Ex Parte Rebelak et al

Patent Trial and Appeal Board

Jun 29, 2016

12112077 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/112,077 04/30/2008
53609 7590 07/01/2016
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Gary Andrew Rebelak SR.
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
506759 8573
EXAMINER
THOMAS, KAREEN KAY
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY ANDREW REBELAK SR. and
ROBSON TERRY YOUNG JR.
Appeal2014-002583 1
Application 12/112,0772
Technology Center 3700
Before CYNTHIA L. MURPHY, TARA L. HUTCHINGS, and
SHEILA F. McSHANE, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 2-9 and 11-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
May 30, 2013) and Reply Brief ("Reply Br.," filed Jan. 23, 2014), and the
Examiner's Answer ("Ans.," mailed Nov. 25, 2013), and the Final Office
Action ("Final Act.," mailed Jan. 2, 2013).
2 Appellants identify Paperkoozy LLC as the real party in interest. App.
Br. 2.
Appeal2014-002583
Application 12/112,077
CLAIMED INVENTION
Appellants' claimed invention relates to beverage container sleeves.
Spec. ,-r 1.
Claim 2, reproduced below, is illustrative of the subject matter on
appeal:
2. A self-forming beverage container sleeve having a
folded state and an unfolded state, comprising:
an upper flap;
a lower flap;
a substantially linear slit line having a first end and a
second end, wherein the slit line divides the upper flap and the
lower flap;
a first side slit line extending from the first end;
a second side slit line extending from the second end;
a first side flap and a second side flap connecting the upper
flap and the lower flap in the unfolded state; and
wherein the first side slit line forms an obtuse angle with
the slit line and the second side slit line forms an obtuse angle
with the slit line.
REJECTIONS
Claims 2---6, 8, 9, 12, 13, 16, and 17 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ward (US 6,273,333 Bl, iss. Aug. 14, 2001).
Claims 7, 11, 18, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ward and Rodriguez (US 7,000,801 B2, iss. Feb. 21,
2006).
Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ward and Wong (US 6,814,253 B2, iss. Nov. 9, 2004).
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Appeal2014-002583
Application 12/112,077
ANALYSIS
Independent Claims 2 and 12, and Dependent Claims 3-5, 8, 9, 13, 16, and
17
Appellants argue claims 2-5, 8, 9, 12, 13, 16, and 17 as a group. 3 See
Appeal Br. 6-10. We select claim 2 as representative. The remaining
claims stand or fall with claim 2. See 37 C.F.R. § 41.37(c)(l)(iv).
We are not persuaded by Appellants' argument that the Examiner
erred in rejecting independent claim 2 under 35 U.S.C. § 103(a) because
Ward does not disclose or suggest that "the first side slit line forms an
obtuse angle with the slit line and the second side slit line forms an obtuse
angle with the slit line," as recited in claim 1. Appeal Br. 6-10; Reply Br.
5-9.
Ward describes a cup holder 10 that can serve as a coaster. Ward,
col. 3, 11. 41--41. As shown in Figure 7 of Ward, cup holder 10 includes a
slit 42 with stress-relief cuts 114, 118 that are perpendicular to and extend
from opposite ends of the slit 42. Id. at col. 3, 11. 60-64, Fig. 7. The cuts
114, 118 serve to prevent tearing of the panel member when a cup is
introduced. Id. at co 1. 3, 11. 64---6 7.
The Examiner acknowledges that Ward does not teach that the first
side slit forms an obtuse angle with the slit line and the second slit line forms
an obtuse angle with the slit line. Final Act. 2. But the Examiner
determines that it would have been obvious to one of ordinary skill in the art
at the time of invention to modify Ward's first and second side slits to be
formed at obtuse angles to the slit to better prevent tearing. Id. at 3.
3 In the Reply Brief, Appellants argue that claim 6 is patentable, and we will
address that claim separately herein. See Reply Br. 12-13.
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Appeal2014-002583
Application 12/112,077
Appellants argue that Ward's cup holder does not provide the same
functionality as the claimed invention. App. Br. 8. But that argument is not
persuasive because it is not commensurate with the scope of claim 2.
Claim 2 does not recite functional language, such as accommodating
beverage containers having various dimensions.
Appellants' argument that Ward teaches away from the first side slit
line forming an obtuse angle with the slit line and the second side slit line
forming an obtuse angle with the slit line also fails. App. Br. 10-11.
Appellants do not point to any passage in Ward that criticizes, discredits, or
otherwise discourages the first side slit line and second side line split each
forming an obtuse angle with the slit line, which is required before a proper
finding of "teaching away." See, e.g., In re Fulton, 391F.3d1195, 1201
(Fed. Cir. 2004) (prior art does not teach away from claimed subject matter
merely by disclosing a different solution to a similar problem unless the
prior art also criticizes, discredits or otherwise discourages the solution
claimed).
Appellants argue that the Examiner does not provide rational
underpinning to support the Examiner's obviousness determination and that
the Examiner's rejection is conclusory and based on impermissible
hindsight. App. Br. 6-12. However, the Examiner explains that the
rationale for modifying Ward is to achieve even better protection against
tearing, because Ward's modified side slits would be directed outward.
Final Act. 3. Elaborating on the rationale articulated by the Examiner,
providing Ward's side slits at an obtuse angle would result in a larger
opening for receiving a cup, further reducing a risk of tear during cup
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Appeal2014-002583
Application 12/112,077
insertion. In the absence of specific, technical arguments as to why the
motivation is insufficient, we find the Appellants' arguments unpersuasive.
Therefore, we sustain the Examiner's rejection of claim 2 under
35 U.S.C. § 103(a). We also sustain the Examiner's rejection of claims 3-5,
8, 9, 12, 13, 16, and 17, which fall with claim 2.
Independent Claim 6
Independent claim 6 recites that "the first and second side slit lines are
configured to direct the side flaps to bend in opposite directions as the
beverage container is received through the slit line." In rejecting claim 6
under 35 U.S.C. § 103(a) as unpatentable over Ward, the Examiner finds
that Ward's first 114 and second side slits 118, which are formed in opposite
directions with respect to slit 42, would move side flaps in opposite
directions as a beverage container is received through the slit line. Final
Act. 3--4.
Appellants' Appeal Brief fails to set forth any persuasive arguments
that refute the Examiner's finding, and we sustain the rejection of claim 6.
See App. Br. 8.
Independent Claim 18 and Dependent Claims 7, 11, 19, and 20
Independent claim 18 includes language substantially similar to the
language of claim 2. Claim 7 depends from claim 2; claim 11 depends from
claim 12; and claims 19 and 20 depend from claim 18. Appellants do not
present any argument for the separate patentability of claims 7, 11, and
18-20, except to assert that Rodriguez does not cure the alleged deficiencies
of Ward, and that the claims, therefore, are allowable. App. Br. 12-13. We
are not persuaded for the reasons set forth above that the Examiner erred in
rejecting independent claims 2 and 12 under 35 U.S.C. § 103(a). Therefore,
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Application 12/112,077
we sustain the Examiner's rejection of claims 7, 11, and 18-20 under
35 U.S.C. § 103(a).
Dependent claims 14 and 15
Appellants do not present any argument for the separate patentability
of claims 14 and 15, except to assert that Wong does not cure the alleged
deficiencies of Ward, and that the claims are allowable based on their
dependence on independent claim 12. App. Br. 13. We are not persuaded
for the reasons set forth above that the Examiner erred in rejecting
independent claim 12 under 35 U.S.C. § 103(a). Therefore, we sustain the
Examiner's rejection of claims 14 and 15 under 35 U.S.C. § 103(a).
DECISION
The Examiner's rejections of claims 1-9 and 11-20 under 35 U.S.C.
§ 103(a) are affirmed.
AFFIRMED
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