of being used for beverage consumption.” Ans. 6.
The Examiner also stated that:
The handle 10 has an internal cavity 16 which is capable of
receiving a core shank 15 of an implement. The cavity 16
provides the ability for this handle to receive liquid or beverage.
That is, the cavity is capable of receiving and holding liquid or
beverage. The handle forms a container capable of receiving
and holding liquid or beverage. The handle is a container for
beverage consumption because a beverage received and held
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within the cavity 16 of the handle may be poured or drunk from
the handle. This capability exists.
Ans. 13.
Essentially, the Examiner reasons that because cavity 16 is a cavity, it
must therefore be capable of use for beverage consumption. Stowell’s
cavity 16 is indeed a cavity in handle 10. Stowell, col. 3, l. 42. However,
the Examiner’s reasoning is flawed in that not every cavity has such
capability. For example, the walls of the cavity may be too porous to hold
liquid.
We note that Stowell’s handle 10 is comprised of an elastomeric
material having good thermal insulation and cushioning properties. Stowell,
col. 2, ll. 27-30. Perhaps a handle comprised of such material would be
capable of holding liquid so that the handle may be used for beverage
consumption. However, the Examiner did not provide evidence or technical
reasoning based upon the composition of the handle to support the finding
that handle 10 is capable of use as a container for beverage consumption. In
light of this, the Examiner has not demonstrated a sound basis for the belief
that the cavity 16 of Stowell’s handle 10 is capable of use as a container for
beverage consumption.
Accordingly, we reverse the rejection of claim 29 and its dependent
claims 35, 37, and 38.
Rejections V and VII - Obviousness over Stowell alone or with Harman
These rejections, like Rejection III, also rely upon a finding that
Stowell’s cavity 16 is capable of use as a container for beverage
consumption. Therefore, we do not sustain these rejections as they suffer
from the same shortcoming as explained with regard to Rejection III, supra.

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Rejection IV - Obviousness over Policappelli, Dutt, and Stowell7
Appellants argue claims 22, 23, 25, 26, 28, 29, and 31-38 as a group,
and we select claim 22 as representative. App. Br. 19-26; Reply Br. 7
(presenting no further arguments against these rejections); see 37 C.F.R.
§ 41.37(c)(1)(vii)(2011).
Appellants present four arguments against the rejection of claim 22.
First, Appellants argue that Policappelli’s Figure 21 does not disclose spiked
projections as claimed.8 App. Br. 21-23. In response, the Examiner clarified
that Policappelli’s protrusions 105 having an apex 106 outline a spike shape
as claimed. Ans. 15-16. We agree. See Policappelli, col. 11, ll. 7-8
(protrusions 105 may form any geometric shape as desired); col. 11, ll. 42-
44; figs. 18, 21.
Second, Appellants argue that Policappelli does not disclose arrays
that are spaced apart from each other as claimed because Policappelli’s
“reference shows objects being present around the entirety of the
perimeter of the aluminum can.” App. Br. 23. Claim 22 recites first and
second arrays, “spaced apart from each other such that the sidewall includes
areas in which no arrays are present around its perimeter.” We agree with
the Examiner that the upper set and lower set of Policappelli’s protrusions
105 are spaced apart so that the sidewall includes an area between in which
no arrays are present around its perimeter. See Ans. 6-7, 17 (providing an
annotated version of Policappelli’s Figure 21); see also Policappelli, fig. 21.

7 This rejection does not rely upon Stowell’s cavity 16 as capable of use as a
container for beverage consumption.
8 Claim 22 calls for the first plurality of cantilevered projections of the first
array to “outline a spiked shape.”
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Third, Appellants argue that Dutt does not disclose projections that
flex in response to hand pressure as claimed. App. Br. 23. Such a
contention is unpersuasive because the Examiner relies upon Stowell for this
limitation, not Dutt. See Ans. 7.
Fourth, Appellants argue that the Examiner must give a reason why a
person of ordinary skill in the art would have combined the references as
proposed, and absent such a reason the combination is the result of improper
hindsight. App. Br. 24-25. The Examiner gave a reason for the proposed
modification, namely, to improve finger grip where there is a recognized
need. See Ans. 7-8. Appellants’ statement of the law is not associated with
the facts of this case in any meaningful way, and does not state with
particularity how the Examiner’s proffered rationale is in error.
Consequently, we sustain the rejection of claims 22, 23, 25, 26, 28,
29, and 31-38.

Rejection VI - Obviousness over Policappelli, Dutt, Stowell, and Harman
Appellants argue claims 24, 27, 30, and 39 as a group, and we select
claim 24 as representative. App. Br. 19-26; Reply Br. 7 (presenting no
further arguments against these rejections). Appellants simply repeat the
arguments analyzed for Rejection IV, and our analysis there is equally
applicable here. Accordingly, we sustain this rejection.

DECISION
I. We affirm the Examiner’s decision to reject claims 25, 38, 40, and 41
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
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II. We reverse the Examiner’s decision to reject claims 22-28, 39, and
41, under 35 U.S.C. § 112, second paragraph, as indefinite for failing to
particularly point out and distinctly claim the subject matter which applicant
regards as the invention.
III. We reverse the Examiner’s decision to reject claims 29, 35, 37, and 38
under 35 U.S.C. § 102(b) as anticipated by Stowell.
IV. We affirm the Examiner’s decision to reject claims 22, 23, 25, 26, 28,
29, and 31-38 under 35 U.S.C. § 103(a) as unpatentable over Policappelli,
Dutt, and Stowell.
V. We reverse the Examiner’s decision to reject claims 31-34 and 36
under 35 U.S.C. § 103(a) as unpatentable over Stowell.
VI. We affirm the Examiner’s decision to reject claims 24, 27, 30, and 39,
under 35 U.S.C. § 103(a) as unpatentable over Policappelli, Dutt, Stowell,
and Harman.
VII. We reverse the Examiner’s decision to reject claims 30 and 39 under
35 U.S.C. § 103(a) as unpatentable over Stowell and Harman.
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).

AFFIRMED

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