Ex Parte Trost et al

Patent Trial and Appeal Board

Jan 31, 2018

13916659 (P.T.A.B. Jan. 31, 2018)

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.
13/916,659 06/13/2013 Steven M. Trost 26959.99 3778
55709 7590 02/02/2018
STRATEGIC SOLUTIONS INTERNATIONAL, LLC
2823 W 28th Ave
STILLWATER, OK 74074
EXAMINER
ELOSHWAY, NIKI MARINA
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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):
STEVE@SSI.US
Steve@Trost.us
S arahTrost @ yahoo, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN M. TROST and JOSEPH W. PRUITT
Appeal 2017-004645
Application 13/916,659
Technology Center 3700
Before BRETT C. MARTIN, LYNNE H. BROWNE, and
NATHAN A. ENGELS, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—31. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2017-004645
Application 13/916,659
THE INVENTION
Appellants’ claims are directed generally “to an insulating container
comprising a vessel and a wrap.” Spec. 12. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An insulating container, comprising:
a vessel and a wrap;
said vessel having a wall, said wall having one or more
protrusions on one side of said wall that are matched to one or
more corresponding recesses on the opposite side of said wall,
wherein said protrusions have a substantially consistent wall
thickness, and
said wrap cooperates with said protrusions thereby
defining one or more void spaces between said wall and said
wrap, said void spaces having a depth between about 5 mm and
about 12 mm, thereby providing insulating properties to said
container.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fremin US 4,919,983 Apr. 24, 1990
Okushita US 2004/0226948 A1 Nov. 18,2004
REJECTIONS
The Examiner made the following rejections:
Claims 1—10, 13—20, and 22—31 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Okushita. Ans. 2.
Claims 11, 12, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Okushita and Fremin. Id.
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Appeal 2017-004645
Application 13/916,659
ANALYSIS
The Examiner finds that Okushita teaches all of the claimed elements
except for the sizing of the voids recited in claim 1. Final Act. 2. After first
asserting that one of ordinary skill in the art would increase only the void
size to meet the claimed limitation {Id.), in the Answer, presumably in
response to Appellants’ arguments (App. Br. 7), the Examiner alters the
rejection to conclude that it would have been obvious simply to scale up the
entire container to achieve the claimed void size (Ans. 2).
Appellants provide three reasons for why this upscaling would not
have been obvious to one of ordinary skill in the art and also provide a
Declaration of Robert P. Grant in support of the same. Reply. Br. 4. Taken
together, we find Appellants’ arguments persuasive in showing that the
Examiner’s rejection is improper. First, as Appellants state, upsizing the cup
of Okushita would result in a cup originally intended as a hand-held sized
container for rehydrating dried soup with hot water into a gallon-sized
container, which would no longer be suitable for holding with one hand
while consuming the soup with the other. Reply Br. 7.
Additionally, we agree that such upscaling would result in a cup
whereby “scaling up the container to achieve the claimed depth of void
spaces would result in a container that cannot sustain the claimed depth of
void spaces when being held by hand and cannot even sustain the desired
separation between container and sleeve taught by Okushita” because “the
paper sleeve [would] immediately collapse onto the sidewall of the paper
cup when held.” Id. Such would go against explicit disclosure in Okushita
that “teach[es] that a critical element related to their container design
depends upon the sleeve and the ribs being able to withstand the force
required to properly grip and hold the cup by hand without undue warping of
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Appeal 2017-004645
Application 13/916,659
the sleeve.” Reply Br. 10 (citing Okushita 123). The Examiner has made
no compensation for the effects of increased size utilizing the same materials
intended for a smaller cup. As Appellants point out, an increase in the size
of the span of the depth would increase deflection, thus no longer making
the cup suitable to maintain the void depth as intended. Reply Br. 11.
While there may be instances where an increase in size is within the
capability of one of ordinary skill in the art, in this particular case such an
upscaling would essentially require an entire redesign to deal with the new
problems created by the increase in size. Because the Examiner provides no
explanation as to why such a redesign would also be within the ordinary skill
of one in this art or even what such changes would/could be made, we
cannot sustain the rejection. Eremin does not cure the deficiencies noted
above with regard to Okushita and so we also do not sustain the rejections
over Okushita and Fremin.
DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 1—31.
REVERSED
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