Ex Parte Stahlecker

Patent Trial and Appeal Board

Sep 21, 2016

12653833 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/653,833 12/18/2009
23474 7590 09/23/2016
FLYNN THIEL BOUTELL & TANIS, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
FIRST NAMED INVENTOR
Werner Stahlecker
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.
5000.P0224US 5167
EXAMINER
DEMEREE, CHRISTOPHER R
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
09/23/2016 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):
DOCKET@FL YNNTHIEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WERNER STAHLECKER
Appeal2014-007883
Application 12/653,833
Technology Center 3700
Before JILL D. HILL, LISA M. GUIJT, and ERIC C. JESCHKE
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATE1\1ENT OF THE CASE
Werner Stahlecker ("Appellant") 1 appeals under 35 U.S.C. § 134(a)
from the Examiner's decision to reject claims 1-7 and 17-21. Claims 8-16
are cancelled.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies the real party in interest as PTM Packaging Tools
Machinery Pte. Ltd. Appeal Br. 1.
2 See Amendment dated Aug. 13, 2012.
Appeal2014-007883
Application 12/653,833
THE CLAIMED SUBJECT MATTER
Claims 1 and 1 7 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A paper cup comprising a cup sleeve and a bottom
connected in a substantially liquid-tight manner to the cup sleeve,
wherein the cup sleeve has a top curl shaped at an end of the cup
sleeve opposite the bottom, wherein the cup sleeve is arranged
between the bottom and the end of the cup sleeve opposite the
bottom at least in some sections at an angle greater than or equal
to 10° relative to a central longitudinal axis of the paper cup, and
one of the some sections includes a top of the cup sleeve adjacent
the top curl.
THE REJECTIONS
I. Claims 1-3, 7, and 17-21 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Shappell (US 3,215,325; iss. Nov. 2, 1965).
II. Claims 1-7 and 17-21 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Frost (US 2008/0023537 Al; pub. Jan. 31, 2008) and
Shappell.
III. Claims 5 and 6 also stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Frost, Shappell, and Fritz (US 2006/0289609 Al; pub.
Dec. 28, 2006).
ANALYSIS
Rejection I
Claim 1 recites, inter alia, a sleeve arranged "at least in some sections
at an angle greater than or equal to 10° relative to a central longitudinal axis
of the paper cup, and one of the some sections includes a top of the cup
sleeve adjacent the top curl." Appeal Br., Claims App. 1. Claim 17
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Application 12/653,833
similarly recites, inter alia, a sleeve having an outer wall that extends "at
least in some sections at an angle greater than or equal to 10° relative to a
central longitudinal axis of the cup sleeve; and wherein one of the some
sections includes the top area of the cup sleeve adjacent the top curl." Id. at
2. The Examiner finds these limitations are taught by Shappell, which
discloses that "[t]o further insure close nesting of the subject cups when
formed into a stack, as shown in FIG. 2, the lower portion of the body side
wall has a greater angle of taper, e.g. about 17°, than the remainder of the
body side wall. Final Act. 2 (citing Shappell, col. 2, 11. 45-50).
Appellant argues that Shappell' s taper angle of 17° is located at a
bottom portion of cup body 12, not the portion of cup body 12 adjacent brim
15. App. Br. 6. According to Appellant, Shappell teaches that most of cup
body 12, including the portion of cup body 12 adjacent rolled brim 15, tapers
inwardly from top to bottom at a taper angle of about 7°, and the lower
portion of cup body 12 adjacent closure 14 can have a greater taper than the
rest of cup body 12, e.g., the taper angle for the lower portion can be
approximately 17°. Id.
The Examiner responds that "the breadth of 'adjacent' the top curl
encompasses any point of the sidewall of the cup." Ans. 5. Appellant
contends the Examiner's construction of the claim term "adjacent" is overly
broad and that, under a proper construction, Shappell fails to teach one of the
some sections with an angle of greater than or equal to 10° includes a top of
the cup sleeve adjacent the top curl. Reply Br. 1-2. Appellant provides a
dictionary definition for "adjacent," which defines the term as "not distant,
having a common endpoint or border, or immediately preceding or
following." Id. at 1 (citing Merriam-Webster on-line dictionary). According
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Application 12/653,833
to Appellant: "[A]djacent cannot be properly interpreted as being anywhere
on the sidewall of the cup. Adjacent means at the top of the cup and right
next to the top curl." Id. at 2.
We agree with Appellant that the Examiner's interpretation of
"adjacent" is unreasonably broad. By construing "adjacent" as "any portion
of the sidewall of the cup" (see Ans. 5), the Examiner impermissibly reads
the term "adjacent" out of the claim. Bicon Inc. v. Straumann Co., 441 F.3d
945, 950 (Fed. Cir. 2006) ("[C]laims are interpreted with an eye toward
giving effect to all terms in the claim."); see also Stumbo v. Eastman
Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim
constructions which render phrases in claims superfluous). Under the
broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Trans logic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We agree with Appellant that an
ordinary meaning of the term "adjacent" consistent with the disclosure is
"not distant, having a common endpoint or border, or immediately preceding
or following." Pursuant to this construction, we further agree with Appellant
that Shappell fails to disclose a top of the cup sleeve adjacent the top curl to
be at angle greater than or equal to 10° relative to a central longitudinal axis
of the cup. As Appellant points out, the portion of the sleeve that is
immediately preceding the top curl is under 10°, and the only portion of the
sleeve that is at an angle greater than or equal to 10° is a lower portion
located on the section of sleeve farthest away from the top curl. Shappell,
col. 2, 11. 9-10, 45--48; see also Appeal Br. 6.
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Application 12/653,833
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1 and 17, and claims 2, 3, 7, and 18-21 depending
therefrom.
Rejection II
The Examiner finds that Frost teaches the claimed cup, but "does not
explicitly teach a discrete angular measurement." Final Act. 3. The
Examiner further finds that Shappell teaches a cup with a sidewall angle of
17°, and concludes that it would have been obvious to modify the angle of
the sidewall in Frost to 17° "in order to provide suitable nesting
characteristics, as taught by Shappell." Id. at 4. In the alternative, the
Examiner concludes it would have been an obvious matter of design choice
to make the angle of Frost's sidewall greater than or equal to 10° because
"such a modification would have involved a mere change in the size of a
component," which is recognized as being within the level of ordinary skill
in the art. Final Act. 4 (citing Jn re Rose, 105 USPQ 237 (CCPA 1955)).
Appellant argues that "it is not possible by means of conventional
methods to arrange a cup sleeve with a top curl or an outwardly folded top
edge having an angle greater than or equal to 10° relative to a central
longitudinal axis of the cup at the top curl or the outwardly folded top edge,"
and in support, Appellant submits declarations by each of the inventors
listed in Frost. Appeal Br. 14; see also Frost Deel. i-f 14, Messerschmid
Deel. i-f 12, and Stahlecker Deel. i-f 14 (each stating "[w]hen trying to
manufacture a paperboard cup by using conventional methods, said cup
having the cup sleeve arranged at an angle greater than or equal to 10°
relative to a central longitudinal [axis] of the paper cup, the upper rim area
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Application 12/653,833
of the cup sleeve is stretched too much and therefore rips or breaks during
the formation of the top curl or outwardly folded top edge").
The Examiner fails to adequately address this argument or the
declaration evidence tending to show that one of ordinary skill in the art
would have expected a modification to Frost's angle to be greater than 10°
to result in ripping during formation of a top curl or outwardly folded top
edge. We find insufficient evidence to support the Examiner's position that
one of skill in the art would understand having an angle greater than or equal
to 10° would not destroy the cup when forming the top curl. See Ans. 6-7.
As such, the Examiner has failed to adequately establish a reasonable
expectation of success in modifying Frost's cup sleeve to have an angle
greater than or equal to 10° relative to a central longitudinal axis of the cup
sleeve at the section adjacent the top curl.
Regarding the Examiner's alternative conclusion of obviousness,
Appellant argues that the Examiner improperly relied upon design choice
because the claimed angle of the top section of the cup sleeve adjacent the
top curl provides an advantage. Appeal Br. 14--15. Appellant notes that the
Specification discusses the criticality of the claimed feature. Id. (citing
Spec. 2, 11. 13-22).
We find Appellant's argument regarding design choice persuasive. 3
The Supreme Court approved of the principle in Sakraida v. Ag Pro, Inc.,
3 We note that evidence of no reasonable expectation of success supports a
conclusion of nonobviousness, as discussed supra. Accordingly, the
Examiner's conclusion of obviousness based on design choice is also
deficient for the reasons discussed supra regarding no reasonable
expectation of success in modifying the angle of the sleeve adjacent the top
curl in Frost to be greater than or equal to 10°.
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Application 12/653,833
425 U.S. 273, 282 (1976) that "when a patent 'simply arranges old elements
with each performing the same function it had been known to perform' and
yields no more than one would expect from such an arrangement, the
combination is obvious." KSR Int'! v. Teleflex Inc., 550 U.S. 398, 418
(2007). However, when the claimed structure performs differently from the
prior art, a finding of obvious design choice is precluded. In re Gal, 980
F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious design choice precluded
when claimed structure and the function it performs are different from the
prior art).
Here, the Specification discloses that providing a larger cone angle of
the cup sleeve considerably facilitates the consumption of food, such as
soups. Spec. 2, 11. 13-22. Providing the wider angle at the top of the cup
sleeve makes it possible to consume food from the cup with utensils, such as
a spoon, without the capacity of the cup becoming excessively large. Id.
Frost describes a cup with improved liquid-tightness at the bottom skirt by
providing an outwardly projecting widening at the bottom of the cup and
does not describe the angle of the top of the sleeve adjacent the top curl. See
Frost i-fi-1 7, 8, 44. Further, Shappell only describes the bottom portion of the
sleeve being at an angle greater than 10° in order to facilitate forming stacks
of cups and does not cure the deficiency of Frost. See Shappell, col. 2, 11.
45-54. Thus, the Examiner's finding that it would have been a matter of
obvious design choice to modify the angle of the top section of the cup
sleeve adjacent the top curl to be greater than or equal to 10° is in error
because the claimed structure of the cup sleeve performs differently from the
prior art.
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Application 12/653,833
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1 and 17, and claims 2-7 and 18-21, depending
therefrom.
Rejection III
The Examiner's reliance on Fritz does not cure the deficiencies in the
Examiner's rejection based on Frost and Shappell, as discussed supra, as
applied to independent claim 1. Claims 5 and 6 depend from claim 1.
Therefore, we do not sustain the Examiner's rejection of claims 5 and 6 for
the reasons discussed supra.
DECISION
The Examiner's rejections of claims 1-7 and 17-21 are reversed.
REVERSED
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