Ex Parte Littlejohn et al

Patent Trial and Appeal Board

Mar 27, 2013

10963686 (P.T.A.B. Mar. 27, 2013)

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.
10/963,686 10/13/2004 Mark B. Littlejohn 12522-USA 4131
31743 7590 03/27/2013
Georgia-Pacific LLC
133 Peachtree Street NE - GA030-41
ATLANTA, GA 30303
EXAMINER
DEMEREE, CHRISTOPHER R
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
03/27/2013 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 MARK B. LITTLEJOHN, GERALD J. VAN HANDEL,
THOMAS W. ZELINSKI, MICHAEL A. BREINING, and
ALBERT D. JOHNS
____________

Appeal 2011-000927
Application 10/963,686
Technology Center 3700
____________

Before LINDA E. HORNER, BRETT C. MARTIN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Mark B. Littlejohn, Gerald J. Van Handel, Thomas W. Zelinski,
Michael A. Breining, and Albert D. Johns (“Appellants”) appeal under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 1-89 and
133-144. We have jurisdiction under 35 U.S.C. § 6(b).
The Claimed Subject Matter
Claims 1, 51, 67, 80, 81, 133, 134, and 144 are independent. Claims
1, 5, 133, 134, and 144 are illustrative of the claimed subject matter and are
reproduced below.
1. A disposable servingware container press-formed
from a generally planar paperboard blank, the container having
a characteristic diameter, D, as well as an overall height and
comprising:
a generally planar bottom portion;
a first annular transition portion extending upwardly and
outwardly from the generally planar bottom portion;
an optional sidewall portion extending upwardly and
outwardly from the first annular transition portion;
a second annular transition portion flaring outwardly with
respect to the first annular transition portion;
an outer flange portion extending outwardly with respect
to the second annular transition portion, the outer flange portion
having:
(i) a downwardly sloping brim portion defining a
declivity angle α at its terminus with respect to a
horizontal substantially parallel to the bottom portion and
wherein the downwardly sloping brim portion transitions
to
(ii) a brim transition portion, a brim height being
thereby defined as the difference between the overall
height of the container and a height at which the
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downwardly sloping brim portion transitions to the brim
transition portion, which brim transition portion, in turn,
transitions to
(iii) an annular evert portion extending outwardly
with respect to the downwardly sloping brim portion at
an eversion angle β of at least about 25 degrees;
(iv) the height of any upward extension of the
evert portion above the brim transition portion being no
more than about 75% of the brim height,
and wherein the outer flange portion has a plurality of
circumferentially spaced pleats.
5. The container according to claim 1, where the
eversion angle β is from about 35° to about 65°.
133. A disposable servingware container press-formed
from a generally planar paperboard blank, the container having
a characteristic diameter, D, as well as an overall height and
comprising:
a generally planar bottom portion;
a first annular transition portion extending upwardly and
outwardly from the generally planar bottom portion;
an optional sidewall portion extending upwardly and
outwardly from the first annular transition portion;
a second annular transition portion flaring outwardly with
respect to the first annular transition portion;
an outer flange portion extending outwardly with respect
to the second annular transition portion, the outer flange portion
having:
(i) a downwardly sloping brim portion defining a
declivity angle, α, at its terminus with respect to a
horizontal substantially parallel to the bottom portion and
wherein the downwardly sloping brim portion transitions
to
(ii) a brim transition portion, a brim height being
thereby defined as the difference between the overall
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height of the container and a height at which the
downwardly sloping brim portion transitions to the brim
transition portion, which, in turn, transitions to
(iii) an annular evert portion extending outwardly
with respect to the downwardly sloping brim portion at
an eversion angle β of at least about 25 degrees;
(iv) the height of any upward extension of the
evert portion above the brim transition portion being no
more than about 75% of the brim height,
(v) provided further that the evert portion, the brim
transition portion and at least a part of the downwardly
sloping brim portion is provided with shading operative
to cloak the geometry of the brim transition portion and
the outwardly extending annular evert such that these
features visually blend with the downwardly sloping brim
portion of the container, and
wherein the outer flange portion has a plurality of
circumferentially spaced pleats.
134. A disposable servingware container press-formed
from a generally planar paperboard blank, the container having
a characteristic diameter, D, as well as an overall height and
comprising:
a generally planar bottom portion;
a first annular transition portion extending upwardly and
outwardly from the generally planar bottom portion;
an optional sidewall portion extending upwardly and
outwardly from the first annular transition portion;
a second annular transition portion flaring outwardly with
respect to the first annular transition portion;
an outer flange portion extending outwardly with respect
to the second annular transition portion, the outer flange portion
having:
(i) a downwardly sloping brim portion defining a
declivity angle α at its terminus with respect to a
horizontal substantially parallel to the bottom portion and
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wherein the downwardly sloping brim portion transitions
to
(ii) a brim transition portion, a brim height being
thereby defined as the difference between the overall
height of the container and a height at which the
downwardly sloping brim portion transitions to the brim
transition portion, which, in turn, transitions to
(iii) an annular evert portion extending outwardly
with respect to the downwardly sloping brim portion at
an eversion angle β of at least about 25 degrees;
(iv) a flange stabilizing projection disposed on the
downwardly sloping brim portion sized to engage an
adjacent container in a stack of like containers to promote
stack stability;
(v) the height of any upward extension of the evert
portion above the brim transition portion being no more
than about 75% of the brim height, and
wherein the outer flange portion has a plurality of
circumferentially spaced pleats.
144. A disposable servingware container press-formed
from a generally planar paperboard blank, the container having
a characteristic diameter, D, as well as an overall height and
comprising:
a generally planar bottom portion;
a first annular transition portion extending upwardly and
outwardly from said generally planar bottom portion;
a sidewall portion extending upwardly and outwardly
from said first annular transition portion;
a second annular transition portion extending outwardly
from said sidewall portion;
an arcuate brim portion having a convex upper surface
extending outwardly with respect to said second annular
transition portion, the radius of curvature of said arcuate brim
portion being from about 0.005 to about 0.1 times the
characteristic diameter of said disposable servingware
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container, the arcuate brim portion extending downwardly at its
outer part to define at its terminus a declivity angle α with
respect to a horizontal substantially parallel to the bottom
portion;
an inner flange portion extending between said second
annular transition portion and said arcuate brim portion having
a ratio of radial span to the characteristic diameter of from
about 0 to about 0.1;
a brim transition portion at the lower edge of the
downwardly sloping arcuate brim portion, there being thus
defined a brim vertical drop which is the difference between the
overall height of the container and a height at which the
downwardly sloping brim portion transitions to the brim
transition portion, wherein the ratio of the brim vertical drop to
the characteristic diameter of the container is greater than about
0.01, the brim transition portion, in turn, transitions to
an annular evert portion extending outwardly with
respect to the downwardly sloping arcuate brim portion at an
eversion angle β of at least about 25 degrees,
the height of any upward extension of the evert portion
above the brim transition portion being no more than about
75% of the brim vertical drop,
and wherein the arcuate brim portion has a plurality of
circumferentially spaced pleats.
References
The Examiner relies upon the following prior art references:
Hart 1,866,035 July 5, 1932
Marx 4,606,496 Aug. 19, 1986
Sandstrom 5,938,112 Aug. 17, 1999
Littlejohn 6,474,497 B1 Nov. 5, 2002
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Rejections
The Examiner makes the following rejections:
I. Claims 1-80 and 144 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hart and Marx;1
II. Claims 80-89 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hart, Marx, and Sandstrom;
III. Claim 133 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Hart, Marx, and Littlejohn; and
IV. Claims 134-143 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hart, Marx, Sandstrom, and the Examiner’s
Official Notice.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

1 Although the heading of Rejection I indicates that claims “1-28, 67, and
80” are the subject of the rejection, the text of the rejection indicates that the
rejection was applied to claims 1-80 and 144. Office Action (mailed Sept. 4,
2008) at 7 (“Regarding claims 29-33 . . . . Regarding claims 34-48”), 8
(“Regarding claims 49-50 . . . . Regarding claims 51-66 and 144”), 9
(“Regarding claim 67-79”); Ans. 7 (“Regarding claims 29-33 . . . .
Regarding claims 34-48”), 8 (“Regarding claims 49-50 . . . . Regarding
claims 51-66 and 144”), 9 (“Regarding claim 67-79”). Appellants have the
same understanding with respect to Rejection I. See App. Br. 15 (identifying
claims 1-80 and 144 as rejected under 35 U.S.C. § 103(a) over Hart and
Marx), 22 (same).
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OPINION
Rejection I – Hart and Marx
The Examiner determined that the combination of Hart and Marx
renders obvious the subject matter of claims 1-80 and 144. Ans. 3-10. The
Examiner found that Hart discloses most of the elements of the claims. See
id. The Examiner noted that “although Hart does not specifically teach of a
measurement of the transition angle . . . it is apparent from the
accompanying drawings that Hart’s measurements are relatively applicable
against [Appellants’] claims since such broad language as ‘about’ is used to
describe [Appellants’] measurements.” Id. at 3-4. The Examiner found that
while Hart lacks a plurality of circumferentially spaced, radially extending
pleats, Marx teaches this element of the claims. Id. at 5. The Examiner
determined that it would have been obvious to one of ordinary skill in the art
to “add pleats to the outer flange portion of Hart’s container so that the
container would have appropriate rigidity.” Id. (citing Marx, col. 6, ll. 24-
35). Finally, the Examiner found that it would have been an
obvious matter of design choice to make Hart’s sidewall portion
extend upward and outwardly from the first annular transition
portion about 55-70 degrees and a length greater than about
1.5%, or have a declivity angle of the downward sloping brim
and an annular evert portion extending outward at the specified
angles since such a modification would have involved a mere
change in the size of a component . . . . [which] is generally
recognized as being within the level of ordinary skill in the art.
Id. at 5-6.2

2 The Examiner’s additional findings with respect to certain of the claims
rejected as part of Rejection I are reflected in the Examiner’s Answer and
are reiterated infra when relevant to Appellants’ arguments on appeal. See
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Appellants raise several arguments with respect to each of the claims
subject to Rejection I, as well as additional arguments based on specifically
grouped claims. With respect to the arguments generally directed to each
claim subject to this rejection, Appellants argue the claims as a group. See
App. Br. 22-31. Thus, we select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011); see also In re Lovin, 652 F.3d 1349, 1351 (Fed.
Cir. 2011).
Appellants first assert that Hart is non-analogous art because it
pertains to pulp-molding products rather than paperboard forming products.
App. Br. 22-25. Appellants contend that Hart relates to pulp products and
“fail[s] to illustrate or discuss any pleats, folds, creases, wrinkles or
plications of any kind,” indicating that Hart did not consider the issues
involved with forming containers from flat paperboard stock. Id. at 22.
Appellants rely heavily on the declaration of inventor Mark Littlejohn,
which, along with the Specification, explains differences in the methods of
forming plates from pulp-molding as opposed to pressed paperboard. See id.
at 22-25; see also Littlejohn Decl. (dated July 16, 2008).3 Appellants assert
that Hart is “clearly concerned with an entirely different endeavor than the
manufacture of paperboard containers and thus is not relevant for purposes
of obviousness.” App. Br. 24 (citing Wang Labs., Inc. v. Toshiba Corp., 993
F.2d 858 (Fed. Cir. 1993)). Appellants contend that simply because Hart
relates to disposable plates, “does not make it relevant to the manufacture of

Ans. 6-10.
3 The Littlejohn Declaration also presents evidence of secondary
considerations purporting to show evidence of unexpected results and
commercial success. Littlejohn Decl. We separately address Appellants’
evidence of secondary considerations infra.
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pleated paperboard products as is claimed. One of skill in the art would not
consider [Hart] relevant to pleated paper plate manufacture.” Id. at 25.
Appellants further contend that Hart is not reasonably pertinent to the
particular problem to be solved. Id.
Second, Appellants assert that one of ordinary skill in the art would
have been skeptical as to whether an outer annular evert feature could be
added to a pressed paperboard plate. Id. (citing Littlejohn Decl. at ¶ 9).
Appellants also contend that even though Hart was published many years
ago, and “even though annular ‘trim’ rings have been known on pulp and
thermoformed products for years, there is no suggestion in the prior art to
add this feature to a pleated product.” Id. at 26.
Third, Appellants contend that Hart attaches no significance to having
“an outward turn at the periphery of a pulp container.” Id. at 27. Appellants
assert that Hart does not discuss the “strength” of the product with respect to
element 7 (which the Examiner found to disclose the annular evert portion of
the claims). Id. at 28. Even if Hart did discuss strength in the context of
element 7, Appellants contend that it is “not a predictor of performance of
pleated structure since the products are not similar.” Id. In this regard,
Appellants note that Hart does not address “any of the three issues
mentioned as being of particular concern to the designer of pressed
paperboard plates” as reflected in the Littlejohn Declaration—(1) off-center
forming of the paperboard blank; (2) proper pleat formation as the
paperboard blank is shaped; and (3) damage to the paperboard such as
tearing during pressing. Id.
Fourth, Appellants assert that the Examiner has not provided any
motivation to combine Hart with any other reference. Id. at 28-29.
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Appellants further assert that there is “no relevant teaching in the prior art as
to modifying the prior art to arrive at the claimed invention.” Id. at 29.
Fifth, with respect to each of the claims subject to Rejection I,
Appellants contend that the Examiner improperly relied upon Hart’s figures
as relevant to dimensions and angles because Hart’s figures are not to scale.
Id. at 30-31. Thus, Appellants assert that the rejection as applied to the
claims that include preferred declivity angles, dimensions, and so forth are
without basis because Hart does not disclose such dimensions, and Marx and
the other references do not suggest the outwardly turned annular evert
portion of a pleated container. Id.
Sixth, Appellants assert that “pieces of the profiles of one container
may not be taken out of context and pasted onto another shape or pasted into
another technology since shape, technology type and material are
inseparable in the art of disposable container manufacture.” Id. at 31.
The Examiner considered, but rejected, each of Appellants’
arguments. In response to Appellants’ first argument, the Examiner found
that Hart is analogous art because it is not limited to pulp-molding since it
discloses that any desired material may be used. Ans. 13 (citing Hart at 1, ll.
82-84).
In response to Appellants’ second, third, fourth, and sixth arguments,
the Examiner found that Marx teaches the use of pleats in the rim of a
pressed paperboard plate to guard against the tendency of paperboard to
rebound to its original form. Id. Thus, the Examiner determined that it
would have been obvious to one of ordinary skill in the art to apply the
“design of Hart’s pulp-molded plate (consisting of a strengthening ‘evert’) to
pressed paperboard plate comprising a pleated rim.” Id.
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In response to Appellants’ fifth argument, the Examiner concluded
that it would have been obvious to one of ordinary skill in the art to modify
Hart to achieve the claimed declivity angles and dimensions since “it has
been held that discovering an optimum value of a result effective variable
involves only routine skill in the art.” Id. at 14 (citation omitted).
We address each of Appellants’ arguments. First, we do not find
Appellants’ argument—that Hart is non-analogous art—persuasive. “A
reference qualifies as prior art for an obviousness determination under § 103
only when it is analogous to the claimed invention.” In re Klein, 647 F.3d
1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC v. MGA Entm’t,
Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011), and In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004)). “Two separate tests define the scope of analogous
art: (1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.” Id. (quoting In re
Bigio, 381 F.3d at 1325). The “field of endeavor” test “requires the PTO to
determine the appropriate field of endeavor by reference to explanations of
the invention’s subject matter in the patent application, including the
embodiments, function, and structure of the claimed invention.” In re Bigio,
381 F.3d at 1325. If the structure and function of the prior art would have
been considered by a person of ordinary skill in the art because of similarity
to the structure and function of the claimed invention as disclosed in the
application, the prior art is properly considered within the same field of
endeavor. See id. at 1325-26.
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Here, we find that Hart is from the same field of endeavor and
reasonably pertinent to the particular problem to which the invention is
directed. Appellants’ view of the field of endeavor is too narrowly defined.
Hart discloses that “[f]or purposes of illustrating the wide range of articles
which may be made in accordance with our invention, we have shown a
fibrous plate . . . which may be made of any desired material but is
preferably made of pulp.” Hart at 1, ll. 75-84 (emphasis added). While
Appellants’ invention is directed to pressed paperboard formed products, it
was known in the art at the time of invention that pressed paperboard and
pulp-molding were methods of forming paper plates. Marx, col. 1, ll. 14-18
(“Formed fiber containers, such as paper plates and trays, are commonly
produced either by molding fibers from a pulp slurry into the desired form of
the container or by pressing a paperboard blank between forming dies into
the desired shape.”). Marx further explains, by way of background, that
efforts have been made to strengthen pressed paperboard containers in light
of knowledge in the art that pulp-molded products have a greater load
carrying ability than pressed paperboard containers. See, e.g., id. at col. 2, ll.
3-11. Given that Hart is expressly not limited to pulp-molded products, and
that Marx reflects that it was known in the art to consider the characteristics,
including structural characteristics, of products formed by pulp-molding
when seeking to improve pressed paperboard products (to which Marx is
directed), we find that Hart is in the same field of endeavor as the claimed
invention.
Further, Hart is reasonably pertinent to the particular problem to
which the invention is directed. The claims are directed to “Pressed
Paperboard Servingware with Improved Rigidity and Rim Stiffness.” Spec.,
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Title; see also Spec. at 1, ll. 11-17 (“The present invention relates generally
to pressed paperboard disposable containers and more specifically to
products and methods of increasing the rigidity of pressed paperboard
disposable containers by providing brim features . . . .”). Hart is directed to
“impart[ing] to the ultimate article new factors of strength, rigidity,
convenience of handling, and protection for the top edge of the food
product.” Id. at 1, ll. 47-51. Hart accomplishes this goal by including an
annular protective flange or edge continuously around the top edge of the
food article placed within the container. Id. at 1, ll. 51-55. The claimed
invention accomplishes its goal by “including a transition portion adjoining
a downwardly sloping brim portion of the container and an outwardly
extending annular evert portion adjoining the brim transition portion.” Spec.
at 1, ll. 15-17.
We have also fully considered Appellants’ arguments and the
Littlejohn Declaration, and acknowledge that the Declaration goes to great
lengths to explain the different manufacturing processes and different
concerns pertaining to pressed paperboard products as compared to pulp-
molded products. We also acknowledge that there are structural differences
that result from each of those manufacturing processes that may impact the
rigidity and strength of the resulting products. Even accepting Appellants’
evidence on these points, however, does not overcome the evidence, as
discussed above, supporting the conclusion that those of ordinary skill in the
art would look to either type of product when considering structural
enhancements to address known weaknesses of one or both types of
products. Accordingly, Appellants have not persuaded us of error with
respect to the Examiner’s determination that Hart is analogous art.
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We similarly find Appellants’ second argument regarding skepticism
in incorporating an outer annular evert feature into a pressed paperboard
product unpersuasive. Appellants rely upon the Littlejohn Declaration and
the statement therein that “[r]elatively sharp ‘turns’ from outward to
downward as seen in [Hart], Figure 3, for example are known to cause
problems when applied to paperboard manufacture, especially with respect
to pleating control.” Littlejohn Decl. at ¶ 9; see also App. Br. 25. We
acknowledge that Littlejohn’s Declaration includes this statement of
apparent skepticism. Appellants, however, have not included any reason as
to why such a “turn” would “cause problems” or why, in light of such
problems, one of ordinary skill in the art would not have sought to
incorporate such features. Littlejohn’s Declaration does not shed any light
on this question either. It simply states that “[d]uring the course of my work
in pressware, I unexpectedly found that an outward turn from a downwardly
sloping brim could be readily made in a pressware container . . . .”
Littlejohn Decl. at ¶ 9. Skepticism in the form of knowledge that
undisclosed problems could occur when creating a sharp “turn” in
paperboard manufacture, as presented in Littlejohn’s Declaration, does not
persuade us, in light of the evidence of obviousness, that the claims would
not have been obvious to one of ordinary skill in the art at the time of
invention.
Third, we disagree with Appellants that Hart fails to disclose any
significance of the outward evert portion of its container. Hart explains that
“generally horizontal flange 5 . . . . is an additional strength and protective
factor and may be extended downwardly as at 6 and outwardly as at 7 to
continue the annular frame support of the central or container area.” Hart
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at 2, ll. 10-16 (emphasis added). Thus, Hart considers element 7 an
extension of element 5 and, importantly, attributes element 7 as continuing
the frame support of the container area.4 Accordingly, Appellants have not
persuaded us that Hart does not discuss the strength of the product in the
context of element 7.
Fourth, the Examiner found that it would have been obvious to one of
ordinary skill in the art to add pleats to the outer portion of Hart’s container
so that the container would have appropriate rigidity, relying on Marx’s
disclosure that pleats can affect the rigidity of a pressed paperboard
container. See Ans. 5 (citing Marx, col. 6, ll. 24-35). Thus, contrary to
Appellants’ assertion, the Examiner’s articulated reasoning as to why one of
ordinary skill in the art would be prompted to combine Hart’s teachings with
the pleats of Marx has a rational underpinning, and Appellants have not
persuaded us of error with respect to the Examiner’s finding.
Fifth, while patent drawings not designated as being drawn to scale
cannot be relied upon to define precise proportions of elements if the
specification is completely silent on the issue, Hockerson-Halberstadt, Inc.
v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000), that does not

4 That Hart does not address any of the three issues of concern to a designer
of pressed paperboard plates, as argued by Appellants, does not mean
(1) that Hart does not attribute any of its improved strength and rigidity to
element 7 or (2) that one of ordinary skill in the art would not have
understood that element 7 likely contributed to the improved strength and
rigidity disclosed by Hart. Thus, regardless of whether including an outer
evert portion, such as element 7, would predict performance of a pleated
structure, Appellants have not persuaded us that one of ordinary skill in the
art would not have looked to Hart’s teachings and sought to incorporate
element 7 to improve the strength and rigidity of a pressed paperboard
product.
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mean, “that things patent drawings show clearly are to be disregarded.” In
re Mraz, 455 F.2d 1069, 1072 (CCPA 1972)). A drawing teaches all that it
reasonably discloses and suggests to a person of ordinary skill in the art. In
re Aslanian, 590 F.2d 911, 914 (CCPA 1979).
In this instance, claim 1 contains two limitations with respect to
dimensions or measurements: (1) “an annular evert portion extending
outwardly with respect to the downwardly sloping brim portion at an
eversion angle β of at least about 25 degrees,” and (2) “the height of any
upward extension of the evert portion above the brim transition portion
being no more than about 75% of the brim height.”5 Appellants’ figure 1A
shows a “perspective of a plate configured in accordance with the present
invention.” Spec. at 20, ll. 19-20. Figure 2 shows “the profile from center
of the plate of Figures (1A-1E).” Id. at 21, ll. 1-2. Figures 2A, 2B, 2C, and
2D are “diagrams illustrating various angles.” Id. at ll. 4. The eversion
angle β is “an outward change in downward slope at the outer flange of the
container and is calculated as the angle between a tangent to the brim portion
at its lower terminus and a tangent to the evert portion at its junction with the
brim transition to the evert.” Id. at 24, ll. 27-30. Hart’s figure 3 shows a
sectional view of the disclosed container, including element 7, the structure
corresponding to Appellants’ evert portion.

5 Claim 1 does not require any upward extension of the evert portion above
the brim transition portion; rather, if there is an upward extension of the
evert portion above the brim transition portion, it can be no more than about
75% of the brim height. Thus, the claim reads on a product without an
upward extension of the evert portion.
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Application 10/963,686

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Appellants raise additional arguments with respect to two separate
claim groups—(1) claims 5, 6, 18, 19, 24, and 25 (App. Br. 31-32), and
(2) claims 51-79 and 144 (id. at 32-34). With respect to group (1), we select
claim 5 as representative. With respect to group (2), we select claim 144 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011); see also In re Lovin,
652 F.3d at 1351.
Appellants assert with respect to claim 5 that the prior art does not
“remotely suggest[]” the dimensions recited therein. App. Br. 31-32. Claim
5 states: “The container according to claim 1, where the eversion angle β is
from about 35° to about 65°.” As reflected in the side-by-side comparison
shown above, Hart’s figure 3 reasonably discloses and suggests to one of
ordinary skill in the art an eversion angle between about 35° and 65°. One
of ordinary skill in the art need not perform any complex measurements or
rely upon undisclosed lengths of structural components shown in the figures
to recognize that Hart’s figure 3 satisfies this element of claim 5.
Accordingly, Appellants have not persuaded us of error with respect to the
Examiner’s reliance upon Hart’s figure.
Appellants contend with respect to claim 144 that neither Hart nor
Marx discloses or suggests “an arcuate brim portion having a convex upper
surface” as required by the claim. App. Br. 32-34.6 We agree. Both Hart
and Marx disclose a flat upper brim surface. See, e.g., Hart, figure 3; Marx,
figure 2. Accordingly, we do not sustain Rejection I with respect to claims
51-79 and 144.

6 Independent claim 51 similarly calls for “an arcuate brim portion having a
convex upper surface.” Independent claim 67 recites third and fourth rim
portions each defining downward facing arcs that collectively form an
arcuate brim portion having a convex upper surface.
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Rejection II – Hart, Marx, and Sandstrom
The Examiner determined that Hart, Marx, and Sandstrom render
obvious the subject matter of claims 80-89. Ans. 10-11. The Examiner
found that the teachings of Hart combined with the teaching of Marx, as
noted above with respect to Rejection I, disclose each element of the claims
except a “second portion of the outwardly flaring arcuate annular portion
flaring outward and downward at a slight angle.” Id. at 10. The Examiner,
however, found that Sandstrom discloses this element of the claims. Id. The
Examiner determined that it would have been obvious to one of ordinary
skill in the art at the time of invention to “modify Hart’s plates to have pleats
and the same specifications of the outer frusto-conical annular portion so
that [the] plate would better withstand a load force while being held on to
[sic] by the consumer.” Id. at 10-11 (citing Sandstrom, col. 3, ll. 28-31).
Appellants assert the same arguments in response to this rejection as
raised in the context of Rejection I. See App. Br. 34. Thus, our discussion
above with respect to claim 1 equally applies to claims 80-89.7
Rejection III – Hart, Marx, and Littlejohn
The Examiner determined that Hart, Marx, and Littlejohn render
obvious the subject matter of claim 133. Ans. 11. The Examiner found that
the teachings of Hart combined with the teaching of Marx, disclose the
elements of the claim except “the evert portion, the brim transition portion
and at least a part of the downwardly sloping brim portion provided with
shading, or coloring.” Id. The Examiner found, however, that Littlejohn
teaches “that a food service article (i.e.[,] paper plate) may be provided with

7 We note that claims 80-89 do not require “an arcuate brim portion having a
convex upper surface.”
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coloring agents for aesthetic appeal. Id. (citing Littlejohn, col. 15, ll. 14-16).
The Examiner determined that it would have been obvious to one of
ordinary skill in the art at the time of invention to “modify Hart’s paperboard
plate to include shading or coloring to make the plate aesthetically pleasing.”
Id.
In addition to relying upon the arguments asserted with respect to
claim 1, Appellants also contend that Littlejohn does not teach cloaking a
shape with shading. App. Br. 35. Thus, Appellants assert that the Examiner
failed to find an element of the claims disclosed by the cited references. See
id.
We agree with Appellants. Littlejohn states, “[s]uitably the extruded
sheet includes coloring agents for aesthetic appeal, preferably titanium
dioxide, carbon black, and other opacifying agents in the range of 0.5-8
weight percent based on total composition, preferably 1.5 to 6.5 weight
percent.” See Littlejohn, col. 15, ll. 14-19. While this discussion mentions
including coloring agents “for aesthetic appeal,” the Examiner did not find
that it discloses the specific placement of shading as claimed or that the
specific placement of shading would have been obvious to one of ordinary
skill in the art at the time of invention.
Accordingly, we do not sustain Rejection III.
Rejection IV – Hart, Marx, Sandstrom, and Official Notice
The Examiner determined that Hart, Marx, and Sandstrom, in
combination with the Examiner’s Official Notice, render obvious the subject
matter of claims 134-143. Ans. 11-12. The Examiner found that the
teachings of Hart as combined with the teaching of Marx disclose the
elements of the claims except for “a flange stabilizing ring disposed on the
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downwardly sloping brim portion or circumferentially spaced stabilizing
nodules sized to engage an adjacent container.” Id. at 11. The Examiner,
however, found that Sandstrom discloses pleats that project downwardly and
outwardly. Id. The Examiner also found that Appellants did not traverse the
Examiner’s Official Notice, which stated: “Examiner is taking Official
Notice that [Sandstrom’s] pleats could be used to help stack plates on top of
one another in engaging, or locking configuration, which is what is claimed
by the flange stabilizing ring and nodules.” Office Action (mailed Oct. 11,
2007) at 12. Thus, the Examiner found that “the fact that it is old and well
known in the art to stack plates on top of each other is taken to be admitted
prior art.” Ans. 12. The Examiner further found that it would have been
obvious to one of ordinary skill in the art at the time of invention to “include
the use of the pleats in the plate as taught by Hart and Sandstrom as
engaging means for stacking a plurality of plates on top of one another.” Id.
Appellants assert that the Examiner’s Official Notice is “tantamount
to claiming that it is common knowledge that pleats are stacking features,
which they are not.” App. Br. 35. Appellants also contend that the
Examiner’s assertion is “counter factual” because “why would one add
stacking features if pleats already performed the function.” Id.
Claim 134 requires “a flange stabilizing projection disposed on the
downwardly sloping brim portion sized to engage an adjacent container in a
stack of like containers to promote stack stability” and “wherein the outer
flange portion has a plurality of circumferentially spaced pleats.” Thus,
claim 134 requires a flange stabilizing projection and pleats. Even if we
accept that it was known in the art to stack plates on top of each other and
that it was known that pleats could be used to help stack plates on top of one
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another, that does not equate a pleat with a “flange stabilizing ring and
nodule” as found by the Examiner when the claim requires pleats in addition
to “a flange stabilizing projection.” Since the claim requires at least two
structural elements—a flange stabilizing projection and pleats—and the
Examiner only found it obvious to include the use of pleats, the Examiner
has not established that the use of “a flange stabilizing projection” in
addition to pleats would have been obvious to one of ordinary skill in the art
at the time of invention.
Accordingly, we do not sustain Rejection IV.
Appellants’ Evidence of Secondary Considerations
Appellants put forth evidence of secondary considerations, including
Littlejohn’s Declaration, in the form of unexpected results and commercial
success.8 App. Br. 35-40. In particular, Appellants have alleged unexpected

8 Appellants make a passing reference to evidence of a long felt need to
improve pleat strength in pressed paperboard containers. See, e.g., App. Br.
(“the Examiner’s assertion of obviousness is historically counter-factual in
that while the [Hart] geometry has been available for 75 years in the pulp-
molding art, it was never recognized as a feature option for paperboard-
based containers because sharp turns at the periphery of a product are
avoided in paperboard container manufacture.”); see also Reply Br. 2 (“it is
improper to disregard the evidence of surprising results, long felt need and
commercial success as discussed herein and in [Appellants’] main brief”), 5
(“The Examiner’s underlying premise is also indefensible in view of the
historical fact that there has been an ever-present, long-felt need to improve
pleat strength in pressed paper board container for many decades. If the
invention was obvious as the Examiner contends, those of skill in the art
would have developed it long ago.”). Aside from the mere passage of time,
Appellants have not put forth evidence of long felt need. See, e.g.,
Littlejohn Decl. at ¶ 3 (referring to unexpected results and commercial
success). “[A]bsent a showing of long-felt need or the failure of others, the
mere passage of time without the claimed invention is not evidence of
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results in the form of “enhanced mechanical properties and unexpected ease
of processing.” Id. at 36. Appellants rely upon the data reflected in Tables 3
and 4 of the Specification showing comparisons between pressed paperboard
plates, as well as Littlejohn’s Declaration discussing the data. See, e.g., id.
at 37-38. Additionally, Appellants presented evidence directed to the
commercial success of the invention showing sales of over a billion units of
plates including the claimed features of the invention and further noted that
such plates have “replaced all earlier designs in the premium plate segment
of the Dixie® Ultra® pressware product line.” Id. at 39. Littlejohn’s
Declaration remarks that the “early success of this product is truly
exceptional.” Id. (quoting Littlejohn Decl. at ¶ 14).
With respect to the testing data relied upon to show unexpected
results, Table 3 contains data for “Invention Profile[s]” numbered 1 through
5 as well as “Comparative Profile[s]” 1 and 2. Spec. at 44, Table 3. Table 4
contains data comparing “Nominal Invention Profile 1A” with “Nominal
Comparative Profile 2.” Id. at 48, Table 4. The Specification, in one
instance, indicates that “[p]lates of the invention and plates of like design
with and without an outer evert portion were tested for SSI Rigidity and Rim
Stiffness.”9 Id. at 40, ll. 28-29. Based on the data presented, the
Specification concludes that
[i]t is seen in the tables that adding an outer evert in accordance
with the invention concurrently increases the Rigidity and Rim

nonobviousness.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quotation
omitted). Even if the passage of time alone were reflective of long felt need,
Appellants have not put forth evidence to show that the claimed invention
met such need.
9 Littlejohn’s Declaration refers to the tested prior art plates as having a
“similar design.” See Littlejohn Decl. at ¶ 12.
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Stiffness of a plate design. That is, a “like” plate of
substantially the same shape, blank diameter and caliper has
surprisingly higher Rigidity and Rim Stiffness when an outer
evert is added thereto.
Id. at 43, ll. 13-17. With respect to Table 4, the Specification indicates that
“[w]hile this test is somewhat more qualitative than those noted above for
Rigidity and Rim Stiffness, results again show that the plates of the
invention are significantly stronger than plates of like basis weight of the
prior art.” Id. at 47, ll. 12-14.
We have fully considered Appellants’ evidence of unexpected results,
but find that they do not persuade us of the non-obviousness of the claimed
invention in light of the overwhelming evidence of obviousness. First and
foremost, as shown above, figure 2A, which is represented as disclosing a
profile within the claims, is nearly identical to the profile shown in Hart’s
figure 3. Second, and importantly, Appellants have not argued that any of
the comparative profiles tested are analogous or similar to the profile
disclosed in Hart’s figure 3. Thus, as far as Appellants have alleged and we
can discern from the record before us,10 Appellants have not tested the
profile of the closest prior art of record or a profile analogous thereto. In re
Baxter-Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.”), cited in
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1370 (Fed. Cir. 2007).

10 The discussions of testing in the Specification and Littlejohn’s Declaration
do not shed light on whether Appellants’ data is based on testing a prior art
profile analogous to that disclosed by Hart.
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We similarly find that Appellants’ evidence of alleged commercial
success does not outweigh the substantial evidence of obviousness of the
claimed subject matter. Appellants’ evidence, showing that over one billion
units have been supplied to the market between 2005 and approximately July
2008 (the date of Littlejohn’s Declaration), while impressive as a number, is
lacking in at least two respects. First, Appellants have not provided any
indication of whether this quantity represents a substantial quantity in this
market. “[E]vidence related solely to the number of units sold provides a
very weak showing of commercial success, if any.” In re Huang, 100 F.3d
135, 140 (Fed. Cir. 1996); see In re Baxter Travenol Labs., 952 F.2d 388,
392 (Fed. Cir. 1991) (“[I]nformation solely on numbers of units sold is
insufficient to establish commercial success.”). Second, Appellants have not
provided “factual evidence that demonstrates the nexus between the sales
and the claimed invention.” In re Huang, 100 F.3d at 140 (noting, as an
example, that an affidavit from a purchaser explaining that the product was
purchased due to the claimed features could present evidence of a nexus).
Accordingly, having fully considered the evidence presented, we are
not persuaded that the Examiner erred in considering Appellants’ alleged
evidence of secondary considerations.

DECISION
We affirm the Examiner’s decision rejecting claims 1-50 and 80-89
under 35 U.S.C. § 103(a) as reflected in Rejections I and II. We reverse the
Examiner’s decision rejecting claims 51-79 and 144 as reflected in Rejection
I, reverse the Examiner’s decision rejecting claim 133 as reflected in
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Rejection III, and reverse the Examiner’s decision rejecting claims 134-143
as reflected in Rejection IV.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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