Ex Parte Sadlier

Patent Trial and Appeal Board

Jul 31, 2014

11182330 (P.T.A.B. Jul. 31, 2014)

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.
11/182,330 07/14/2005 Claus E. Sadlier 20227-P1P1 8650
31743 7590 07/31/2014
Georgia-Pacific LLC
133 Peachtree Street NE - GA030-42
ATLANTA, GA 30303
EXAMINER
ELKINS, GARY E
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
07/31/2014 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 CLAUS E. SADLIER
____________

Appeal 2012-006445
Application 11/182,330
Technology Center 3700
____________

Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Claus E. Sadlier (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims 1–7,
11–17, 31, 34, 36–38, 40, and 41 as unpatentable over Sadlier (US
6,085,970; iss. July 11, 2000) and Dees (US 6,039,682; iss. Mar. 21, 2000)
or Mueller (US 5,547,124; iss. Aug. 20, 1996); (2) claim 18 as unpatentable
over Sadlier and Dees or Mueller and Varano (US 5,226,585; iss. July 13,
1993); (3) claim 19 as unpatentable over Sadlier and Dees or Mueller and

1 The Examiner has withdrawn the rejection of claims 9 and 10 under 35
U.S.C. § 112, second paragraph, for indefiniteness. See Ans. 4. Claims 9
and 10 have been canceled. See Id.; See also Br. 2.
Appeal 2012-006445
Application 11/182,330

2
Gatcomb (US 5,385,260; iss. Jan. 31, 1995); and (4) claim 26 as
unpatentable over Sadlier and Dees or Mueller and Watkins (US 4,261,501;
iss. Apr. 14, 1981). Claim 8–10, 20–25, 28–30, 32, 35, 39, and 42–47 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to insulating disposable
cups and containers, specifically to insulating wrappers.” Spec. 1; figs. 4A,
4B, 5.2 Claims 1, 11 and 31 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A thermally insulated cup wrapper, comprising:
an outer base sheet having a plurality of boundary edges
and a corresponding plurality of edge portions adjacent said
boundary edges, respectively;
an insert sheet having a plurality of edges;
at least one of said outer base sheet and said insert sheet
being made of insulating material to provide an insulating layer;
said insert sheet being adhered to one side of said outer
base sheet to form a thermally insulated cup wrapper;
said insert sheet being smaller in size than said outer base
sheet and being positioned on said outer base sheet so that said
plurality of edge portions of said outer base sheet extend
beyond said edges of said insert sheet wherein said insert sheet
is not attached to said outer base sheet along the plurality of
edges and said edges can migrate freely;
whereby said thermally insulated cup wrapper can be
wrapped around and adhered to a single wall cup to form a
thermally insulated cup.

2 Appellant’s Specification does not provide line or paragraph numbering.
Accordingly, reference is made to the page number.
Appeal 2012-006445
Application 11/182,330

3
ANALYSIS
Obviousness over Sadlier and Dees or Mueller – Claims 1–7, 11–17, 31, 34,
40 and 41
Independent claim 1 calls for a thermally insulated cup wrapper,
“whereby [the] thermally insulated cup wrapper can be wrapped around and
adhered to a single wall cup to form a thermally insulated cup.” Br. 27,
Clms. App. Independent claim 11 calls for a thermally insulated container,
including “a thermally insulated cup wrapper being wrapped around and
adhered to [the] outside surface of [the] side wall of [the] cup.” Br. 29,
Clms. App. Independent claim 31 calls for a container including “an
insulating wrapper wrapped around and adhesively attached to the side wall
of the cup.” Br. 31, Clms. App. The Examiner finds that Sadlier discloses
the limitations of the claims except that “Sadlier does not disclose formation
of the insulating outer layer and insert as a wrapper capable of or being
wrapped around the inner cup, i.e. Sadlier discloses formation of the outer
insulating layers as a single unit with the inner container.” Ans. 5–6. The
Examiner further finds that
[e]ach of Dees et al[.] and Mueller teaches that it is
known to make the outer insulating layers of a cup
as a separately formed wrapper (see e.g. fig. 7 in
Dees et al and col. 4, lines 33-46 in Mueller) which
is subsequently wrapper around and secured to an
inner cup.

Id. at 6. The Examiner concludes that

[i]t would have been obvious to make the insulating
layers in Sadlier as a separate wrapper as taught by
either Dees et al[.] or Mueller since the formation of
a wrapper separately from the cup allows formation
Appeal 2012-006445
Application 11/182,330

4
and attachment of the wrapper at a different location
and by a different manufacturer from the
manufacturer of the cup.
Id.

Appellant contends that “Sadlier expressly teaches away from a multi-
layer configuration as claimed.” Br. 11–12, 17, 22. Specifically, Appellant
contends that
Sadlier [discloses at] col. 2, ll. [6]-13 (“Although
strong and thermally efficient, [multi-layered paper
cups with an inner cup body and a multi-layered
insulating wrap] are all expensive and impractical
to manufacture because the inner cup body and the
insulating wrap are formed separately, and then
must be assembled together. The outer wrap is
formed from separate pieces that are laminated
together, again adding additional cost. The extra
steps slow the production process and prevent the
cups from being made with standard cup-forming
machinery.”). Sadlier specifically cites to Mueller
as a multi-layered paper cup that is slow to
produce, expensive, and impractical to
manufacture. Dees has a similar multi-layer
arrangement that uses a separately formed
insulating wrapper that is subsequently wrapped
around and secured to a cup body. Thus, Sadlier
expressly teaches away from the combination of
elements from Dees or Mueller to arrive at a multi
-layer configuration.

Id. at 12, 17, 22–23.
Appellant’s arguments are persuasive. A prior art reference must be
considered in its entirety, i.e., as a whole, including portions that would
teach away from the claimed invention. See W. L. Gore & Assoc., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). A reference teaches
Appeal 2012-006445
Application 11/182,330

5
away when it would have led one of ordinary skill in the art in a direction
divergent from that chosen by Appellant (see In re Haruna, 249 F.3d 1327,
1335 (Fed. Cir. 2001) and In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).
Sadlier teaches that the extra steps of forming the inner cup body and
the outer wrap separately slows the production process, adds manufacturing
costs, and prevents the cup from being made with standard cup-forming
machinery. See Sadlier, col. 2, ll. 6–13.3 Sadlier provides an alternative to
forming the inner cup body and the insulating wrapper separately, namely,
forming the inner cup body and insulating wrapper from a single blank. See
Sadlier, col. 2, ll. 6–13, col. 4, ll. 22–33, figs. 4A, 4B; See also Br. 7–8; Ans.
6 ((“Sadlier discloses formation of the outer insulating layers as a single unit
with the inner container.”) (emphasis added)). Sadlier therefore leads one of
ordinary skill in a direction divergent from Appellant’s invention, in which a
primary feature is a separate cup and insulating wrapper, wherein the
insulating wrapper is wrapped around the cup. It therefore is our view that
Sadlier teaches away from Appellant’s invention, and it would not have been
obvious to one of ordinary skill in the art to modify Sadlier using the
teachings of Dees or Mueller in the manner proposed by the Examiner.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
independent claims 1, 11, and 31 and their respective dependent claims 2–7,
12–17, 33, 34, 36–38, 40, and 41 as unpatentable over Sadlier and Dees or
Mueller cannot be sustained.

3 Both the Examiner and Appellant acknowledge that Dees and Mueller each
disclose a separately formed cup and insulating wrapper. See Ans. 6–7; Br.
8–9, 12, 17–18, 23; Dees, col. 7, l. 20–col. 8, l. 24, figs. 5, 7; Mueller, col. 4,
ll. 17–21, 33–46, fig. 1.
Appeal 2012-006445
Application 11/182,330

6
Obviousness over Sadlier and Dees or Mueller and Varano – Claim 18

Claim 18 depends from claim 11. The Examiner’s rejection of claim
18 as unpatentable over Sadlier and Dees or Mueller and Varano (see Ans.
6) is based on the same unsupported findings discussed above with respect
to independent claim 11. The addition of Varano does not remedy the
deficiencies of Sadlier and Dees or Mueller. Accordingly, for similar
reasons as discussed above, we do not sustain the Examiner’s rejection of
claim 18 as unpatentable over Sadlier and Dees or Mueller and Varano.
Obviousness over Sadlier and Dees or Mueller and Gatcomb – Claim 19
Claim 19 depends from claim 11. The Examiner’s rejection of claim
19 as unpatentable over Sadlier and Dees or Mueller and Gatcomb (see Ans.
6–7) is based on the same unsupported findings discussed above with respect
to independent claim 11. The addition of Gatcomb does not remedy the
deficiencies of Sadlier and Dees or Mueller. Accordingly, for similar
reasons as discussed above, we do not sustain the Examiner’s rejection of
claim 19 as unpatentable over Sadlier and Dees or Mueller and Gatcomb.
Obviousness over Sadlier and Dees or Mueller and Watkins – Claim 26
Claim 26 depends from claim 16, which depends from 11. The
Examiner’s rejection of claim 26 as unpatentable over Sadlier and Dees or
Mueller and Gatcomb (see Ans. 7) is based on the same unsupported
findings discussed above with respect to independent claim 11. The addition
of Watkins does not remedy the deficiencies of Sadlier and Dees or Mueller.
Accordingly, for similar reasons as discussed above, we do not sustain the
Examiner’s rejection of claim 26 as unpatentable over Sadlier and Dees or
Mueller and Watkins.
Appeal 2012-006445
Application 11/182,330

7
DECISION
We REVERSE the decision of the Examiner to reject claims 1–7,
11–19, 26, 31, 33, 34, 36–38, 40, and 41.

REVERSED

Klh