Ex Parte Maslowski et al

Patent Trial and Appeal Board

Jun 20, 2013

11836608 (P.T.A.B. Jun. 20, 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.
11/836,608 08/09/2007 Albert Vincent Maslowski 1410-90720-US 3509
48940 7590 06/20/2013
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
DESAI, HEMANT
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
06/20/2013 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 ALBERT VINCENT MASLOWSKI and
LEONARD S. SCAROLA
____________

Appeal 2011-005639
Application 11/836,608
Technology Center 3700
____________

Before: JOHN C. KERINS, WILLIAM A. CAPP and
JILL D. HILL, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

STATEMENT OF THE CASE

Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1 and 3-16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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THE INVENTION
Appellants’ invention relates to microwave cookware. Spec. [0001].
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A method of forming a food container having
shielding suitable for use in microwave cooking, the method
comprising:
aligning a substrate having shielding with a cavity of a
mold;
placing a preformed food container on a plunger and then
shifting the plunger with the preformed food container thereon
toward the cavity;
inserting the preformed food container into the cavity to
adhere the substrate to the preformed food container; and
removing the preformed food container with the substrate
adhered to an outer surface of the preformed food container, the
preformed food container and substrate generally retaining a
shape of the mold.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

The following rejections are before us for review:
1. Claims 1, 3-5 and 9-14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Van De Weijer, Weder and either Bergh or Smith.
2. Claims 6-8, 15 and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kwiat and Gordon.
Smith
Bergh
Gordon
Weder
Kwiat
Van De Weijer
US 772,750
US 3,698,291
US 4,489,537
US 6,720,051 B2
US 2008/0063758 A1
US 2008/0230176 A1
Oct. 18, 1904
Oct. 17, 1972
Dec. 25, 1984
Apr. 13, 2004
Mar. 13, 2008
Sep. 25, 2008
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OPINION

Claims 1, 3-5 and 9-14

Appellants argue claims 1, 3-5 and 9-14 as a group and then advance
separate arguments for the sub-group of claims 9-12 and 14. App. Br. 11-
18. We select claim 1 as representative of the main group and claim 9 as
representative of the sub-group. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).

Claims 1, 3-5 and 13

The Examiner finds that Van De Weijer discloses all of the elements
of claim 1 except for: (1) aligning the shielded substrate with a cavity; and
(2) using a plunger to insert a preformed container into a cavity to adhere the
substrate to the container. Ans. 4. The Examiner relies on Weder as
disclosing a method of inserting a preformed container into a cavity to
adhere the substrate to the container. Id. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
of the invention to combine Van De Weijer with Weder to wrap a container
with a shielded substrate. Ans. 4-5. According to the Examiner, it would
have been obvious to a person of ordinary skill in the art to achieve this
because it merely substitutes one method for another to achieve the
predictable result of wrapping the container with a substrate. Ans. 5.
The Examiner acknowledges that Van De Weijer modified by Weber
does not disclose the use of a plunger to insert the container into the cavity.
Ans. 5. The Examiner relies on Bergh and Smith as each disclosing the use
of a plunger. Id. The Examiner concludes that it would have been obvious
to a person of ordinary skill in the art at the time of the invention to use the
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known technique of a plunger to push the container and substrate into the
cavity. Id.
Appellants traverse the Examiner’s rejection by first arguing that Van
De Weijer does not plunge a preformed container into a cavity. App. Br. 12-
14; Reply Br. 2. Appellants argue that Van De Weijer’s container is formed
inside of the mold cavity and, therefore, is not pre-made before it is inserted
into the cavity. Id.
The Examiner responds that Figure 9 of Van De Weijer discloses the
method of forming a container with shielding. Ans. 10. The Examiner
points out that the rejection relies on Weder to show that it was known in the
art to insert a preformed container into a cavity. Id.
Appellants’ second argument is that the Examiner failed to articulate a
legally sufficient motivation to combine Van De Weijer with Weder. App.
Br. 14-16. Appellants argue that there is no reason to modify Van De
Weijer by wrapping a substrate around the container, because Van De
Weijer already incorporates shielding into the container as the container is
formed. App. Br. 16. Appellants argue that Weder merely discloses a cloth-
like decorative sleeve for wrapping around a flower pot. Id. Appellants
argue that Weder does not disclose a plunger for inserting the flower pot into
a mold. Id. Appellants also argue that Weder does not use a cavity to shape
the substrate around the flower pot as claimed. Id. Appellants argue that
Weder’s substrate does not retain the shape of the mold. Id.
Continuing on, Appellants dispute the Examiner’s rationale that
combining Van De Weijer and Weder involves a simple substitution,
asserting that “there is nothing in Van De Weijer to substitute.” App. Br. 16.
Appellants argue that since Van De Weijer bonds the foil to the container
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during formation of the container, it does not disclose wrapping the
container because the container is not yet formed and, therefore, “there is
nothing to wrap.” App. Br. 16-17. Appellants further argue that there is no
motivation to apply a method for wrapping a flower pot to the field of
microwave cookware. App. Br. 17.
Finally, Appellants argue that there is no motivation to look to Bergh
or Smith to use a plunger in the process of Van De Weijer. App. Br. 17.
Appellants argue that Figures 6A-6C of Bergh apply a flexible sheet to a
metal box using a plunger. Id. Appellants argue that Figures 9A-9C of
Bergh apply a flexible sheet to an unfolded blank for a cardboard box, which
Appellants distinguish from a preformed container. Id. Appellants also
argue that Smith does not disclose inserting a box into a cavity. Id.
Appellants conclude that neither Bergh nor Smith discloses inserting a pre-
formed, non-metal container into a cavity with a plunger. Id.
Having fully considered Appellants’ arguments, we do not find any of
them persuasive. Appellants’ argument that Van De Weijer’s container is
not preformed amounts to an individual attack on one reference in a multi-
reference combination. Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). In the Examiner’s
proposed combination, Weder satisfies the limitation directed to a preformed
container.
Neither do we find persuasive Appellants’ arguments that the requisite
motivation to combine is missing from the Examiner’s proposed
combination. The Examiner explained that combining Van De Weijer with
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Weder merely involved substitution of one known element for another. Ans.
10-11. Appellants’ argument that there is no need to substitute Weder’s
process for applying a substrate because, by the time Van De Weijer’s
container is formed, it already has shielding incorporated into it
miscomprehends the concept of substitution. Substitution denotes replacing
one thing with another, not adding something in addition to what is already
present. In the instant case, the Examiner reasons that wrapping the
container after it is preformed amounts to a simple substitution that is
nothing more than a predictable variation of incorporating the shielding into
the container in a single process. Id. The Examiner’s proposed combination
of Van De Weijer and Weder is supported by articulated reasoning with
rational underpinning. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
We find similarly unpersuasive Appellants’ arguments directed to the
plunger element based on allegations that the plungers used by Bergh and
Smith serve a different purpose than applying a substrate to a preformed
container. It is not necessary for the prior art to serve the same purpose as
that disclosed in Appellants’ Specification in order to support the conclusion
that the claimed subject matter would have been obvious. See In re Linter,
458 F.2d 1013, 1016 (CCPA 1972). “A reference may be read for all that it
teaches, including uses beyond its primary purpose.” In re Mouttet, 686
F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR, supra at 418-421. The
plungers of Bergh and Smith push sheet material to cause it to conform to a
predetermined shape. See Bergh, Fig. 9A-9C; Smith, Fig. 5-9. We agree
with the Examiner that a person of ordinary skill in the art would have been
readily able to adapt Bergh and Smith’s teachings regarding the use and
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function of a plunger to push a substrate and preformed container into a
cavity in order to facilitate adherence of one to the other.
We sustain the rejection of claims 1, 3-5 and 13.

Claim 9-12 and 14.

Claim 9 is an independent claim that is substantially similar in scope
to claim 1.1 The Examiner rejected claim 9 using substantially the same
analysis as with claim 1. Ans. 6. Although Appellants argue claim 9 under
a separate heading from claim 1, they rely on the same arguments previously
relied on with respect to claim 1. App. Br. 17-18.
We sustain the rejection of claims 9-12 and 14 for the same reasons
that we sustain the rejection of claim 1.

Claims 6-8, 15 and 16

Appellants argue claims 6-8, 15 and 16 as a group. App. Br. 18-20.
We select independent claim 6 as representative of the group. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
The Examiner finds that Kwiat discloses all of the limitations of
claim 6 except for aligning the substrate with a plunger and inserting a
preformed container into a cavity to adhere the substrate to an inner surface
of the container. Ans. 7. The Examiner relies on Gordon as disclosing the
method of aligning a substrate with a plunger, inserting a preformed
container into a cavity, and directing the plunger into the container to adhere

1 Claim 9 is identical to claim 1 except that the “aligning” limitation
substitutes the word “over” for the word “with.” Also, the “inserting the
preformed food container into the cavity” limitation inserts the phrase “of
the mold, the preformed food container pressing the substrate resting over
the cavity into the mold” immediately after the word “cavity.”
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the substrate to an inner surface of the container. Id. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time of the invention to apply Gordon’s method of applying a
substrate to a container to make the container of Kwiat. Id. According to
the Examiner, this would achieve the predictable result of shielding the
microwave from directly contacting the food. Id.
Appellants traverse the rejection by arguing that the Examiner failed
to articulate a legally sufficient motivation for making the proposed
combination. App. Br. 19-20. Appellants contend that a person of ordinary
skill in the art would not be motivated to use a plunger with Kwiat, because
Kwiat applies its shield/susceptor to a tray blank and then converts the blank
into a tray. App. Br. 20.
The Examiner responds by pointing out that both Kwiat and Gordon
teach methods for wrapping a substrate to the inner surface of a container.
Ans. 15. According to the Examiner, a person of ordinary skill in the art
would have been technologically capable of making the substitution of the
method disclosed by Gordon for the method of forming a food container
disclosed by Kwiat with the predictable result of adhering a substrate to a
container to make the container more efficient, stronger, impermeable to gas,
or to provide uniform cooking. Id.
In their Reply Brief, Appellants raise, for the first time, a new
argument attempting to distinguish Gordon from the claimed invention.
Reply Br. 3. Appellants argue that Gordon blows a gas through its mandrel
to blow form and heat the plastic substrate. Id. This argument does not
distinguish Gordon from the claimed invention. Gordon’s mandrel is a male
plunger that is directed into the preformed container to adhere the substrate
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to the inner surface of the container, which satisfies the language of the
claim. See Gordon, Fig. 2, Col. 7, ll. 3-40. Furthermore, Appellants’
reliance on the fact that Gordon also blow forms and heats the substrate does
not remove Gordon from the scope of the claim. Claim 6 uses a
“comprising” transition which does not limit the claim to only the claimed
elements. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501
(Fed.Cir.1997) (comprising transition means that the named elements are
essential, but other elements may be added and still form a construct within
the scope of the claim).
We also find Appellants’ argument regarding motivation to combine
unpersuasive. Together, Kwiat and Gordon disclose all of the elements of
claim 6. The Examiner’s reason for making the proposed combination, i.e.,
substituting one method of applying a substrate for another to make a food
container that is more efficient, stronger, impermeable to gas, or provide
uniform cooking, constitutes sufficient articulated reasoning with rational
underpinning to support the rejection. Ans. 15, KSR, supra at 418.
Appellants’ naked argument that “no sufficient reason is given” why Kwiat
would be modified by Gordon does not apprise us of error in the Examiner’s
conclusion. Reply Br. 4. We sustain the rejection of claims 6-8, 15 and 16.
DECISION
The decision of the Examiner to reject claims 1 and 3-16 is affirmed.
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

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