Ex Parte Cerasani

Board of Patent Appeals and Interferences

Dec 22, 2010

11747897 (B.P.A.I. Dec. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte VINCENZO S. CERASANI
________________

Appeal 2010-010079
Application 11/747,897
Technology Center 3700
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Before RICHARD E. SCHAFER, SALLY C. MEDLEY and
MICHAEL P. TIERNEY, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application No. 11/747,897

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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, M&N
Plastics, Inc. [hereinafter “Appellant”], under 35 U.S.C. § 134(a), from a
final rejection of claims 10-12, the only claims on appeal. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
References Relied on by the Examiner
Shelby U.S. 5,445,315 Aug. 29, 1995
Welch U.S. 6,138,902 Oct. 31, 2000
Wong U.S. 6,814,253 B2 Nov. 9, 2004
Hed et al. U.S. 6,926,197 B2 Aug. 9, 2005
DeBraal et al. U.S. 7,074,466 B2 July 11, 2006

The Invention
This invention pertains to a thermally insulated drink cup sleeve made
of paperboard and insulated with a polymeric material (Spec. ¶¶ 0003-0005).
Sole independent claim 10, which is illustrative of the claimed
invention, is reproduced below (emphasis added):
10. A thermally insulated paperboard sleeve for use with a
totally separate paper drink cup comprising:
an open ended, bottomless paperboard sleeve separate from, but
sized for use in unbonded, slip-on relationship with a paper drink cup
and generally conforming to the outer surface of such a cup wherein
the paperboard sleeve has a substantially continuous inside surface
and a substantially continuous outside surface;
a thermally insulative and substantially continuous layer of a
foamed and dried biodegradable polymeric material covering the
inside surface of said sleeve so as to be placeable in non-adhering
contact with the outside surface a paper drink cup; and
non-foamed dry printing on the outside surface of said sleeve.

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Application No. 11/747,897

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(App. Br. Claims App’x 12). Additionally, claim 12 depends from claim 10
and further requires that the polymer of claim 10 is a water-based acrylic
latex.

The Rejections on Appeal
1. Claims 10-11 are rejected under 35 U.S.C. § 103(a) as being obvious
over Wong in view of Hed and either Shelby or Welch (Ans. 3).
2. Claim 12 is rejected under 35 U.S.C. § 103(a) as being obvious over
Wong in view of Hed and either Shelby or Welch and further in view of
DeBraal (Ans. 4).

B. ISSUE
Would one of ordinary skill in the art of insulated drinking cup
sleeves have had reason to employ an outer paperboard liner in view of
existing insulated sleeves having a polymer film exterior?

C. FINDINGS OF FACT
1. Wong discloses that prior drink cup holders were made of
“cardboard” and “paper type material” (Wong 1:15-44).
2. Wong discloses a drink cup sleeve having an inner polymer foam
layer laminated to an outer polymer film layer (Wong 2:12-19).
3. Wong discloses a drink cup sleeve having indicia on the outer surface
of the outer sleeve (Wong 4:38-67).
4. Hed discloses a biodegradable polymer foam used as insulation for a
drinking cup (Hed 7:60 to 8:6).
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5. Shelby and Welch both disclose insulated beverage holders having a
polymer foam bonded to a paper exterior (Shelby 3:16-19; Welch 1:38-40).
6. DeBraal discloses a paperboard-backed beverage container employing
water based acrylic polymer foam (DeBraal 8:37-46 and 16:52-61).
7. DeBraal’s binder is preferably latex (DeBraal 10:1, 18 and 39).
8. DeBraal teaches that its beverage containers, having a latex insulating
layer, hold hot boiling liquids while protecting a users’ hands from the heat.
(DeBraal 1:8-13, 4:8-19 and 9:60 – 10:18).

D. PRINCIPLES OF LAW
An invention is not patentable under 35 U.S.C. § 103 if it is obvious.
KSR Int’l Co. v. Teleflex Inc. 550 U.S. 398, 406 (2007). Any need or
problem known in the field of endeavor at the time of invention can provide
a reason for combining elements in the manner claimed. Id. at 420.

E. ANALYSIS
Appellant separately argues independent claim 10 and dependent
claim 12. Each will be addressed below. Claim 11 depends from claim 10
and will stand or fall together with claim 10.

1. Claim 10 is Obvious Over Wong in View of Hed and Either Shelby or
Welch.
Independent claim 10 specifies a drink cup sleeve having a
paperboard outer layer (for printing) and an inner layer of foamed and dried
biodegradable polymeric material. The Examiner contends that Wong
discloses many of the features of claim 10 but recognizes that Wong does
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not disclose forming the sleeve’s outer layer from paperboard or the use of a
biodegradable polymeric foam material as the inner layer of the sleeve (Ans.
3-4). The Examiner relied on both Shelby and Welch as disclosing a sleeve
having a paperboard outer layer and an inner foamed insulative layer (Ans. 4
citing specific locations in both Shelby and Welch). The Examiner also
relied on Hed as disclosing biodegradable foam for insulated drinking cups.
(Ans. 4 citing specific locations in Hed).
Appellant states that the insulated cup sleeve art is a crowded one and
that the fact that the Examiner did not find an anticipatory reference is
evidence of non-obviousness. (App. Br. 7). Appellant also contends that
Wong’s cup sleeve is not made of “paperboard” and that, as opposed to the
present invention, Wong prints on the outer surface of the inner layer (App.
Br. 8 and 9). Appellant further contends that Wong’s two-sheet laminate
differs from Appellant’s single-ply paperboard that is coated with a
polymeric material (Reply Br. 2).
The lack of an “anticipatory” reference has not been shown to be
relevant to the facts of this case. Specifically, § 103(a) applies to situations
such as the present one where the invention “is not identically disclosed or
described as set forth in section 102 of this title” (35 U.S.C. § 103(a)).
Additionally, to the extent Appellant contends that there was a long felt
need, Appellant has not identified a specific long felt need nor provided
evidence establishing a nexus between the claimed invention and an alleged
need. Ecolochem, Inc. v. Southern California Edison Company, 227 F.3d
1361, 1377-1378 (Fed. Cir. 2000).
Appellant’s contention that one of ordinary skill would not find it
obvious to employ paperboard sleeves in Wong is incorrect. Shelby
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specifically teaches that its invention is directed to forming beverage holders
that are “easily printed on and fairly inexpensive to manufacture.” (Shelby,
1:36-40). As recognized by the Examiner, Shelby and Welch teach that it
was known in the art to form insulated sleeves using paperboard outer layers
and foamed insulation inner layers (Ans. 4). As such, one skilled in the art
seeking to form an inexpensive, but easily printed on, cup sleeve would be
directed to employ cup sleeves having paperboard outer layers and foamed
insulation inner layers. As Wong seeks to have readable indicia on its cup
sleeve, one skilled in the art would have recognized the benefit of using
Shelby and Welch’s cup sleeves formed of paperboard outer layers and
foamed insulation inner layers.
Appellant contends that Wong is limited to printing on an inner layer
of the cup sleeve where the inner layer is covered by a clear layer (App. Br.
8). Wong however is not limited to printing on the inner layer and
specifically teaches placing indicia (printing) on the outer surface of the
outer layer (Wong 4:38-67). Additionally, as discussed above, Shelby
specifically teaches the use of a cup sleeve having an outer paperboard
surface that is easily printed on.
Appellant states that Wong’s two-sheet laminate differs from
Appellant’s single-ply paperboard that is coated with a polymeric material
(Reply Br. 2). As discussed above, one skilled in the art had reason to
employ the cup sleeve paperboard/foamed insulation of Shelby in place of
Wong’s laminate. Specifically, Shelby teaches that its materials are easily
printed on and are relatively inexpensive to manufacture.
We hold that Appellant’s claim 10 is directed to the combination of
known elements (paper and foam insulation) for their known purpose (ease
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of printing and inexpensive) to achieve a predictable result (an insulated
paperboard cup sleeve that is easily printed on) that can contain indicia on
the outer paperboard surface. We affirm the Examiner’s rejection of claims
10 and dependent claim 11, which stands or falls with claim 10.

2. Dependent Claim 12 is Obvious Under 35 U.S.C. § 103(a) Over Wong
in View of Hed and Either Shelby or Welch and Further in View of DeBraal
Claim 12 depends from claim 10 and further requires that the foamed
polymer is formed from a water-based acrylic latex polymer. According to
the Examiner, DeBraal teaches that it is known in the art to make a beverage
container insulation layer from water-based acrylic latex (Ans. 4 citing
specific locations in DeBraal). Appellant contends that this water-based
feature is “important” to the patentability of claim 12 and Appellant makes
the statement that it is a distinguishing feature of the invention (App.
Br. 10).
DeBraal’s preferred insulating material “is a foamed acrylic polymer,
applied in water carrier with suitable additives” (Debraal 16:44-61, see also
8:37-46 and 10:3-5). DeBraal’s preferred binder is latex (DeBraal 10:1, 18
and 39) DeBraal teaches that its beverage containers, having a latex
insulating layer, are designed to hold hot boiling liquids while protecting a
users’ hands from the heat. Accordingly, Appellant’s claimed invention
represents a combination of known insulated beverage components
(paperboard sleeves and insulating water based acrylic latexes) for their
known purpose (protecting users’ hands from heat/cold) to achieve a
predictable result.
We affirm the Examiner’s rejection of claim 12.
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F. CONCLUSIONS OF LAW
One of ordinary skill in the art of insulated drinking cup sleeves
would have had reason to employ an outer paperboard liner in view of
existing insulated sleeves having a polymer film exterior.

G. ORDER
1. The rejection of claims 10-11 under 35 U.S.C. § 103(a) as being
obvious over Wong in view of Hed and either Shelby or Welch is affirmed.
2. The rejection of claim 12 under 35 U.S.C. § 103(a) as being obvious
over Wong in view of Hed and either Shelby or Welch and further in view of
DeBraal is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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