Ex Parte Hollis

Patent Trial and Appeal Board

May 7, 2015

13312928 (P.T.A.B. May. 7, 2015)

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.
13/312,928 12/06/2011 John Rey Hollis 187.02 8336
85444 7590 05/07/2015
Bay Area Technolgy Law Group PC
2171 E. Francisco Blvd., Suite L
San Rafael, CA 94901
EXAMINER
STODOLA, ROBERT J
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
05/07/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN REY HOLLIS
____________

Appeal 2013-004917
Application 13/312,928
Technology Center 3700
____________

Before EDWARD A. BROWN, ANNETTE R. REIMERS, and
ERIC C. JESCHKE, Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1–5 and 9–11. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The disclosed subject matter “involves a collapsible beverage cup
capable of lying flat in a first state and assuming the shape of a beverage cup
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in its second state.” Spec. 1, ll. 4–5. Independent claim 1, shown below
with emphasis added, is illustrative of the claims on appeal:
1. A collapsible beverage cup having a body
portion capable of lying flat in a first state and
capable of assuming the shape of a beverage cup in
a second state, wherein in said first state, said
collapsible beverage cup is substantially two
dimensional and planar having a relatively rigid
outer shell having a first edge, second edge and
boundary edges joining said first and second
edges, said collapsible beverage cup further
comprising an inner liner for retaining a beverage
therein when said collapsible beverage cup is in
said second state and a loop sized to slide onto
said outer shell and releasably maintain said
collapsible beverage cup in said second state.

EVIDENCE RELIED ON BY THE EXAMINER
Chase US 3,003,678 Oct. 10, 1961
Bartelt US 4,620,631 Nov. 4, 1986
Chen US 4,792,086 Dec. 20, 1988
Cawley US 7,347,623 B2 Mar. 25, 2008

REJECTIONS ON APPEAL
1

1. Claims 1, 2, 4, 5, and 9–11 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Chen, Chase, and Bartelt.

1
Although Appellant discusses various objections set forth by the
Examiner (Appeal Br. 5–6; Final Act 2 (mailed Dec. 6, 2012)), review of
those objections is accomplished via petition to the Director under 37 C.F.R.
§ 1.181, not by appeal to the Board. See Ex Parte Frye, 94 USPQ2d 1072,
1077–78 (BPAI 2010) (precedential). Accordingly, we will not address
those issues.
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2. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Chen, Chase, Bartelt, and Cawley.

ANALYSIS
Rejection 1 – The rejection of claims 1, 2, 4,
5, and 9–11 under 35 U.S.C. § 103(a)
A. Appellant’s Positions
Appellant argues that, contrary to the Examiner’s finding (Ans. 3),
Bartelt does not disclose a “loop” that could be combined with the
“collapsible beverage cup” of Chen and the “liner” of Chase to render the
claimed invention obvious. Appeal Br. 4.
2
According to Appellant, “Bartelt
does not suggest using a loop with a collapsible beverage cup and instead
simply suggests a device for holding two containers []proximate to one
another such as joining a beverage cup and a food container.” Id. Appellant
contends that, without the present Specification as a guide, “no one would
go to Bartelt and separate loops 11 and 12 [in Bartelt] from one another,
taking one of those loops and modifying its function to support a collapsible
beverage cup in an open cup-shaped orientation.” Id.
B. The Examiner’s Positions
As to claim 1, the Examiner relies on Figure 5 from Bartelt
(reproduced below) and finds that “Bartelt discloses a loop (11) sized to
slide onto a cup.” Ans. 3.

2
Although Appellant does not explicitly state the claims to which
these arguments pertain (Appeal Br. 4), we consider them applicable to both
independent claims 1 and 10 because both claims recite, among other
elements, a “loop,” as noted by Appellant. See id. at 7–8 (Claims App.).
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Bartelt, Fig. 5. Figure 5 depicts “a plan view of a modified form of the
invention.” Id., col. 2, ll. 3–4. According to the Examiner, “[t]he loop
disclosed in Bartelt is used to carry multiple containers with one hand.”
Ans. 3 (citing Bartelt, col. 1, ll. 28–30). The Examiner concludes that “it
would have been obvious, to one of ordinary skill in the art, at the time the
invention was made, to modify the cup disclosed by the combined teachings
of Chen and Chase with the loop disclosed by Bartelt, in order to carry two
containers at the same time.” Ans. 3. The Examiner finds that “[t]he loop
disclosed by Bartelt can be used with any cup—including a collapsible cup .
. . .” Id. at 4.
As to claim 10, the Examiner finds that “the method steps for opening
and collapsing the container are seen as inherent to the cup disclosed by
Chen.” Id. According to the Examiner, “[t]he loop would have to be slid on
once the cup is open and slid off before the cup is collapsed.” Id.; see also
id. at 5 (setting forth findings of how a “loop” could be used to perform the
method recited in claim 10).
C. Discussion
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
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re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Rejections based on
obviousness must be supported by “some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citation omitted), quoted in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, we determine that
the Examiner has failed to provide adequate reasoning to combine loop 11 in
Bartelt with the identified structures of Chen and Chase to support the legal
conclusion of obviousness of independent claims 1 and 10.
The reasoning provided by the Examiner to incorporate the loop from
Bartelt into the structures of Chen and Chase—“to carry two containers at
the same time” (Ans. 3)—does not support the conclusion of obviousness
because the Examiner has not shown the relevance of that rationale to the
other prior art references or to the claimed invention. Unlike Bartelt, neither
Chen, nor Chase, nor the claimed invention relate to carrying two containers
at the same time. We agree with Appellant that Bartelt does not teach using
the disclosed loop to hold collapsible cups. Reply Br. 2. Moreover, we
agree with Appellant that the record does not support the Examiner’s finding
that “[c]up holders, including as the loop disclosed by Bartelt, are known to
releasably maintain cups in cup-like shapes.” Ans. 4 (discussed at Reply Br.
2). Because the Examiner has not provided adequate reasoning to combine
the loop in Bartelt with the structures in Chen and Chase, we do not sustain
the decision to reject claim 1.
Independent claim 10 recites “[a] method of converting a substantially
two dimensional portable object into a three dimensional beverage cup”
including the step of “sliding [a] loop along . . . boundary edges until said
loop remains frictionally secure thereto.” Appeal Br. 7–8 (Claims App.).
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For claim 10, the Examiner implicitly relies on the same deficient findings
and conclusions discussed above with regard to claim 1. See Ans. 3–4.
Accordingly, we do not sustain the decision to reject independent claim 10.
For the same reasons discussed above, we do not sustain the decision
to reject claims 2, 4, 5, and 9 (which depend from claim 1) and claim 11
(which depends from claim 10).

Rejection 2 – The rejection of claim 3 under 35 U.S.C. § 103(a)
Claim 3 depends from claim 1. The Examiner does not rely on
Cawley to remedy the deficiencies discussed above in the combined
teachings of Chen, Chase, and Bartelt. For the reasons set forth above with
regard to claim 1, we do not sustain the decision to reject claim 3.

CONCLUSION
For the reasons set forth above, we REVERSE the decision to reject
claims 1–5 and 9–11 under 35 U.S.C. § 103(a).

REVERSED
em