Ex Parte Alvarez et al

Patent Trial and Appeal Board

Jul 15, 2013

11702120 (P.T.A.B. Jul. 15, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/702,120 02/05/2007 Benito Alvarez 035799-0112 5921
22428 7590 07/15/2013
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
YAGER, JAMES C
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
07/15/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BENITO ALVAREZ and
EFREN DE URQUIJO CARMONA
____________

Appeal 2012-007373
Application 11/702,120
Technology Center 1700
____________

Before CHARLES F. WARREN, LINDA M. GAUDETTE, and
CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-007373
Application 11/702,120

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-11 and 13-22 under 35 U.S.C. § 103(a) as unpatentable
over Amberg (US 3,759,437, issued Sep. 18, 1973) in view of Lammers
(US 3,984,511, issued Oct. 5, 1976), using Wilhelm (US 4,288,026, issued Sep. 8,
1981) as an evidentiary reference, and claims 6 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Amberg in view of Lammers, further in view of Wilhelm.2 We
have jurisdiction under 35 U.S.C. § 6(b).3
We REVERSE.
“The invention . . . relates to a plastic foam container made of three layers,
such as a cup for beverages or food items.” (Specification [0001].) More
specifically, the invention relates to a container which has good insulating
properties, uses less expensive materials than those used in forming conventional
containers, and is capable of having a printable surface across the entire outer
surface thereof. (Id. at [0007].) Claim 1 is representative of the invention, and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A container comprising:
an innermost thermoformed plastic sleeve with a circumferential sidewall
extending from a bottom wall, the innermost sleeve providing barrier resistance
from material placed within the container, the thermoformed plastic sleeve being
seamless;
an insulating molded foam support layer with a circumferential sidewall
extending from a bottom wall, the foam layer being directly bonded to the
innermost thermoformed sleeve, the foam support layer providing thermal
resistance from material placed within the container, the foam support layer being
seamless; and

1 Final Office Action mailed May 17, 2011.
2 An oral hearing was conducted on July 9, 2013.
3 Appeal Brief filed Nov. 21, 2011.
Appeal 2012-007373
Application 11/702,120

3
an outermost paper sleeve directly bonded to an outer surface of the foam
support layer,
wherein the innermost sleeve has a higher density than the foam support
layer, and
wherein the thermoformed plastic sleeve and the molded foam support layer
comprise the same plastic material.
The Examiner finds Amberg discloses a container comprising an inner
thermoformed plastic sleeve and an outer paper sleeve as recited in the
independent claims, i.e., claims 1, 4, and 14. (Ans.4 4.) The Examiner
acknowledges Amberg fails to disclose or suggest a support layer as required by
the appealed claims. (Id. at 5.) The Examiner finds Lammers “discloses an article
in the shape of a cup (Fig. 2) comprising a thermoplastic skin covering and an
intermediate layer of foamed polystyrene core made of expandable polystyrene
beads.” (Id.) The Examiner finds Lammers’ foamed polystyrene core meets the
limitations of the support layer as recited in claims 1, 4, and 14. (Id.) The
Examiner determines it would have been obvious to one of ordinary skill in the art
at the time of the invention to have modified Amberg’s container by adding
Lammers’ foamed polystyrene core between Amberg’s inner and outer sleeves “to
provide a food container with improved thermal insulation to inhibit spoilage of
cold foods and to inhibit loss of heat from hot foods.” (Id. at 6.)
Appellants argue one of ordinary skill in the art would not have understood
Lammers’ polystyrene core could be formed separately from the thermoplastic skin
covering and used by itself as a thermal insulating layer. (See App. Br. 6.)
Appellants cite to several passages in Lammers (see id. at 5-6) which support their
contention that the thermoplastic skin covering is an integral part of Lammers’
foamed polystyrene article. In response, the Examiner asserts, without further

4 Answer filed Feb. 1, 2012.
Appeal 2012-007373
Application 11/702,120

4
explanation, that “it would clearly be within the realm of knowledge of one of
ordinary skill in the art to be able to recognize how to insert a foam layer between
the thermoplastic shell and paper layer of Amberg.” (Ans. 12.)
“Although the obviousness analysis should ‘take account of the inferences
and creative steps that a person of ordinary skill in the art would employ,’ the
Supreme Court [has] emphasized that this evidentiary flexibility does not relax the
requirement that, ‘[t]o facilitate review, this analysis should be made explicit.’
[KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)] (citing [In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)] (‘[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.’)).” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330
(Fed. Cir. 2009). Cf. In re Vaidyanathan, 381 Fed. Appx. 985, 994 (Fed. Cir.
2010) (non-precedential) (“KSR did not free the PTO’s examination process from
explaining its reasoning. In making an obviousness rejection, the examiner should
not rely on conclusory statements that a particular feature of the invention would
have been obvious or was well known. Instead, the examiner should elaborate,
discussing the evidence or reasoning that leads the examiner to such a
conclusion.”).
We agree with Appellants that the Examiner’s obviousness analysis is based
on improper hindsight reasoning. (See App. Br. 7.) The Examiner relies on
conclusory statements, and fails to sufficiently explain the underlying basis for
finding the ordinary artisan would have recognized Lammers’ polystyrene core
could be formed separately from the thermoplastic skin covering and possessed the
requisite skills to incorporate such separately formed polystyrene core into
Appeal 2012-007373
Application 11/702,120

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Amberg’s container. Accordingly, we do not sustain the rejections of claims 1-11
and 13-22.

REVERSED

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