YETI Coolers, LLCDownload PDFPatent Trials and Appeals BoardMar 24, 20212021001954 (P.T.A.B. Mar. 24, 2021) Copy Citation 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. 15/804,759 11/06/2017 Matthew Joseph Petrillo 008117.02097\US 1028 161921 7590 03/24/2021 BANNER & WITCOFF, LTD. 71 SOUTH WACKER DRIVE SUITE 3600 CHICAGO, IL 60606 EXAMINER NEWAY, BLAINE GIRMA ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 03/24/2021 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): PTO-161921@bannerwitcoff.com yeticoolers.pair@anaqua.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MATTHEW JOSEPH PETRILLO and JOHN ALAN TOLMAN Appeal 2021-001954 Application 15/804,759 Technology Center 3700 ____________ Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and JEREMY M. PLENZLER, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Appellant, YETI Coolers, LLC,1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Non-Final Action rejecting claims 1–6 and 8–26. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies itself as the sole real party in interest. Appeal Br. 2. Appeal 2021-001954 Application 15/804,759 2 STATEMENT OF THE CASE The Specification The Specification relates to “[c]ontainers [that] can be filled with hot or cold drinkable liquids, such as water, coffee, tea, a soft drink, or an alcoholic beverage, such as beer,” and which “help maintain the temperature of the liquid.” Spec. ¶2. The Claims Claims 1–6 and 8–26 are rejected. Non-Final Act. 1. Claims 27–30 are withdrawn. Id. Claim 7 is cancelled. Appeal Br. 16. No other claims are pending. Id. at 15–21. Independent claim 1 is representative and reproduced below. 1. An insulating device comprising: a container comprising: a first inner wall having a first end with a threaded sidewall and an opening extending into an internal reservoir; a second outer wall forming an outer shell of the container, the second outer wall having a second end configured to support the container on a surface; a sealed vacuum cavity forming an insulated double wall structure between the first inner wall and the second outer wall; a lid adapted to seal the opening of the container, the lid comprising: an upper portion having a frustoconical surface spaced between a circular top surface and a cylindrical surface, the upper portion further having a handle that is integrally-molded to the lid at two diametrically opposed points; a lower portion comprising: a sidewall having a threaded area adapted to be received into the threaded sidewall of the first inner wall of the container; Appeal 2021-001954 Application 15/804,759 3 an upper gasket positioned above the threaded area of the sidewall, wherein the upper gasket is configured to be compressed between the sidewall of the lid and a top portion of the container; a channel extending around a lower area of the sidewall configured to retain a lower gasket, wherein the lower gasket is configured to compress against a lip structure extending from the first inner wall of the container when the threaded area of the lower portion of the lid is received by the threaded sidewall of the first inner wall of the container, wherein the lower gasket has a c-shaped cross-section, wherein the lower gasket comprises a radially extending vent structure, and wherein the lower gasket and the radially extending vent structure are configured to compress in a radial direction when compressed against the lip structure. Id. at 15–16. The Examiner’s Rejections The following rejections, all pursuant to 35 U.S.C. § 103, are before us: 1. claims 15–20 as unpatentable over Goto,2 Lin,3 Mays,4 and Corsette5 (Non-Final Act. 3); 2. claims 1–6, 8, 9, 13, and 14 as unpatentable over Goto, Lin, Mays, Corsette, and Bondin6 (id. at 5); 3. claim 21 as unpatentable over Goto, Lin, Mays, Corsette, and 2 US 6,170,693 B1, issued Jan. 9, 2001 (“Goto”). 3 US 8,215,511 B1, issued July 10, 2012 (“Lin”). 4 UK 678,830, published Sept. 10, 1952 (“Mays”). 5 US 3,596,808, issued Aug. 3, 1971 (“Cossette”). 6 FR 993,552, published Nov. 2, 1951 (“Bondin”). Appeal 2021-001954 Application 15/804,759 4 Janson7 (id. at 9); 4. claims 22–25 as unpatentable over Lin, Mays, Corsette, Bondin, and Janson (id. at 10); 5. claims 10 and 11 as unpatentable over Goto, Lin, Mays, Corsette, Bondin, and Janson (id. at 12); 6. claim 12 as unpatentable over Goto, Lin, Mays, Corsette, Bondin, and Shibuki8 (id. at 13); and 7. claim 26 as unpatentable over Lin, Mays, Corsette, Bondin, Janson, and Goto (id.). DISCUSSION Appellant argues against the rejection of claim 1 (Rejection 2) and then simply relies on those same arguments for the remaining claims and rejections. Accordingly, we address the rejection of claim 1 first. Rejection 2 Goto discloses a drinking receptacle. Goto Title. The Examiner found that Goto teaches much, but not all, of the subject matter of claim 1. Non-Final Act. 5–6. The exceptions are: (1) the “frustoconical” and “handle” limitations of the “lid” for which the Examiner relies on a modification in view of Lin; (2) the lower gasket “c-shaped cross section” limitation for which the Examiner relies on a modification in view of Mays; and (3) the lower gasket having a “radially extending vent structure” limitation for which the Examiner relies on a modification in view of Corsette. Id. at 6–9. 7 US 2005/0153637 Al, published July 14, 2005 (“Janson”). 8 US 2015/0232232 Al, published Aug. 20, 2015 (“Shibuki”). Appeal 2021-001954 Application 15/804,759 5 Appellant argues that the proposed modification does not satisfy the claim language reciting that “the lower gasket and the radially extending vent structure are configured to compress in a radial direction.” Appeal Br. 4–9. Appellant concedes that “Corsette discloses the gasket portion 38a includes radial grooves 44, which communicate with the outside atmosphere.” Id. at 5. But Appellant argues that Corsette’s gasket and radial grooves “are compressed between two structures . . . in the axial direction only.” Id. at 5–6. Appellant’s argument is inapposite, as pointed out by the Examiner. See Ans. 3 (“However, it is the examiner’s positon that the compression in the radial direction is taught by Mays which teaches a c-shaped gasket (fig. 4) and not Corsette.”). Indeed, in the Non-Final Action, the Examiner found that “Mays teaches a gasket 43 having a c- shaped cross-section wherein the gasket 43 is capable of compressing in a radial direction when compressed against a lip structure.” Non-Final Act. 7 (citing Mays Fig. 4, 3:6–10). The Examiner’s proposed modification incorporates Corsette’s vents but not Corsette’s gasket. Thus, Appellant’s criticism of Corsette as not disclosing radial compression of its gasket and vents does not apprise us of error. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). Appellant argues that “[t]he proposed modification of Corsette’s gasket renders Corsette’s pump device inoperable for its intended purpose.” Appeal Br. 10. This argument, like the one addressed immediately above, is inapposite given that the Examiner’s rejection is not based on a modification of Corsette’s gasket. Appeal 2021-001954 Application 15/804,759 6 Appellant argues that “Corsette teaches away from the claimed invention” in that it “teaches preventing compression of the gasket portion 38a and radial grooves 44 in the radial direction and would lead a person of ordinary skill in a direction divergent from the path taken by the Applicant.” Appeal Br. 11. However, the Examiner found that May teaches radial compression of a gasket. Non-Final Act. 7; Mays 3:6–10, Fig. 4. Appellant does not dispute that finding or otherwise address May’s teaching. That deficiency alone renders the teaching away argument unpersuasive. See e.g., Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“Where the prior art contains ‘apparently conflicting’ teachings (i.e., where some references teach the combination and others teach away from it) each reference must be considered ‘for its power to suggest solutions to an artisan of ordinary skill. . . . consider[ing] the degree to which one reference might accurately discredit another.” (citation omitted)); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from . . . alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”). Ultimately, Appellant fails to explain how Corsette’s axially compressed gasket teaching would lead a person of ordinary skill in the art away from the specific teaching of May on which the Examiner relies. Appellant argues that the rejection relies on impermissible hindsight with respect to the modification in view of Corsette. Appeal Br. 10. This is so, according to Appellant, because the Examiner: explicitly states the Applicant’s own basis as rationale for adding the vents of Corsette to the modified gasket of Goto. Compare Office Action, p. 7, (“[i]t would have been obvious to one of Appeal 2021-001954 Application 15/804,759 7 ordinary skill in the art at the time of the invention was file to have provided the lower gasket of the modified Goto, vents, for the predictable result of venting trapped air during closing the lid” (emphasis added) with Application, ¶[40] “the vent structure 246 may allow a gas pressure within the reservoir 112 to be lowered by allowing a portion of gas to escape through the threaded interface between structures 182 and 212, while preventing a liquid stored in the reservoir 112 from leaking.” Appeal Br. 10. But the relevant question, with respect to hindsight, is whether the Examiner identified an adequate reason for why a person of ordinary skill in the art would have made the proposed modification at the time of the alleged invention without resorting to Appellant’s Specification. In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (“The ‘motivation- suggestion-teaching’ requirement protects against the entry of hindsight into the obviousness analysis, a problem which § 103 was meant to confront.”); Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008) (“We are mindful that in KSR [Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)], the Supreme Court made clear that a finding of teaching, suggestion, or motivation to combine is not a ‘rigid rule that limits the obviousness inquiry.’ . . . We must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.”). Appellant argues that the Examiner “fails to cite to any reference for supporting the alleged rationale of venting trapped air during closing of the lid.” Appeal Br. 10. However, the Examiner cited Corsette’s teaching that its vented gasket allows for air to enter the container to maintain (or re- establish) equilibrium with atmospheric pressure. Non-Final Act. 7; Corsette 3:46–48 (“combined gasket and diaphragm valve 38 which Appeal 2021-001954 Application 15/804,759 8 functions . . . to admit atmospheric air into the container whenever the fluid pressure within the container drops appreciably below atmospheric pressure”).9 The Examiner concluded that “[i]t would have been obvious to one of ordinary skill in the art at the time the invention was filed to have provided the lower gasket of the modified Goto, vents, for the predictable result of venting trapped air during closing of the lid.” Non-Final Act. 7. It is true that the Examiner did not cite a reference for the specific concept of venting out trapped air. But the Examiner did cite a reference for teaching a vent extending radially through a gasket to allow for a liquid-dispensing container to maintain (or re-establish) equilibrium with atmospheric pressure. That is adequate. The person of ordinary skill is not an automaton but rather possesses an ordinary skill, creativity, and common sense. KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“[W]hile an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.”). In KSR, the Court held that the lower court had erred “in its assumption that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem.” 550 U.S. at 420. The Court noted: “Common sense teaches, 9 The Examiner erroneously cited Corsette at “col. 3, lines 48-50” but we understand that lines 46–48 were intended, and Appellant has not taken issue with respect to the citation. Appeal 2021-001954 Application 15/804,759 9 however, that familiar items may have obvious uses beyond their primary purposes.” Id. There is no need to resort to Appellant’s Specification because the skilled artisan would understand that a known vent structure for allowing air to enter a container could obviously be adapted to allow air to exit a container because both are processes to maintain (or re-establish) equilibrium with atmospheric pressure. Appellant’s hindsight argument is not persuasive of error. Appellant argues that the proposed modification does not satisfy the claim language reciting “an upper portion having a frustoconical surface spaced between a circular top surface and a cylindrical surface” (emphasis added). Appeal Br. 9. For these features, the Examiner relied on Lin. Non- Final Act. 7 (citing Lin 2:49–51, Figs. 1–8). Appellant points out, however, the portion of Lin that the Examiner relies on for a cylindrical surface, i.e., element 22, is “a ‘flared brim’ which forms ‘a continuation of the parabolic shape 40’ and lid body 34.” Appeal Br. 9 (citing Lin 4:60–65, Figs. 4–7). The Examiner responds that “fig. 2 (the top view of fig. 1) of Lin clearly shows that element 22 is not ‘flared’.” Ans. 4. We understand the Examiner to be pointing out that, because element 22 is not visible in Figure 2, it must not extend radially further than lip 20 and thus must have a cylindrical surface. The Examiner is correct that logic dictates that element 22 should be visible in Figure 2 if it indeed forms “a continuation of the parabolic shape 40.” Lin 4:64. The problem for the Examiner, however, is that the weight of the evidence shows that Lin element 22 is not cylindrical. For starters, Lin refers to that structure as a “vertically flared brim 22.” Lin 4:63. Secondly, several Lin figures show the brim 22 as lacking a cylindrical surface. Appeal 2021-001954 Application 15/804,759 10 Figures 1 and 4 through 7 clearly show flaring. Figures 8, 9, and 17 also show flaring but less pronounced. Notably, all of Lin’s seventeen Figures purportedly show views with respect to the same “preferred embodiment.” Lin 3:48–4:14. In view of Lin’s explicit description of element 22 as vertically flared and a continuation of a parabolic shape and in view of multiple Lin Figures illustrating it as such, we cannot sustain the Examiner’s finding that element 22’s absence from Figure 2 disclose or teaches a cylindrical surface. Cf. In re Wilson, 312 F.2d 449, 454 (CCPA 1963) (“Patent drawings are not working drawings and this argument is predicated, moreover, on a greatly enlarged section of a small drawing obviously never intended to show the dimensions of anything.”); In re Chitayat, 408 F.2d 475, 478 (CCCPA 1969) (“In view of the absence in Frank’s specification of any written description of the quantitative value of the image displacement relative to fiber diameter, the arguments based on mere measurement of the drawings appear to us of little value.”). For this reason, we reverse the rejection of claim 1, as well as that of claims 2–6, 8, 9, 13, and 14, which ultimately depend from claim 1. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious.”). Rejections 1, 3–7 Appellant relies on the same arguments for these rejections as it does for Rejection 2. See Appeal Br. 12–13. For Rejections 4–7, that is sufficient to warrant reversal as all of the subject claims (i.e., claims 10–12 and 22–26) recite, or incorporate by reference, a “cylindrical surface” limitation (Appeal Br. 16–20) for which Appeal 2021-001954 Application 15/804,759 11 the Examiner relies on Lin’s vertically flared brim 22. Rejections 4–7 are reversed. For Rejections 1 and 3, however, Appellant fails to apprise us of error, as the subject claims (i.e., claims 15–21) do not recite, or incorporate by reference, a “cylindrical surface” limitation. Appeal Br. 17–18. Rejections 1 and 3 are affirmed. SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 15–20 103 Goto, Lin, Mays, Corsette 15–20 1–6, 8, 9, 13, 14 103 Goto, Lin, Mays, Corsette, Bondin 1–6, 8, 9, 13, 14 21 103 Goto, Lin, Mays, Corsette, Janson 21 22–25 103 Lin, Mays, Corsette, Bondin, Janson 22–25 10, 11 103 Goto, Lin, Mays, Corsette, Bondin, Janson 10, 11 12 103 Goto, Lin, Mays, Corsette, Bondin, Shibuki 12 26 103 Lin, Mays, Corsette, Bondin, Janson, Goto 26 Overall Outcome 15–21 1–6, 8– 14, 22– 26 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2019). AFFIRMED IN PART Copy with citationCopy as parenthetical citation