Ex Parte Teensma et al

Board of Patent Appeals and Interferences

Jul 31, 2012

11838335 (B.P.A.I. Jul. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WIJNAND J. TEENSMA, MICHAEL T. WILLIAMS,
DENNIS H. PIISPANEN, TRICIA GUEVARA, JIANSHENG TANG, and
BRITTNEY M. PALMER
____________

Appeal 2010-009606
Application 11/838,335
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/838,335

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A. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 31, 37-43 and 45-55 as being unpatentable
under 35 U.S.C. § 103(a) over Gornell1 in view of Tang2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.3
Appellants’ invention is directed to a labeled, expanded resin
container.
Representative apparatus claim 31 reads as follows:
31. A labeled expanded resin container comprising:
expandable resin beads or pre-expanded resin beads, having a
density of from 0.5 to 12 lb./ft.3, molded in a shape having a
sidewall, with a thickness of from 0.75 to 5 mm, an outer
surface, a rim, and a base; and
a label, formed from a label material disposed over the outer
surface of the sidewall of the container between the rim and the
base, having a first end and a second end that overlap to form a
seam;
wherein the container has a rim strength that is at least
50% greater than the rim strength of a container that does not
contain a label, where the containers are otherwise made using
the same resin and equipment; and
wherein the placement of the label is free of unintentional
gaps between the first and the second end, the label does not

1 WO 01/85420 published Nov. 15, 2001.
2 7,252,866 B2 issued Aug. 7, 2007.
3 Our decision makes reference to Appellants’ Brief (App. Br.) filed
December 2, 2009, Appellants’ Reply Brief (Rep. Br.) filed April 28, 2010,
and the Examiner’s Answer (Ans.) mailed March 30, 2010.
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overlap the base or the rim of the container; and the label
presents a smooth circumferential surface.
App. Br. Claims Appendix.
We will sustain the rejection for the reasons expressed in the Answer
with the comments below added for emphasis.
Appellants raise three primary issues against the Examiner’s § 103
rejection over Gornell in view of Tang:
1.) Whether the Examiner erred in relying on Gornell, as Gornell is
allegedly non-enabling?
2.) Whether the Gornell and Tang combination renders the container
of the claims obvious?
3.) Whether the Examiner erred in not according sufficient weight to
Appellants’ declaration evidence of nonobviousness?
Appellants argue all of the claims as a group. App. Br. 5-13. For
purposes of this appeal, we therefore select claim 31 to decide the issues
raised by the rejection. See 37 C.F.R. § 41.37(c)(1)(vii) (“When multiple
claims subject to the same ground of rejection are argued as a group by
appellant, the Board may select a single claim from the group of claims that
are argued together to decide the appeal with respect to the group of claims
as to the ground of rejection on the basis of the selected claim alone.”).
As a preliminary matter, Appellants argue that the Examiner has
applied an incorrect standard of persuasion when evaluating Appellants’
arguments and evidence. App. Br. 8-9; Reply Br. 2-4. In particular,
Appellants contend that the Examiner applied an “unequivocally persuaded”
standard, whereas “preponderance of evidence” is the correct standard.
Reply Br. 2-3. While Appellants are correct, we hold this to be harmless
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error as applying the correct standard yields the same result for the reasons
expressed below.
Issue 1
Appellants argue that Gornell is non-enabling and therefore cannot be
used in support of the conclusion of obviousness of the claimed invention.
App. Br. 8-9; Reply Brief 4-5. In particular, Appellants direct our attention
to the Second Declaration under 37 C.F.R. § 1.132 of Dennis H. Piispanen4.
Therein, declarant states that he “was involved in providing technical service
to Autobar Group Limited regarding resin modifications that might help
overcome their inability to produce in-mold labeled cups using an apparatus
similar to that described in [Gornell].” 2d Piispanen Dec. ¶ 5 (emphasis
added). Declarant further states that the Gornell “apparatus was never able
to commercially produce in-mold labeled cups.” Id.
Under an obviousness analysis, a reference need not work to qualify
as prior art; “it qualifies as a prior art, regardless, for whatever is disclosed
therein.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1357
(Fed. Cir. 2003). “Even if a reference discloses an inoperative device, it is
prior art for all that it teaches.” Beckman Instruments, Inc. v. LKB Produkter
AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989). Thus, regardless of the merits of
Appellants’ evidence that Gornell is non-enabling, Gornell qualifies as prior
art for all that it teaches. Further, a prior art printed publication such as
Gornell cited by the Examiner is presumptively enabling barring any
showing to the contrary by Appellants. See In re Antor Media Corp.,

4 Second Declaration under 37 C.F.R. § 1.132 of Dennis H. Piispanen filed
April 1, 2009.
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Appeal No. 2011-1465, 2012 WL 3055928, at 3 (Fed. Cir. July 27, 2012).
The Examiner did not find Appellants’ declaration evidence persuasive as
the apparatus referred to by declarant was similar to Gornell’s, not the same
as Gornell’s. Ans. 9. We agree. It is simply not possible to ascertain what
differences exist between the apparatus to which declarant was referring and
that of Gornell. We note that even if the apparatus referred to by declarant
was the same as Gornell, the evidence still fails to persuade. The claims on
appeal in this case are directed to a labeled, expanded resin container, not to
the apparatus for its manufacture. In addition, commercial scale production
of the container is not required for the container to be enabled. See CFMT,
Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1338 (Fed. Cir. 2003)
(“Enablement does not require an inventor to meet lofty standards for
success in the commercial marketplace.”). Appellants have not offered any
evidence as to the lack of enablement of Gornell’s container.
Accordingly, Appellants have failed to persuade us of reversible error
with regard to the Examiner’s reliance on Gornell.
Issue 2
Appellants argue that the combination of Gornell and Tang does not
render the claimed invention obvious. App. Br. 5-6, 11. Appellants direct
our attention to the First Declaration under 37 C.F.R. § 1.132 of Dennis H.
Piispanen5, which states that Tang’s seam is raised in contrast to the claim
limitation that the label presents a smooth circumferential surface. 1st
Piispanen Dec. ¶¶ 5, 6. In addition, Appellants argue that Gornell does not

5 First Declaration under 37 C.F.R. § 1.132 of Dennis H. Piispanen filed
December 23, 2008.
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teach or suggest a labeled, expanded resin container having a rim strength at
least 50% greater than an expanded resin container without a label, or having
a rim strength at least 5% greater than an expanded resin container with a
post-mold label, or a rim strength of at least 0.4 kg, or a 16 oz. labeled,
expanded resin container without leakage. App. Br. 11. Appellants contend
that “[b]ecause of the significant differences employed in making the
containers [of Appellants and Gornell], the presumption that any properties
of the present containers and the Gornell containers [are inherently the same]
must fail.” App. Br. 10; Reply Br. 5.
The Examiner found that the Gornell-Tang combination would have
inherently resulted in an in-mold labeled, expanded resin container having
each of these properties. Ans. 7. We agree. Appellants have not shown that
any of the asserted differences in making the containers is directly tied to
and responsible for any of these properties. Appellants’ declaration
evidence is solely directed to attempting to demonstrate Gornell’s alleged
inoperability. There is also ample evidence in the record to support a
determination contrary to Appellants’ above argument. For example, we
note that in Table on page 4 of the Reply Brief, Sample 2 has a rim strength
more than 50% greater than Sample 3. Further, the Examiner found that
Tang’s labeled expanded resin containers have rim strengths greater than
0.40 kg, as well as rim strengths more than 50% greater than unlabeled
containers. Ans. 6. Since Gornell teaches in-mold labeling and molding of
the containers, Gornell-Tang containers would inherently present a smooth
circumferential surface. Id. at 7. Accordingly, Appellants have failed to
persuade of reversible error with regard to the Examiner’s obviousness
conclusion based on the Gornell-Tang combination.
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Issue 3
Appellants argue that the Examiner erred in failing to accord adequate
weight to the objective evidence of nonobviousness in the Specification, the
Declaration under 37 C.F.R. § 1.132 of L. Todd Becker6, as well as the
Second Declaration under 37 C.F.R. § 1.132 of Dennis H. Piispanen. Reply
Br. 5-8. In particular, Appellants contend that the Specification at page 2,
line 23 to page 4, line 19 establishes long-felt need and the Becker
Declaration establishes commercial success, while the second Piispanen
Declaration establishes failure of others. App. Br. 11-12.
The Examiner maintained the position that “statements made by the
Appellant[s] in the Appellant[s’] own disclosure of the instant invention
cannot establish a long felt need because they are not objective and do not
provide evidence of ‘an art recognized problem’ that ‘existed in the art for a
long period of time without solution’”. Ans. 13. We agree. Moreover, both
Gornell and Tang are apparent solutions to Appellants’ alleged long felt
“desire in the foam container industry to provide high quality printed images
on such containers” (App. Br. 12).
The second Piispanen Declaration has been addressed above. We add
that this Declaration purports to establish the failure of the Gornell
apparatus, not the failure of the Gornell container. As such, this Declaration
is not probative in establishing failure of others with regard to the claimed
invention.
With regard to the Becker Declaration, the Examiner found that “all of
the evidence submitted in Mr. Becker’s declaration . . . are advertisements

6 Declaration under 37 C.F.R. § 1.132 of L. Todd Becher filed July 24, 2008.
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for the Appellant[s’] product.” Ans. 15. The Examiner maintained that this
evidence does not establish commercial success “directly derived from the
invention claimed.” Id. Regardless of the Examiner’s characterization of
the evidence in the Becker Declaration, we agree that such evidence fails to
establish either commercial success or the requisite nexus between the
alleged commercial success and the unique or novel features of the claimed
invention. See In re Huang, 100 F.3d 135 (Fed. Cir. 1996). The evidence
fails to provide any information on product sales within the marketplace, or
any other metric of commercial success. Also, each of the items in the
Declaration merely refers to the insulative and branding properties of the
cups as the reasons for customer excitement about Appellants’ cups. These
properties are not unique to Appellants’ cups, as both Gornell and Tang
teach cups having these properties.
We find no error with regard to the Examiner’s treatment of
Appellants’ objective evidence of nonobviousness. Accordingly, we agree
with the Examiner’s ultimate conclusion of obviousness and sustain the
Examiner’s rejection of claims 31, 37-43, and 45-55.

Conclusion
The decision of the Examiner 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).
AFFIRMED

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