Ex Parte Stahlecker et al

Patent Trial and Appeal Board

Sep 14, 2016

12380423 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/380,423 0212712009
23474 7590 09/16/2016
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.P0201US 9528
EXAMINER
TAWFIK, SAMEH
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
09/16/2016 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, UWE MESSERSCHMID, and
HOLGER AUBELE
Appeal2014-009576
Application 12/380,423
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Werner Stahlecker et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner's decision rejecting claims 9-32, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2014-009576
Application 12/380,423
CLAIMED SUBJECT MATTER
Appellants' claimed subject matter "relates to a process for the
manufacture of a double-walled cup." Spec. 2. Claims 9 and 16 are
independent. Claim 9, reproduced below, is illustrative of the subject matter
on appeal.
9. A process for manufacturing a double-walled cup, said
process comprising the steps of:
providing a prefabricated inner cup having a substantially
centrally-located longitudinal axis;
providing a flat blank made of paper and having spaced
apart ends;
applying a thermoplastic adhesive to a limited area of the
blank;
joining the ends of the blank to one another via the
thermoplastic adhesive to form a tube-shaped outer sleeve;
after said step of joining, sliding the outer sleeve onto the
inner cup in a direction substantially parallel with the axis; and
attaching the outer sleeve to the inner cup so that the outer
sleeve rests on the inner cup only at upper and lower rim areas of
the outer sleeve and so that an air gap is formed between the outer
sleeve and the inner cup, with the lower rim area of the outer
sleeve not being connected to the inner cup, but abutting and
loosely resting on the inner cup.
EVIDENCE
The Examiner relied upon the following evidence:
Meier
D'Amato
(hereafter "Spa") 1
us 5,524,817
EP 1 785 370 Al
June 11, 1996
May 16, 2007
1 The inventor listed on this reference is Gianfranco D' Amato, and the
applicant is SEDA S.p.A. The Examiner and Appellants refer to the
reference as "Spa." We adopt this nomenclature for consistency.
2
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Application 12/380,423
REJECTIONS
Appellants appeal from the Final Action, dated January 17, 2014,
which includes the following rejections:
1. Claims 9-32 under 35 U.S.C. § 103(a) as unpatentable over
Appellants' Admitted Prior Art (AAPA)2 and Spa.
2. Claims 9-28 under 35 U.S.C. § 103(a) as unpatentable over AAPA
and Spa.
3. Claims 9-32 under 35 U.S.C. § 103(a) as unpatentable over
AAPA, Spa, and Meier.3
ANALYSIS
First Ground of Rejection: Obviousness based on AAPA and Spa
Appellants present arguments for patentability of claims 9, 10, 13-21,
24-26, and 29-32 subject to the first ground of rejection as a group. Appeal
Br. 4-9. We select claim 9 as representative of this group, with claims 10,
13-21, 24-26, and 29-32 standing or falling with claim 9. See 37 C.F.R.
§ 41.37(c)(l)(iv). Appellants present additional argurnents for patentabillty
2 The Examiner referred to page 2 of the Specification as the AAP A. Final
Act. 3; see Spec. 2 (citing German patent application publication
DE 198 40 841 Al, pub. March 9, 2000, which corresponds to U.S. Patent
6,109,518 to Mueller, issued August 29, 2000 (hereafter "Mueller '518")).
3 Although the Examiner's statement of this ground of rejection on page 4 of
the Answer and on page 4 of the Final Action omits claims 29-32, the
Examiner's detailed explanation of the rejection includes analysis of claims
29-32. Ans. 4, 6; Final Act. 4, 6. As such, we understand claims 29-32 to
be included in this ground of rejection.
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Application 12/380,423
of dependent claims 11, 12, 22, 23, 27, and 28, which we address belmv
under separate subheadings. Id. at 9---10.
Claims 9, 10, 13-21, 24-26, and 29-32
The Examiner found that AAP A discloses a process for forming a
double-walled cup, substantially as claimed, including "the lower rim area of
the outer sleeve not being connected to the inner cup, but abutting and
loosely resting on the inner cup." Final Act. 2. The Examiner found that
"AAP A does not admit the use of thermoplastic material as an adhesive/hot-
melt adhesive to seal the edges of the blank in specific areas nor join the
tube to the inner sleeve." Id. However, the Examiner found that "Spa
discloses a similar method where it is known to use ... a hot-melt adhesive
to seal the edges of the blank in specific areas and join the tube to the inner
sleeve." Id. at 2-3 (citing Spa, Abstract; col. 5, 11. 33-35; Fig. 2). The
Examiner determined:
Therefore, one of ordinary skill in the art at the time of the
invention could have substituted AAPA's cold glue with the use
of hot-melt adhesive, in order to come up with stronger seal and
faster to dry ([Spa,] column 5, lines 34-36). The results would
have been predictable to one of ordinary skill in the art.
Id. at 3.
Appellants argue that AAP A fails to disclose "the lower rim area of
the outer sleeve not being connected to the inner cup, but abutting and
loosely resting on the inner cup," as recited in claim 9. Appeal Br. 4-5. The
Examiner responds by pointing to Figures 13-15 of Mueller '518 as
showing that the outer sleeve lower rim or lip area is not connected to the
inner cup, but abuts and loosely rests on the inner cup. Ans. 8. Appellants
disagree with this finding and argue that "FIGS. 13-15 [of Mueller '518]
clearly do not illustrate the lip 3 8 abutting or loosely resting on the inner
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Application 12/380,423
sleeve 14" because "the outer sleeve 15 and the lip 38 thereof are clearly
spaced from the inner sleeve 14." Reply Br. 1.
We are not persuaded by Appellants' argument because it is not
commensurate with the scope of claim 9. The claim does not require that the
outer sleeve lip abut and loosely rest on the inner sleeve. Rather, claim 9
recites "the lower rim area of the outer sleeve not being connected to the
inner cup, but abutting and loosely resting on the inner cup." Appeal Br.
(Claims App.) (emphasis added). Mueller '518 discloses that "FIG. 15 is a
variation ... whereby the outer sleeve 15, as a distinctive lip 38, is rolled
around the rim 24 of the bottom 16 and around the lower end 25 of the inner
sleeve 14." Mueller '518, col. 4, 11. 34-37. Figure 15 of Mueller '518 is
reproduced below.
Fig.15
I
38
Figure 15 of Mueller '518 depicts an inner cup formed of inner sleeve
14 and bottom 16. Figure 15 shows lip 3 8 of outer sleeve 15 curling around
bottom rim 24 and lower end 25 of the inner cup, and shows that lip 38 is
not connected to the inner cup, but abuts and loosely rests on bottom 16 of
the inner cup. Because the bottom 16 represents part of the inner cup, we
are not persuaded of error in the Examiner's finding that A.APA discloses
the outer sleeve lower rim area not being connected to the inner cup, but
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Application 12/380,423
abutting and loosely resting on the inner cup, which is supported by a
preponderance of the evidence.
Appellants also argue that "the Office Action admits in the second
rejection of the claims that AAP A, even combined with Spa, does not
include" the lower rim area of the outer sleeve not being connected to the
inner cup, but abutting and loosely resting on the inner cup. Appeal Br. 5.
In the second ground of rejection, the Examiner stated that "AAP A may not
clearly teach[] ... the lower rim area of the outer sleeve not being connected
to the inner cup, but abutting and loosely resting on the inner cup." Final
Act. 4 (emphasis added). We understand the Examiner's statement not to be
an admission that AAP A fails to disclose the limitation in question, but
rather the Examiner simply offered an alternative ground of rejection for
these claims based upon a narrower interpretation of AAP A. In any event,
for the reasons explained supra, we agree with the Examiner's initial reading
of AAP A as disclosing the lower rim area of the outer sleeve not being
connected to the inner cup, but abutting and loosely resting on the inner cup.
Thus, Appellants' argument does not apprise us of error in the Examiner's
findings with respect to AAP A.
Appellants argue that it would not have been obvious to combine
AAP A and Spa as proposed by the Examiner. Appeal Br. 6-8. In particular,
Appellants assert that, "starting from AAP A, which teaches the joining of
two ends of the blank to form a sleeve, one of ordinary skill in the art would
not look to Spa for the purpose of improving a cup of the type taught in
AAP A," because, "notwithstanding the mention of hot melt glue as an
adhesive, [Spa] teaches away from joining the two ends of the blank to one
another." Id. at 7. Appellants assert that "Spa explicitly teaches attaching
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Application 12/380,423
the two ends of the blank directly to the inner wall 2 of the cup 1 in contrast
with the prior art which joins the two free ends of the blank." Id.
Appellants also assert that "Spa teaches that ... the adhesive utilized on the
additional areas 18 is cold glue which achieves a stronger adhesion." Id.
(citing Spa, para. 31 ). According to Appellants, "a strong adhesion is
necessary between the ends of the blank, since radially outwardly directed
forces act on the outer sleeve when same is slid over the inner prefabricated
cup," and therefore one of ordinary skill in the art "would ... be lead to
believe that cold glue is necessary to join the ends of the blank in order to
achieve a stronger adhesion than what is provided by hot melt glue." Id.
at 8.
We are not persuaded by Appellants' argument that Spa teaches away
from joining two ends of an outer sleeve blank. First, the Examiner found
that AAPA discloses joining two ends of an outer sleeve blank. The
Examiner's rejection did not look to Spa for teaching the construction of the
sleeve or cup. Rather, the Examiner's rejection relied on Spa solely for
disclosing a hot melt adhesive and proposed to substitute the cold adhesive
used to join the ends of AAPA's outer sleeve with Spa's hot melt adhesive.
Final Act. 2-3. In this regard, we find nothing in the disclosures of AAPA
or Spa that discredits or discourages replacing the cold glue of AAP A with
the hot melt glue of Spa as proposed by the Examiner. Although Spa does
teach that cold glue achieves a stronger adhesion than hot melt adhesive, the
reference does not describe anything to suggest that one of ordinary skill in
the art would consider cold glue to be "necessary" for joining two ends of
the blank to one another or that hot melt glue would be unsuitable for this
purpose. Instead, Spa appears to suggest that using hot melt glue in place of
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cold glue would be advantageous to speed assembly. See Spa, para. 31
(disclosing that "hot melt glue ... allows for a fast assembly" and that, "[i]f
speed of the assembly is not an issue, cold glue may also be used as the
adhesive"). Appellants' arguments do not persuade us that the Examiner's
articulated reasoning in support of the proposed modification of AAP A's
process to use the hot melt glue of Spa to achieve a faster drying seal is in
error.
For the above reasons, we sustain the first ground of rejection of
independent claim 9, and of claims 10, 13-21, 24-26, and 29-32 falling
therewith, under 35 U.S.C. § 103(a) as unpatentable over AAPA and Spa.
Claims 27 and 28
Claims 27 and 28 depend from claims 16 and 9, respectively, and
recite that the lower edge or lower rim area of the outer sleeve forms "an
inwardly curled-in bottom of the outer sleeve, with the inwardly curled-in
bottom of the outer sleeve abutting and loosely resting on the inner cup."
Appeal Br. (Claims App.). Appellants argue that "the prior art of record
does not disclose a curled-in bottom of an outer sleeve abutting and loosely
resting on the inner cup." Id. at 10. Appellants' argument is not persuasive,
because Mueller '518, as cited by the Examiner, shows the outer sleeve 15
having an inwardly curled-in bottom lip 38. See Ans. 8 (citing Mueller '518,
Figs. 13-15). As the Examiner explains, Mueller '518 discloses that "the
outer sleeve 15 is rolled around the rim 24 of the bottom 16 and around the
lower end 25 of the inner sleeve 14 and pressed or sealed." Id. (citing
Mueller '518, col. 4, 11. 28-33); see also Mueller '518, col. 4, 11. 34-37
(disclosing that "FIG. 15 is a variation ... whereby the outer sleeve 15, as a
distinctive lip 38, is rolled around the rim 24 of the bottom 16 and around
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Application 12/380,423
the lower end 25 of the inner sleeve 14")). Accordingly, we sustain the
Examiner's first ground of rejection of claims 27 and 28 under 35 U.S.C.
§ 103(a) as unpatentable over AAPA and Spa.
Claims 11, 12, 22, and 23
Appellants argue that the Examiner's rejection of claims 11, 12, 22,
and 23, each depending from one of independent claims 9 and 16, is
improper because "the final Office Action does not include any discussion
[of these claims] or the subject matter thereof." Appeal Br. 9-10. We agree
with Appellants that the Examiner's rejection fails to specifically address the
limitations appearing in these claims. Final Act. 2-3 (containing no
discussion of the subject matter of claims 11 and 22 (further reciting the
applying step) and of claims 12 and 23 (further reciting the attaching step)).
As such, the Examiner has failed to demonstrate obviousness of the subject
matter of claims 11, 12, 22, and 23. Accordingly, we do not sustain the
Examiner's first ground of rejection of claims 11, 12, 22, and 23 under
35 U.S.C. § 103(a) as unpatentable over AAPA and Spa.
Second Ground of Rejection: Obviousness based on AAPA and Spa
Independent claim 9 calls for "the lower rim area of the outer sleeve
not being connected to the inner cup, but abutting and loosely resting on the
inner cup." Appeal Br. (Claims App.). Independent claim 16 recites a
similar limitation. Id. In the second ground of rejection, the Examiner
acknowledged that "AAP A may not clearly teach[] ... the lower rim area of
the outer sleeve not being connected to the inner cup, but abutting and
loosely resting on the inner cup." Final Act. 4. However, the Examiner
found that Spa discloses that "outer sleeve 5 is adhesively attached to the
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Application 12/380,423
internal wall of the cup 1 at least by adhesive area 15, which leaves the
lower area of the outer sleeve not connected to the inner cup." Id. (citing
Spa, Figs. 2, 5). The Examiner determined:
Id.
[O]ne of ordinary skill in the art at the time of the invention could
have substituted AAPA's outer sleeve by having the lower rim
area of the outer sleeve not being connected to the inner cup, but
abutting and loosely resting on the inner cup, as suggested by
Spa, in order to easily remove the outer sleeve as needed.
Here, we find persuasive Appellants' argument that Spa fails to
disclose "the lower rim area of the outer sleeve not being connected to the
inner cup" because " [a] dhesives 15 and 1 7 as shown in FIG. 2 of Spa extend
from the top to the bottom of the outer sleeve such that the lower rim or edge
area of the outer sleeve is connected to the inner cup." Appeal Br. 11.
Specifically, Figure 2 of Spa depicts adhesive areas 15 and 17 extending
from the top edge of the outer sleeve blank 10 to the lower rim area of the
blank. Additionally, as depicted in Figure 3 of Spa, the adhesive connects
the outer sleeve blank 10 to the inner cup. Thus, the Examiner's finding that
Spa discloses "the lower rim area of the outer sleeve not being connected to
the inner cup" is not supported by a preponderance of the evidence.
For these reasons, we do not sustain the second ground of rejection of
independent claims 9 and 16, and of claims 10-15 and 17-28 depending
therefrom, under 35 U.S.C. § 103(a) as unpatentable over AAPA and Spa.
Third Ground of Rejection: Obviousness based on AAP A, Spa, and Meier
In the third ground of rejection, the Examiner found that "AAP A ...
[and] Spa may not clearly teach[] ... the lower rim area of the outer sleeve
not being connected to the inner cup nor the lower edge area of the outer
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Application 12/380,423
sleeve forms an inwardly curled in bottom of the outer sleeve abutting and
loosely resting on the inner cup." Final Act. 5. However, the Examiner
found that Meier discloses these limitations. Id. (citing Meier, Fig. 6). The
Examiner determined:
[O]ne of ordinary skill in the art at the time of the invention could
have substituted AAPA's outer sleeve by having the lower rim
area of the outer sleeve not being connected to the inner cup, but
abutting and loosely resting on the inner cup, as suggested by
Meier, in order to come up with strong heat insulating boundary
to help maintain heat within the contents of the container.
Id. at 6 (citing Meier, col. 1, 11. 62-66).
Appellants argue that Meier fails to disclose "the lower rim area of the
outer sleeve not being connected to the inner cup, but abutting and loosely
resting on the inner cup," as recited in independent claim 9, and as similarly
recited in independent claim 16. Appeal Br. 13-14. In particular,
Appellants assert that Meier's outer cup "sidewall blank 20 does not abut the
sidewall blank 16 of the inner cup at a lower rim area of the sidewall blank
20." Id. at 13. Appellants also assert that, "[a]t best, the very bottom of the
outer cup 14 ... would be the lower rim area, and such lower rim area is not
abutting and loosely resting on the inner cup." Id. at 14. According to
Appellants, "the outer cup 14 of ... Meier ... does not rest on the inner cup
16, but the inner cup 16 rests on the bottom wall blank 22 of the outer cup
14." Id.
We are persuaded by Appellants' argument that the rejection
presented cannot be sustained. Figure 6 of Meier depicts bottom 22 of the
outer cup abutting and resting on inner cup sidewall lower region 34, and
does not depict outer sleeve blank 20 abutting and resting on inner cup 12.
Thus, the Examiner's finding that Meier discloses "the lower rim area of the
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outer sleeve not being connected to the inner cup, but abutting and loosely
resting on the inner cup" is not supported by a preponderance of the
evidence.
For the above reasons, we do not sustain the third ground of rejection
of independent claims 9 and 16, and of claims 10-15 and 17-32 depending
therefrom, under 35 U.S.C. § 103(a) as unpatentable over AAPA, Spa, and
Meier.
DECISION
The Examiner's first ground of rejection of claims 9, 10, 13-21, and
24-32 under 35 U.S.C. § 103(a) as unpatentable over AAPA and Spa is
AFFIRMED.
The Examiner's first ground of rejection of claims 11, 12, 22, and 23
under 35 U.S.C. § 103(a) as unpatentable over AAPA and Spa is
REVERSED.
The Examiner's second ground of rejection of claims 9-28 under
35 U.S.C. § 103(a) as unpatentable over AAPA and Spa is REVERSED.
The Examiner's third ground of rejection of claims 9-32 under
35 U.S.C. § 103(a) as unpatentable over AAPA, Spa, and Meier is
REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED-IN-PART
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