Ex parte YEH

Board of Patent Appeals and Interferences

Apr 9, 1998

08436660 (B.P.A.I. Apr. 9, 1998)

Application for patent filed May 8, 1995.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte FRANK YEH
________________
Appeal No. 97-0991
Application 08/436,6601
________________
ON BRIEF
________________
Before FRANKFORT, McQUADE and NASE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 10
through 29, all of the claims pending in the application.
The invention relates to “a novelty drinking cup or mug
Appeal No. 97-0991
Application 08/436,660
The reference in claim 10 to “a second gap” should be2
amended to read as --a gap-- since this is the only gap
mentioned in the claim.
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assembly that allows an individual to choose and change the
ornamental design of the mug” (specification, page 1). Claim
10 is illustrative and reads as follows:
10. A mug assembly, comprising:
an external mug comprising a substantially cylindrical
container wall having an inner surface, the external mug
further comprising a mouth having a substantially circular
upper edge;
an internal mug adapted to be positioned inside the
external mug, the internal mug comprising a substantially
cylindrical container wall having an outer surface and a
substantially circular upper edge, the internal mug further
comprising a sealing material attached adjacent the upper edge
of the internal mug on the outer surface thereof, the sealing
material adapted to engage a portion of the inner surface of
the external mug;
wherein the diameter of the outer surface of the internal
mug is smaller than the diameter of the inner surface of the
external mug so that a second gap is defined when the internal
mug is positioned inside the external mug; and
wherein the internal mug is made of a non-plastic
material.2
The references relied upon by the examiner as evidence of
anticipation and obviousness are:
Appeal No. 97-0991
Application 08/436,660
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Martin 2,895,636 Jul. 21, 1959
Todd 3,766,975 Oct. 23, 1973
Bernardi 4,151,923 May 1, 1979
Bradshaw 4,263,734 Apr. 28, 1981
Fine 4,789,073 Dec. 6, 1988
Saklad 5,150,815 Sept. 29, 1992
The claims on appeal stand rejected as follows:
a) claims 10, 21 and 29 under 35 U.S.C. § 102(b) as being
anticipated by Fine;
b) claims 11, 13, 15, 19, 20, 22, 24, 27 and 28 under
35 U.S.C. § 103 as being unpatentable over Fine in view of
Todd;
c) claim 12 under 35 U.S.C. § 103 as being unpatentable
over Fine in view of Todd, and further in view of Martin;
d) claims 14 and 23 under 35 U.S.C. § 103 as being
unpatentable over Fine in view of Todd and Martin, and further
in view of Bernardi;
e) claims 16 and 25 under 35 U.S.C. § 103 as being
unpatentable over Fine in view of Todd, and further in view of
Saklad;
f) claims 17 and 26 under 35 U.S.C. § 103 as being
Appeal No. 97-0991
Application 08/436,660
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unpatentable over Fine in view of Todd, and further in view of
Bradshaw; and
g) claim 18 under 35 U.S.C. § 103 as being unpatentable
over Fine in view of Martin.
Reference is made to the appellant’s brief (Paper No. 9)
and to the examiner’s answer (Paper No. 10) for the respective
positions of the appellant and the examiner with regard to the
merits of these rejections.
Fine, the examiner’s primary reference, pertains to
insulated beverage containers of the type having an inner
liner and an outer shell which define therebetween an
insulation and indicia display chamber. Fine’s intent is to
provide an improvement of the prior art container shown in
Figures 1 and 2. This prior art container includes an inner
liner A having a notch C at its upper end and an outer shell B
having an upper edge D received within the notch. The liner
and shell are affixed and sealed to one another by the
inclusion of adhesive between notch C and edge D or by sonic
welding along edge D (see column 3, lines 31 through 43).
Appeal No. 97-0991
Application 08/436,660
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According to Fine, this type of sealed connection suffers the
disadvantages of being non-detachable and inefficient to
produce (see column 1, lines 34 through 46). To overcome
these problems, Fine provides the insulated beverage container
shown in Figures 3 through 7. This container consists of an
inner liner 11 having an over-hanging lip portion 13 at its
upper edge and an outer shell 12 having a top edge portion 35
received within the over-hanging lip portion. The over-
hanging
lip portion includes an inwardly projecting bead 14 and the
upper edge of the shell includes outwardly protruding bands 27
and 28. The bead 14 is designed to be snap-fitted into the
groove 36 defined by the bands 27 and 28 to form a detachable,
fluid-tight joint between the liner and shell. Fine teaches
that the liner 11 and shell 12 may be constructed of a plastic
or other liquid-impervious insulating material and that the
bead 14 and bands 27 and 28 may be formed of the same material
as the liner and shell, respectively, or of a separate rubber
material (see column 4, lines 59 through 63; and column 6,
Appeal No. 97-0991
Application 08/436,660
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lines 3 through 9).
With regard to the standing 35 U.S.C. § 102(b) rejection
of claims 10, 21 and 29, anticipation is established only when
a single prior art reference discloses, expressly or under
principles of inherency, each and every element of a claimed
invention. RCA Corp. v. Applied Digital Data Sys., Inc., 730
F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
In support of this rejection, the examiner points to
Fine’s disclosure at “col. 4, lines 59+ regarding materials
and Fig. 1 and 2 and col.3, lines 31+ regarding internal to
external mug attachment” (answer, page 5). The examiner also
explains that
[t]he mug assembly set forth in Figs. 1 and 2 of
Fine employs an adhesive between notch C and edge D.
This adhesive meets the sealing material limitation.
The adhesive between the notch C and edge D, when
the mug is assembled, will have a flat outer surface
as the adhesive will be forced to assume the shape
of the notch and edge, and coat a portion of the
inner and outer surfaces of the notch. The coating
of the inner and outer surfaces of the notch will
occur due to the movement of the adhesive as the
edge is placed in the notch, and forces the adhesive
to fill any void between the notch and edge. Note
the small tolerances between the notch and edge.
Note the flat surfaces disclosed in Figs. 1 and 2.
The adhesive material will provide for frictional
engagement between the surfaces, at least at some
point in the adhesive setting process. The claims
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Application 08/436,660
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are not limited to the degree of frictional
engagement, nor are the claims limited to when the
frictional engagement occurs [answer, pages 7 and
8].
It is thus apparent that the examiner is relying on the
portions of the Fine disclosure relating to the prior art
container shown in Figures 1 and 2 to meet all of the
limitations in claims 10, 21 and 29 except for those in
independent claims 10 and 21 requiring the internal mug to be
made of a non-plastic material. In this regard, Fine does not
disclose that the internal mug or liner of the prior art
container is made of a non-plastic material. To meet these
limitations, the examiner relies on a portion of the Fine
disclosure (column 4, line 59 et seq.) relating to the Fine
container shown in Figures 3 through 7 which teaches that the
inner liner or mug can be made of a material other than
plastic. It is well settled, however, that
anticipation is not established if in reading a claim on
something disclosed in a reference it is necessary to pick,
choose and combine various portions of the disclosure not
Appeal No. 97-0991
Application 08/436,660
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directly related to each other by the teachings of the
reference. In re Arkley, 455 F.2d 586, 587-88, 172 USPQ 524,
526 (CCPA 1972). Since the portions of the Fine disclosure
pertaining to the prior art container (Figures 1 and 2) and to
the Fine container (Figures 3 through 7) are not directly
related to each other by the teachings of the reference, the
standing 35 U.S.C. § 102(b) rejection of independent claims 10
and 21, and of claim 29 which depends from claim 10, is not
well founded.
This rejection is also unsound for additional reasons.
More particularly, Fine does not disclose a mug assembly
having “a sealing material attached adjacent the upper edge of
the internal mug on the outer surface thereof, the sealing
material adapted to engage a portion of the inner surface of
the external mug” as recited in independent claim 10. The
examiner’s determination that the adhesive between the notch C
and edge D of the prior art container described by Fine meets
this limitation is based on unsupported and unreasonable
findings as to the properties and location of the adhesive.
The Fine container (Figures 3 through 7) also lacks such a
sealing material.
Appeal No. 97-0991
Application 08/436,660
As disclosed, the outer surface 50 of the sealing3
material 30 (or 31) and the internal surface 52 of the
overhanging lip 46 are curved in a substantially cylindrical
sense and thus are not actually “flat” within the ordinary and
accustomed meaning of this term. Nonetheless, we understand
the appellant’s use of the term “flat” to define these
surfaces to mean that the surfaces are flat when viewed in
cross-section as shown, for example, in Figure 4.
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Fine also fails to disclose a mug assembly having “at
least one strip of sealing material attached adjacent to the
upper edge of the external mug on the outer surface thereof,
the sealing material having a flat outer surface . . . wherein
the flat outer surface of the sealing material is adapted to
frictionally engage the flat internal surface of the
overhanging lip [on the internal mug]” as recited in
independent claim 21. Here again, the examiner’s3
determination that the adhesive between the notch C and edge D
of the prior art container described by Fine meets this
limitation is based on unsupported and unreasonable findings
as to the properties and location of this adhesive. Moreover,
while the Fine container (Figures 3 through 7) does have at
least one strip of sealing material in the form of band 27 or
band 28 attached adjacent to the upper edge of the external
mug or shell on the outer surface thereof, neither band
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Application 08/436,660
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appears to have a flat outer surface which is adapted to
frictionally engage a flat internal surface of the overhanging
lip 13.
Given the foregoing deficiencies of the Fine reference,
we shall not sustain the standing 35 U.S.C. § 102(b) rejection
of independent claims 10 and 21, or of claim 29 which depends
from claim 10, as being anticipated by Fine.
Nor shall we sustain the standing 35 U.S.C. § 103
rejections of dependent claims 11 through 20 and 22 through
28. In short, the secondary references applied by the
examiner in support of these rejections fail to cure all of
the above noted shortcomings of Fine with respect to the
subject matter recited in parent claims 10 and 21.
The decision of the examiner is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
Appeal No. 97-0991
Application 08/436,660
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JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-0991
Application 08/436,660
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