Ex Parte Kolowich

Board of Patent Appeals and Interferences

Feb 26, 2003

09055377 (B.P.A.I. Feb. 26, 2003)

1
The opinion in support of the decision being entered today
was not written for publication and is not binding precedent
of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte J. BRUCE KOLOWICH
__________
Appeal No. 2002-1533
Application 09/055,377
__________
HEARD: January 21, 2003
__________
Before STAAB, McQUADE, and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1, 10-12, 17, 18, 26-31 and 35-39. Claims 9,
14-16, 19-21, 23 and 32-34, the only other claims pending in the
application, have been withdrawn from consideration pursuant to
37 CFR § 1.142(b) as not being readable on the elected species.
THE INVENTION
Appellant’s invention “relates generally to liquid
receptacles or containers and more specifically to a receptacle
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that rapidly cools a hot liquid to a warm range and then
maintains the fluid in the warm range for an extended period”
(specification, page 1). A further understanding of the
invention can be derived from a reading of exemplary claims 1 and
17 which appear in the appendix to appellant’s main brief.
THE PRIOR ART
The references relied upon by the examiner in the final
rejection are:
Myers 1,679,621 Aug. 7, 1928
Zimmerman et al. (Zimmerman) 2,876,634 Mar. 10, 1959
Staggs 5,271,244 Dec. 21, 1993
THE REJECTIONS
The following rejections under 35 U.S.C. § 103(a) are before
us for review:
(1) claims 1, 10-12 and 39, rejected as being unpatentable
over Zimmerman in view of Staggs;
(2) claims 17, 18, 26-28 and 35-38, rejected as being
unpatentable over Zimmerman in view of Myers; and
(3) claims 29-31, rejected as being unpatentable over
Zimmerman in view of Myers and further in view of Staggs.
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DISCUSSION
Rejection (1)
Zimmerman, the examiner’s primary reference, discloses in
Figure 1 a container comprising an innermost container 10 formed
of a material having good heat transfer properties, an outermost
container 14 formed of a material having good heat insulation
properties, and thermodynamic material 18 disposed between
containers 10 and 14 and selected to have a phase change
temperature within the range of the desired temperature for use
of a heated material to be disposed in and dispensed from the
container. Zimmerman envisions that the container may be used,
for example, as a coffee cup. As explained at column 1, line 70,
through column 2, line 9:
It is of course well known that coffee quite
frequently is served at a temperature at which it is
too hot for immediate drinking. In fact the coffee may
be so hot as to require a number of minutes for it to
cool to the desired drinking temperature range of
approximately 145-155° F. The container of Figure 1 is
adapted to cool the coffee down from even the boiling
temperature to said desired range in less than one
minute’s time and to thereafter maintain the
temperature within the desired range, for a period of
many minutes. For this purpose, the preferred material
18 is bee’s wax, having a melting point of
approximately 147° F.
As conceded by the examiner (see page 3 of the answer),
Zimmerman does not respond to the limitation of independent
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claim 1 that the outer shell of the receptacle has a foam
insulating layer defining at least a portion of the inner surface
of the outer shell. The examiner’s reliance on Staggs to
overcome this deficiency is not well founded.
Staggs pertains to a container designed to rapidly transform
its contents into a congealed or very low temperature liquid
condition. The device comprises an inner container enclosed
within a larger outer cup and a water based refrigerant in the
space therebetween. For use, “the device in [sic, is] placed in
a refrigerator freezer until the refrigerant is solidified. The
contents are then poured into the container and cooled as heat is
absorbed by the refrigerant through the walls of the inner
container” (abstract). Staggs states that the concepts of the
invention may also be applied in the design of containers to
heat, rather than cool their contents (column 29, lines 26-33).
Looking at the construction of the Staggs device in detail,
Figures 1-3, 10 and 11 show that the container includes an
exterior cup 14 (which forms the large outer cup) and a cold cell
assembly 12 (which forms the inner container), with the exterior
cup 14 and cold cell assembly 12 being joined at their upper ends
by a mouthpiece 10 and sealing arrangement 24. The cold cell
assembly 12 is a double walled structure defined by an outer wall
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member 40 and an wall inner member 16 spaced apart to define
therebetween a refrigerant compartment 58 that is filled with a
suitable refrigerant 42. When assembled, the exterior cup 14 and
the outer wall member 40 of the cold cell assembly are spaced
apart to form a dead air space 38 therebetween. Staggs explains
at column 22, lines 53-59, that the dead air space is made up of
room air that is trapped inside the device when the parts are
assembled. Staggs prefers to use dead air space rather than
rubber or plastic foam insulation because dead air has no cost,
yet possesses excellent thermal insulating properties (column 27,
lines 45-59).
In proposing to combine Zimmerman and Staggs to reject
claims 1, 10-12 and 39, the examiner submits (answer, page 4)
that
[i]t would have been obvious at the time the invention
was made to a person having ordinary skill in the art
to employ in Zimmerman et al. the outer shell being
comprised of . . . a double, insulation plastic wall
with insulation (i.e., evacuated air, rubber, plastic
foam) therebetween . . . as disclosed in Staggs. The
claimed materials, shape and dimension are considered
to be obvious design expedients in view of the
materials and dimensions disclosed in Zimmerman et al.
and Staggs which do not solve any stated problem or
produce any new and/or unexpected result. It would
have been obvious to one having ordinary skill in the
art at the time the invention was made to have the
claimed insulation . . . since it has been held to be
within the general skill of a worker in the art to
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1In this regard, the examiner’s reliance on a per se rule
such as that derived from In re Leshin, 277 F.2d 197, 198-99,
125 USPQ 416, 417-18 (CCPA 1960) (that selection of a known
material based on suitability for the intended use is not
normally considered to be patentable) does not suffice to make up
for the substantial deficiencies in the factual basis for the
rejection.
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select a known material on the basis of its suitability
for the intended use as a matter of obvious design
choice. In re Leshin, [277 F.2d 197,]125 USPQ 416
[CCPA 1960].
We cannot accept the examiner’s position. First, the
examiner’s determination that Staggs employs evacuated air as an
insulating medium is simply incorrect. As clearly stated by
Staggs (see, for example, column 22, lines 53-59, and column 27,
lines 45-59), the space 38 between the exterior cup 14 and the
outer wall member 40 is dead air space (i.e., made up of room
air). Second, there is no factual support for the examiner’s
assertion to the effect that one of ordinary skill in the art
would consider appellant’s use of foam insulation in the manner
particularly called for in claim 1 to be an “obvious expedient”
or “matter of obvious design choice.”1 Third, Staggs expressly
teaches away from the use of foam insulation. See column 27,
lines 52-57. Fourth, even if Zimmerman were modified in the
manner proposed by the examiner, the subject matter of claim 1
would not necessarily result because the modified Zimmerman
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device may or may not comprise an outer shell comprising a foam
insulating layer wherein said layer defines at least a portion of
the inner surface of the outer shell. In short, since neither
one of the applied references teaches, suggests or implies an
outer shell comprising a foam insulating layer wherein the foam
layer defines at least a portion of the inner surface of the
outer shell, it cannot be said that their combined teachings
would have rendered obvious such a construction.
Accordingly, we will not sustain the rejection of claim 1,
or claims 10-12 and 39 that depend therefrom, as being
unpatentable over the combination of Zimmerman and Staggs.
Rejection (2)
Considering next the examiner’s rejection of independent
claim 17, the examiner acknowledges that Zimmerman does not
respond to the limitation of claim 17 pertaining to the recess in
the inner surface of the outer shell spaced from the lip of the
shell for engaging the rim of the inner vessel and for preventing
contact between the inner vessel and the mouth of a consumer of
liquid from the receptacle. The examiner’s reliance on Myers to
overcome this deficiency also is not well taken.
Myers pertains to a reusable container or jacket 1 for milk
and the like made of iron, steel, aluminum, brass, bakelite, or
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other substantial material, the reusable container being provided
with a disposable sanitary cup 9 of treated or waxed paper that
functions as a single use inner liner for the container. The
liner is held in the container by means of a shoulder 11 and
flange 12 provided at the upper edge of the paper cup engaging in
a groove or recess 5 of the container. As explained by Myers:
The shoulder 11 is adapted to spring into the
groove or recess 5 with the flange 12 when the
container 9 is pressed into the jacket 1 from the top.
No extraneous parts are required to support the inner
container. This springing action of the shoulder 11
and flange 12 into the recess 5 also makes necessary
the destruction of the inside container before it can
be removed, as no grip can be obtained on the paper
member 9 without gouging into its interior surface,
thereby puncturing it. [Page 1, lines 68-79.]
In establishing a prima facie case of obviousness, it is
incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a prior
art reference or to combine reference teachings to arrive at the
claimed invention. See Ex parte Clapp, 227 USPQ 972, 973
(Bd. Pat. App. & Int. 1985). To this end, the requisite
motivation must stem from some teaching, suggestion or inference
in the prior art as a whole or from the knowledge generally
available to one of ordinary skill in the art and not from the
appellant’s disclosure. See, e.g., Uniroyal, Inc. v.
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Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439
(Fed. Cir. 1988).
In the present instance, the examiner contends (answer,
page 5) that it would have been obvious to one of ordinary skill
in the art to provide the outer container 14 of Zimmerman with a
lip having a inner recess and the inner container 10 with a rim
in sealing engagement with the inner recess “for the purpose of
securing the inner vessel to the outer vessel with no extraneous
parts as disclosed in Myers.” For the reasons that follow, we
cannot accept the examiner’s position.
In our opinion, the threaded connection 16 used by Zimmerman
to connect the upper portions of the containers 10 and 14
constitutes a relatively simple connection that comprises “no
extraneous parts.” This being the case, the examiner’s reason
for providing Zimmerman with the recess and extended rim
connection of Myers (i.e., for securing the vessels together
“with no extraneous parts”) is insufficient to justify the
proposed modification. Moreover, in that there is no disclosure
in Myers that the connection between the container 1 and the cup
9 can function as a seal, the proposed modification of Zimmerman
in view of Myers might very well compromise the operation of
Zimmerman by allowing thermoplastic material 18 to escape when it
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2See page 10, lines 15-22, of appellant’s specification,
wherein it is stated that locating the upper end of the inner
vessel below the lip of the outer shell prevents the lips of a
consumer from contacting the highly thermally conductive inner
vessel when the consumer drinks from the receptacle.
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changes phase to a liquid. This would act as a disincentive for
modifying Zimmerman in the manner proposed because a modification
that renders the modified prior art unsatisfactory for its
intended purpose would not have been obvious. See Tec Air Inc.
v. Denso Mfg. Michigan Inc., 192 F.3d 1353, 1360, 52 USPQ2d,
1294, 1298 (Fed. Cir. 1999); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). Finally, because neither
one of the applied references recognizes the problem solved by
appellant2 in locating the upper end of the inner vessel in a
recess spaced from the lip of the outer shell, it is problematic
that the proposed modification would result in the subject matter
of claim 17 (i.e., a recess spaced from the lip of the outer
shell and a rim of the inner vessel spaced from said lip for
preventing contact between the inner vessel and the mouth of a
consumer of liquid from the receptacle).
For these reasons, we will not sustain the rejection of
claim 17, or claims 18, 26-28 and 35-38 that depend therefrom, as
being unpatentable over the combination of Zimmerman and Myers.
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Rejection (3)
Claims 29-31 depend either directly or indirectly from
claim 17. In rejecting these claims as being unpatentable over
Zimmerman in view of Myers and further in view of Staggs, the
examiner relies on Myers for its showing of an inner recess and
lip connection and Staggs for its showing of a double-walled
insulated container. The examiner’s rationale in combining these
reference teachings with Zimmerman to arrive at the subject
matter of claims 29-31 is no more convincing here then it was in
rejecting claim 1 as being unpatentable over Zimmerman and Staggs
and claim 17 as being unpatentable over Zimmerman and Myers. It
followings that we also will not sustain the rejection of
claims 29-31 based on the combined teachings of Zimmerman, Myers
and Staggs.
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SUMMARY
The decision of the examiner finally rejecting claims 1,
10-12, 17, 18, 26-31 and 35-39 is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
LJS:svt
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