Ex Parte Wiedmeyer

Patent Trial and Appeal Board

Oct 3, 2013

11985102 (P.T.A.B. Oct. 3, 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.
11/985,102 11/14/2007 Warren G. Wiedmeyer 247097-001354USPT 6154
56356 7590 10/04/2013
PACTIV CORPORATION
c/o NIXON PEABODY LLP
300 S. Riverside Plaza
16TH FLOOR
CHICAGO, IL 60606
EXAMINER
DEMEREE, CHRISTOPHER R
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
10/04/2013 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 WARREN G. WIEDMEYER
____________________

Appeal 2011-010373
Application 11/985,102
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010373
Application 11/985,102

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 9-21, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellant’s claimed invention relates “to insulated disposable
containers and/or cups, and methods of manufacturing the same.” Spec.,
para. [0002]. Claims 9 and 17 are the independent claims on appeal. Claim
9, reproduced below, is illustrative of the claimed subject matter.
9. A method of making a thermally insulated
container, the method comprising the acts of:
providing a bottom blank, an inner layer
blank, and an outer layer blank;
providing a sheet adapted to be used as a
middle layer blank;
dividing the sheet into at least a first middle
layer blank and a second middle layer blank, at
least one of the first middle layer blank and the
second middle layer blank having an aperture
formed thereon;
stacking the inner layer blank, the outer
layer blank, and the first middle layer blank such
that the first middle layer blank is sandwiched
between the inner layer blank and the outer layer
blank to form a layered arrangement;
wrapping the layered arrangement; and
sealing opposing ends of the layered
arrangement.

Claim 17 is directed to a similar method of making a thermally
insulated container comprising, inter alia, “dividing the sheet into at least a
first middle layer and a second middle layer.”
Appeal 2011-010373
Application 11/985,102

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REFERENCES
The Examiner relies upon the following prior art references:
Razzaghi
Morita
Hed
US 5,752,653
US 5,769,311
US 6,926,197 B2
May 19, 1998
Jun. 23, 1998
Aug. 9, 2005

REJECTIONS
Appellant seeks review of the following rejections:
I. Claims 9, 11, 12, 15, and 16 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Morita.
II. Claims 10 and 17-21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Morita and Razzaghi.
III. Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Morita and Hed.
The Examiner also provisionally rejects claims 1-211 under the
judicially created doctrine of obviousness-type double patenting as
unpatentable over claims 1-24 of co-pending Application No. 11/894,228.
Appellant does not seek review of, and does not advance any argument
against, this rejection. Br. 9-10. In addition, since the filing of the
Examiner’s Answer, the applicants in the co-pending ’228 application have
amended independent claims 1 and 20. Because the circumstances
surrounding the co-pending ’228 application have changed since institution
of the provisional double patenting rejection in the present application, we
decline to reach this rejection, and leave it to the Examiner to determine

1 We note that Appellant previously canceled claims 1-8. Br. 5. As such,
this provisional rejection should apply to claims 9-21 only.
Appeal 2011-010373
Application 11/985,102

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whether the obviousness-type double patenting rejection is still proper in
light of the amended claims of the co-pending ’228 application.

ANALYSIS
Rejection I
The Examiner finds that Morita discloses the method of claim 9,
including the steps of providing a sheet (embossed paper sheet 24) and
dividing that sheet into a first middle layer blank (first thin paper sheet 22)
and a second middle layer blank (second thin paper sheet 26). Ans. 4-5.
The Examiner also takes the apparently alternative position that Morita’s
sheet 24 can be broadly interpreted as a “middle layer blank [having] a first
portion and a second portion” because Appellant’s claims “do not limit the
‘dividing’ of the middle layer blank via cuts or any other distinct means.”
Ans. 7. This position is based on the Examiner’s determination that the
“definition” in Paragraph [0033] of Appellant’s Specification does not link
to” the “definition” in Paragraph [0032] such that the two paragraphs define
“separate embodiment[s].” Id.
Appellant argues that “Morita does not disclose, teach, or suggest” the
claimed dividing step “and, in fact, teaches away from” the dividing step.
Br. 12; see also Br. 11 (“Morita teaches away from forming dividing the
embossed paper sheet 24 (the ‘middle layer blank’) into the first and second
thin paper sheets 22 and 26”).
We initially note that “[t]eaching away is irrelevant to anticipation.”
Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005).
Nevertheless, we agree with Appellant that Morita does not disclose dividing
the embossed paper sheet 24 into first and second middle layer blanks. The
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Application 11/985,102

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first thin paper sheet 22, the embossed paper sheet 24, and the second thin
paper sheet 26 are three distinct layers in the multi-layer structure that makes
up the protective cover 20. Morita, col. 14, ll. 30-38. Contrary to the
Examiner’s contention, there is no indication that the embossed paper sheet
24 is in anyway divided into the first and second thin paper sheets 22, 26.
We also agree with Appellant that the Examiner’s interpretation of
“dividing” is flawed. Br. 12-13. In particular, we disagree with the
Examiner’s determination that Paragraphs [0032] and [0033] describe
separate embodiments that provide different definitions of dividing. Instead,
Paragraphs [0032] and [0033] both discuss dividing sheet 42 of Figure 2b.
Paragraph [0032] states “[t]he sheet is divided into more than one portion”
and “[e]ach of the portions may be used as a middle layer blank . . . in a
multi-layered container.” Similarly, Paragraph [0033] states “[t]he sheet 42
is divided along cut lines 44 to form a first portion 46 and a second portion
48.” Paragraph [0033] further states and “[t]he second portion 48 includes
three bands 51a-c corresponding with the three slits 52a-c of the first portion
46.” This description, combined with what is depicted in Figures 2a and 2b,
makes clear that the first and second portions are physically separated from
one another. In view of this, we determine that, when considered in light of
the Specification, the broadest reasonable interpretation of the claim term
“dividing” requires a physical separation. Accordingly, the Examiner’s
interpretation is unreasonably broad.
For these reasons, we do not sustain the rejection of claim 9 and
dependent claims 11, 12, 15, and 16 as anticipated by Morita.
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Application 11/985,102

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Rejections II and III
The Examiner’s rejections of claims 10 and 17-21 as obvious over
Morita and Razzaghi and claims 13 and 14 as obvious over Morita and Hed
both rely on the same erroneous finding discussed supra that Morita
discloses dividing a sheet into first and second middle layers. Ans. 6-7.
Neither Razzaghi nor Hed cures this deficiency of Morita. Accordingly, we
do not sustain either of these two rejections.
DECISION
We reverse the decision of the Examiner rejecting claims 9-21 under
35 U.S.C. §§ 102(b) and 103(a). We do not reach the provisional rejection
of claims 9-21 based on obviousness-type double patenting.

REVERSED

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