M Group, Inc.

Patent Trials and Appeals Board

Aug 12, 2020

2020000479 (P.T.A.B. Aug. 12, 2020)

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.
15/073,532 03/17/2016 David J. Merten M100-128-NP 6713
14326 7590 08/12/2020
Rathe Lindenbaum LLP
10611 W. Hawthrone Farms Lane
Mequon, WI 53097
EXAMINER
ALLEN, JEFFREY R
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
08/12/2020 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 DAVID J. MERTEN, JAY Z. MUCHIN,
MICHAEL S. POTEMPA, and BRIAN S. POTEMPA
____________

Appeal 2020-000479
Application 15/073,532
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–20. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM IN PART. We designate our affirmance of the rejection
of claims 9–11 as a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.50(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as M Group, Inc.
Appeal Br. 1.
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THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and is
representative of the claimed subject matter on appeal.
1. A mug comprising:
a rigid inner shell to contain a liquid;
a compressible outer surface about a lower portion of the
rigid inner shell, the compressible outer surface being
compressible by at least 0.125 inches to change shape to
increase surface area contact with an interior of differently
configured cup holders.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Davis US 2,725,733 Dec. 6, 1955
Stipp US 4,335,149 June 15, 1982
Byrns US 4,671,424 June 9, 1987
Jackson US 5,373,934 Dec. 20, 1994
Alger US 7,712,625 B2 May 11, 2010
Aquino US 2016/0194113 A1 July 7, 2016

THE REJECTIONS2
I. Claims 1, 2, 4–15, and 20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Alger and Jackson. Final Act. 3–5.
II. Claim 16 stands rejected under 35 U.S.C. § 103 as unpatentable over
Alger, Jackson, and Davis. Id. at 5.

2 The Examiner withdrew a rejection of claim 8 under 35 U.S.C. § 112(b) as
being indefinite. See Ans. 8; Final Act. 2.
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III. Claim 17 stands rejected under 35 U.S.C. § 103 as unpatentable over
Alger, Jackson, and Stipp. Id. at 6.
IV. Claims 1, 3, and 18 stand rejected under 35 U.S.C. § 103 as
unpatentable over Byrns and Jackson. Id. at 6–7.
V. Claims 1 and 19 stand rejected under 35 U.S.C. § 103 as unpatentable
over Aquino and Jackson. Id. at 7–8.

OPINION
Rejection I — Obviousness based on Alger and Jackson
Claims 1, 2, 4, 5, 7, 8, 15, and 20
In contesting this rejection, Appellant presents arguments for
independent claim 1, and does not separately argue dependent claims 2, 4, 5,
7, 8, 15, and 20. See Appeal Br. 4–8.3 We select independent claim 1 as
representative, and claims 2, 4, 5, 7, 8, 15, and 20 stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
In rejecting claim 1, the Examiner finds that Alger discloses a mug
comprising “a rigid inner shell to contain a liquid (col. 2, ll. 62 – col. 3, ll.
4); a compressible outer surface (10) about a lower portion of the rigid inner
shell, the compressible outer surface being flexible by at least 0.125 inches
(col. 5, lines 56–64).” Final Act. 3. The Examiner determines that it would
have been obvious “to have manufactured the outer surface of Alger with a
low shore A durometer, as taught by Jackson, in order to promote gripping
action of the outer surface” and takes the position that “[t]he modified outer

3 The Appeal Brief filed May 6, 2019 does not include page numbers. For
convenience, we refer herein to the pages of the Appeal Brief as if numbered
consecutively beginning with the page captioned “APPEAL BRIEF
UNDER 37 C.F.R. §41.37” as page 1.
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surface would be compressible to the degree claimed since Alger teaches
that the outer surface can flex and the material used is a soft material.” Id. at
3–4.
Appellant argues that “[n]either Alger nor Jackson disclose[s] a mug.”
Appeal Br. 4. Appellant asserts that Alger “merely discloses a cooling
coaster for a beverage container. The beverage container, when inserted into
the ‘cooling coaster’ does not form a ‘mug’ or anything that one of ordinary
skill in the art would consider to be a ‘mug.’” Id. Appellant also asserts that
“Jackson merely discloses a bottle gripping insert element for . . . gripping a
bottle in an assembly line.” Id. at 5. According to Appellant, “Merriam-
Webster defines a ‘mug’ as ‘a cylindrical drinking cup’. One of ordinary
skill in the art would not consider the cooling coaster of Alger or the
assembly line component of Jackson to constitute ‘a cylindrical drinking
cup.’” Reply Br. 4. We are not persuaded by this argument.
The Examiner responds that
Appellant has set forth in their claims what a mug is made up of
and all this includes is a rigid inner shell and a compressible
outer surface. This structure is met by Alger which teaches a
rigid inner shell (col. 2, ll. 62 – col. 3, ll. 4) and a compressible
outer surface (10). The combination of the container and holder
of Alger reads on the mug as currently claimed.
Ans. 8–9. In this regard, Appellant does not persuasively refute the
Examiner’s position that Alger’s beverage container 304 and cooling coaster
10, together, meet the structural elements recited in the claim. Additionally,

4 In the portion of Alger cited by the Examiner to address the rigid shell
limitation, Alger discloses that “cooling coaster 10 of the present teachings
can be adapted to receive various-sized beverage containers 30.” Alger,
col. 2, ll. 62–64 (boldface omitted).
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with respect to Appellant’s proffered definition of “mug” as “a cylindrical
drinking cup” (Reply Br. 4), we note that Alger discloses that beverage
container 30 includes, “for example, cans, bottles, drinking glasses, and the
like” (Alger, col. 2, ll. 64–65 (boldface omitted, emphasis added)).
Appellant has not explained adequately why the combination of Alger’s
beverage container 30 and cooling coaster 10 reasonably cannot be
considered “a cylindrical drinking cup” in accordance with Appellant’s
proffered definition.
Appellant argues that “[n]either Alger nor Jackson, alone or in
combination, disclose[s] a compressible OUTER SURFACE that is
compressible by at least 0.125 inches.” Appeal Br. 6. Appellant
acknowledges that “Alger teaches that the compressible portion is on the
INSIDE of the structure that receives the beverage container bottle.” Id. at
8. Appellant asserts that “the point [of the compressible outer surface is] . . .
to facilitate the changing of shape of the OUTER surface to increase surface
area contact of the OUTER surface of the mug with the interior of the
cupholder” and “Alger says absolutely nothing with regard to any reason for
the exterior surface of the ‘cooling coaster’ of Alger having such a degree of
compressibility.” Id. at 7 (emphasis omitted). Similarly, Appellant argues
that “Jackson teaches that the surface that contacts the bottle . . . should be
compressible so as to grip the bottle,” rather than that an outer surface
should be compressible. Id. at 6.
The Examiner responds that “the compressible portion of Alger is a
single material and therefore both the inner and outer portions of the
structure would be compressible.” Ans. 9. The Examiner further responds
that “[w]hen modifying the single material of Alger to have a different
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hardness[,] the whole structure should be modified and the compressibility
would be applied to the outer surface.” Id. Appellant does not explain
adequately why the Examiner’s finding that the outer surface of modified
Alger (just like the inner surface of modified Alger as conceded by
Appellant) is compressible by at least 0.125 inches (Final Act. 3–4; Ans. 9)
is in error.
Appellant contends that “the Examiner’s alleged motivation appears
to be drawn out of thin air. NOWHERE does Jackson even remotely
disclose any need ‘to promote gripping action of the outer surface.’” Reply
Br. 4 (emphasis omitted) (quoting Final Act. 3–4). Here, the Examiner
provides additional explanation in the Answer that it would have been
obvious to “modify[] the single material of Alger [in which both the inner
and outer portions are compressible] to have a different hardness.” Ans. 9.
In light of this additional explanation that the Examiner is modifying Alger’s
single material that provides both inner and outer surfaces, the Examiner
articulates adequate reasoning based on rational underpinnings, when
considering that Alger’s single material has an inner surface that receives,
grips, and supports a beverage container. See Final Act. 3–4 (reasoning that
the proposed modification would promote gripping and determining that
“[t]he modified outer surface would be compressible to the degree
claimed”); Alger col. 2, ll. 59–61. In this regard, Appellant does not set
forth persuasive argument to explain why the Examiner’s articulated
reasoning lacks rational underpinnings.
Appellant also argues that “Jackson teaches away from the claimed
rigid inner shell in that Jackson requires that instead of the inner shell being
rigid, the inner shell should be compressible to better grip the bottle being
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carried WITHIN an interior of the assembly line component.” Reply Br. 6.
We are unpersuaded by this argument because it is not clear how Jackson’s
teaching of an inner shell that is compressible to better grip a bottle would
lead away from the Examiner’s proposed combination in which the “single
material” of Alger’s compressible portion that holds a beverage container,
such as a bottle, is modified “to have a different hardness” as taught by
Jackson. Ans. 9. Appellant does not point to, nor do we find, any disclosure
in Jackson criticizing, discrediting, or otherwise discouraging the
combination of teachings proposed by the Examiner in the rejection
presented. See In re Fulton, 391 F.3d 1195, 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.).
For the above reasons, Appellant does not apprise us of error in the
Examiner’s conclusion of obviousness with respect to claim 1. Accordingly,
we sustain the rejection of claim 1, and of claims 2, 4, 5, 7, 8, 15, and 20
falling therewith, as unpatentable over Alger and Jackson.

Claim 6
In rejecting claim 6, which depends from claim 1, the Examiner
determines that it would have been obvious
to have manufactured the compressible outer surface to extend
at least 4.2” inches vertically above the bottom, in order to
adjust the outer surface to different inner containers and since
such a modification would have been a change in size of an
existing component. A change in size is generally recognized
as being within the level of ordinary skill in the art.
Final Act. 4 (citing In re Rose, 220 F.2d 459 (CCPA 1955)).
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Appellant argues that “the Examiner has failed to establish a prima
facie case of obviousness by failing to articulate a valid rationale that would
lead one skilled the art to have such an outer compressible wall extending at
least 4.2 inches vertically above the bottom.” Appeal Br. 8. Appellant
asserts that, “as Alger discloses a ‘coaster’, . . . there would be no reason to
extend the outer compressible wall at least 4.2 inches above the bottom.” Id.
According to Appellant, “the 4.2 inches is not merely a matter of design
choice, but is a functional measurement which facilitates a larger surface
area of the mug being gripped when within a cupholder.” Id.
The Examiner responds that the proposed “modification would be a
simple scaling in size of the outer surface to adjust to different containers
and Alger teaches that the outer surface can be used with different
containers.” Ans. 9 (citing Alger, col. 2, l. 62–col. 3, l. 4). In this regard,
Appellant does not persuasively refute the Examiner’s reasoning. That is,
the Examiner has explained that one of ordinary skill in the art would be led
to make the outer compressible wall of the coaster taller when utilizing taller
beverage containers. Although the Examiner’s stated reasoning is not based
on facilitation of a larger surface area of the mug being gripped within a
cupholder, one of ordinary skill in the art may be prompted to do what the
inventor has done, but for a different purpose or to solve a different problem.
It is not necessary that the prior art suggest the modification to achieve the
same advantage or result discovered by an applicant. See, e.g., In re Kemps,
97 F.3d 1427, 1430 (Fed. Cir. 1996) (citing In re Dillon, 919 F.2d 688, 693
(Fed. Cir. 1990) (en banc) (“Although the motivation to combine here differs
from that of the applicant, the motivation in the prior art to combine the
references does not have to be identical to that of the applicant to establish
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obviousness.”)). The Examiner articulates adequate reasoning based on
rational underpinnings to support the conclusion of obviousness, and
Appellant does not offer any factual evidence or persuasive technical
rationale to refute the Examiner’s reasoning or explain why it would be
deficient. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”).
As to the specific value of at least 4.2 inches, Appellant does not point
to, nor do we discern, any disclosure in the Specification indicating that
there is criticality in the compressible outer surface extending at least
4.2 inches vertically above the bottom, as recited in claim 6. In particular,
Appellant has not set forth persuasive evidence that the claimed value of at
least 4.2 inches provides a different function or yields unexpected results as
compared to other values. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975)
(finding that the use of the claimed feature “would be an obvious matter of
design choice” when it “solves no stated problem” and “presents no novel or
unexpected result” over the disclosed alternatives). Thus, Appellant does
not apprise us of error in the Examiner’s rejection.
For the above reasons, we sustain the rejection of claim 6 as
unpatentable over Alger and Jackson.

Claim 9
In rejecting claim 9, which depends from claim 1, the Examiner finds
that
the modified device of Alger teaches wherein the compressible
outer surface has lower portion (Alger, 40, 24) adjacent the
bottom and an upper portion (Alger, 60) distant the bottom,
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wherein the upper portion has a first uncompressed diameter
and wherein the lower portion has a second uncompressed
diameter less than the first uncompressed diameter (Alger,
Fig. 2).
Final Act. 4; see also Ans. 9–10 (explaining that “the rejection relie[s] on
portions 40 and 24 for the lower portion of the outer surface and portion 60
for the upper portions. These portions have the claimed relative sizes.”).
Appellant challenges the Examiner’s reliance on pedestal 40. Reply
Br. 9–10. Even assuming arguendo that the Examiner’s reliance on pedestal
40 is misplaced, Figures 1–4 of Alger disclose (i) an upper portion of
compressible outer surface 10 that is distant the bottom, the upper portion
having a first uncompressed diameter (e.g., the portion around lead lines 20,
22), and (ii) a lower portion of compressible outer surface 10 that is adjacent
the bottom, the lower portion having a second uncompressed diameter that is
less than the first uncompressed diameter (e.g., the bottommost portion that
is inwardly tapered). We sustain the rejection of claim 9 under 35 U.S.C.
§ 103 as unpatentable over Alger and Jackson. However, because our
analysis relies upon facts not relied on by the Examiner, we designate the
affirmance of the rejection of this claim as a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).

Claims 10 and 11
In rejecting claims 10 and 11, each depending from claim 9, the
Examiner determines that it would have been obvious
to have manufactured the compressible outer surface with the
claimed diameters, in order to adjust the outer surface to
different inner containers and since such a modification would
have been a change in size of an existing component. A change
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in size is generally recognized as being within the level of
ordinary skill in the art.
Final Act. 5 (citing In re Rose, 220 F.2d 459 (CCPA 1955)).
Appellant argues that “[t]he Examiner overlooks [the] actual claim
limitations and relies upon a conclusory and inapplicable general statement
regarding obviousness.” Appeal Br. 10. According to Appellant,
the difference between the different diameters is to facilitate
insertion into a cupholder. In contrast, no such purpose would
be served to provide such dimensions in the coaster of Alger.
Nowhere does Alger disclose that its coaster is somehow to be
inserted into a cupholder or is for use with a cupholder.
Id. The Examiner responds “that it would [have] be[en] obvious to have
manufactured the outer surface with different sizes since such a modification
would be a simple scaling in size of the outer surface to adjust to different
containers and Alger teaches that the outer surface can be used with different
containers.” Ans. 9 (citing Alger, col. 2, l. 62–col. 3, l. 4). In reply,
Appellant asserts that “the Examiner has failed to articulate what particular
containers would supposedly be accommodated by modifying Alger to have
the claimed diameters for the claimed different portions of the mug.” Reply
Br. 10–11; see also id. at 11 (asserting that “the Examiner fails to identify
ANY existing can that also has a smaller diameter at the bottom and a larger
diameter at the top. The Examiner’s statement amounts to nothing more
than a conclusory and unsupported assertion lacking any evidentiary
support.”). Appellant’s argument is unpersuasive.
We note that the reason to modify a reference may often prompt a
person of ordinary skill in the art to do what the inventor has done, but for a
different purpose or to solve a different problem; it is not necessary that the
prior art suggest the modification to achieve the same advantage or result
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discovered by an applicant. See Kahn, 441 F.3d at 987. In other words, that
the Examiner has articulated a different reason for using the diameters
recited in claims 10 and 11 than that asserted by Appellant does not
demonstrate error in the Examiner’s rejection. Here, Appellant does not set
forth factual evidence or persuasive technical rationale to refute the
Examiner’s articulated reasoning or explain why it would be deficient, and,
thus, Appellant’s argument does not apprise us of error in the rejection. We
note that Alger discloses that element 10 can be adapted to receive various-
sized beverage containers, including drinking glasses. Alger 2:62–65.
Many drinking glasses have a smaller diameter at the bottom and larger
diameter at the top.
For the above reasons, we sustain the rejection of claims 10 and 11 as
unpatentable over Alger and Jackson. Claims 10 and 11 depend from
claim 9. For the same reasons discussed above in the context of the rejection
of claim 9, we likewise designate our affirmance of the rejections of these
claims as a NEW GROUND OF REJECTION.

Claims 12–14
In rejecting claim 12, the Examiner finds that
the modified device of Alger teaches . . . wherein the
compressible outer surface has lower portion adjacent the
bottom and an upper portion distant the bottom, wherein the
lower portion is inwardly compressible to a first extent and
wherein the upper portion is inwardly compressible to a second
extent greater than the first extent.
Final Act. 4.
Appellant argues that Alger and Jackson fail to disclose that “the
lower portion of the compressible outer surface is radially compressible to a
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first extent while the upper portion is radially compressible to a second
extent greater than the first extent. Conceding this deficiency, the Examiner
repeats the conclusory assertion of obviousness.” Appeal Br. 10–11 (citing
Final Act. 5). This argument regarding a conclusory assertion of
obviousness is unpersuasive because it is not responsive to the rejection
presented. As discussed above, the Examiner does not propose modifying
Alger to include the features recited in claim 12, but, rather, finds that Alger
does disclose these features. See Final Act. 4. In this regard, other than the
bald assertion that the cited references do not disclose the limitation recited
in claim 12 (see Appeal Br. 10; Reply Br. 11), Appellant does not
specifically address the Examiner’s finding, nor offer any evidence or
persuasive technical reasoning that identifies an error in the Examiner’s
position. Thus, Appellant does not apprise us of error in the rejection. See
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board
had reasonably interpreted the same language in the prior rule under
37 C.F.R. § 41.37(c)(1)(vii) as requiring “more substantive arguments in an
appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art”).
For the above reasons, we sustain the rejection of claim 12, and its
dependent claims 13 and 14, for which Appellant does not present any
separate arguments (see Appeal Br. 10–11), as unpatentable over Alger and
Jackson.

Rejection II — Obviousness based on Alger, Jackson, and Davis
In contesting the rejection of dependent claim 16, Appellant relies on
the arguments asserted against the rejection of independent claim 1, and
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contends that Davis does not make up for the argued deficiencies in the
combination of Alger and Jackson. Appeal Br. 11. For the reasons
discussed above, Appellant’s arguments do not apprise us of error in the
rejection of claim 1, and, likewise, do not apprise us of error in the rejection
of claim 16. Accordingly, we sustain the rejection of claim 16 under
35 U.S.C. § 103 as unpatentable over Alger, Jackson, and Davis.

Rejection III — Obviousness based on Alger, Jackson, and
Stipp
Claim 17, which depends from claim 1, recites “a chamber between
the compressible outer surface and the rigid inner shell, the chamber filled
with a particulate material comprising individually compressible particles.”
Appeal Br. 24 (Claims App.). Appellant argues that Stipp, as relied upon in
the rejection, fails to teach particles that are individually compressible, as
claimed. Appeal Br. 12; Reply Br. 12–13. We agree with Appellant.
In rejecting claim 17, the Examiner finds that “Alger teaches a
chamber (Alger, 50) between the outer surface and inner shell containing a
coolant (Alger, col. 6, lines 13–27), but fails to teach wherein the coolant is
a particulate material.” Final Act. 6. However, the Examiner finds that
“Stipp teaches that it is known in the art to manufacture a coolant as a
particulate.” Id. (citing Stipp, col. 2, ll. 60–62). The Examiner determines
that it would have been obvious
to have manufactured the coolant as a particulate, to alter the
cooling properties and since it has been held to be within the
general skill of a worker in the art to select a known material on
the basis of its suitability for the intended use as a matter of
obvious design choice. Sinclair & Carroll Co. v. Interchemical
Corp., 325 U.S. 327, 65 USPQ 297 (1945). Note that the
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particulate taught by Stipp is capable of being individually
compressed.
Id. (italics added).
We agree with Appellant that the Examiner has not adequately
supported a finding that Stipp teaches particles that are individually
compressible, as required by claim 17. Stipp teaches “[a] particular mixture
of solid coolant such as dry ice and food substrate such as coffee.” Stipp,
col. 2, ll. 59–61. The Examiner takes the position that Stipp’s particles “by
their nature are individually compressible since they are not one single
piece.” Ans. 10–11. However, Appellant persuasively asserts that the
Examiner’s position “that a mass of thousands of individual coffee granules
are ‘not a single piece’ such that the mass may be movable or even
compressible, does not necessarily mean that the individual granules are
compressible or that the individual particles are compressible.” Reply
Br. 12. Here, the Examiner does not point to, nor do we discern, any
evidence that Stipp’s particles are capable of being individually compressed.
Thus, the Examiner’s finding as to the disclosure of Stipp lacks adequate
evidentiary support.
For these reasons, we do not sustain the rejection of claim 17 under
35 U.S.C. § 103 as unpatentable over Alger, Jackson, and Stipp.

Rejection IV — Obviousness based on Byrns and Jackson
In contesting this rejection, Appellant presents arguments for claim 1
(see Appeal Br. 12–15), and relies on the same arguments for dependent
claims 3 and 18 (see id. at 15). We select claim 1 as representative, and
claims 3 and 18 stand or fall with claim 1.
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In rejecting claim 1, the Examiner finds that “Byrns discloses a mug
comprising: a rigid inner shell to contain a liquid (Abstract); [and] an outer
surface (12) about a lower portion of the rigid inner shell (Fig. 3).” Final
Act. 6. The Examiner finds that Byrns does not disclose that “the outer
surface is compressible by at least 0.125 inches to change shape to increase
surface area contact with an interior of differently configured cup holders.”
Id. at 7. However, the Examiner finds that “Jackson teaches that it is known
in the art to manufacture a grip for a container out of an elastomeric
material.” Id. (citing Jackson, col. 4, ll. 26–37). The Examiner determines
that it would have been obvious “to have manufactured the outer surface of
Byrns with a low shore A durometer, as taught by Jackson, in order to
promote gripping action of the outer surface” and that “[t]he modified outer
surface would be compressible to the degree claimed based on the material
used.” Id.
Appellant argues that “[n]either Byrns nor Jackson disclose[s] a mug.”
Appeal Br. 13. Appellant asserts that Byrns “merely discloses [an] insulated
can holder. The can, when inserted into the ‘insulated can holder’ does not
form a ‘mug’ or anything that one of ordinary skill in the art would consider
to be a ‘mug.’” Appeal Br. 13. According to Appellant, “[o]ne of ordinary
skill in the art would not consider the [can holder] of [Byrns] or the
assembly line component of Jackson to constitute ‘a cylindrical drinking
cup.’” Reply Br. 14. This argument is unpersuasive. The Examiner
responds that “Appellant has set forth in their claims what a mug is made up
of and all this includes is a rigid inner shell and an outer surface. This
structure is met by Byrns which teaches a rigid inner shell (Fig. 3, inner
container) and an outer surface (12).” Ans. 11. In this regard, Appellant
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does not persuasively refute the Examiner’s position that Byrns’ rigid inner
shell (i.e., inner container) and outer surface (i.e., cylindrical shell 12),
together, constitute a “mug,” as called for in claim 1. Appellant has not
explained adequately why the combination of Byrns’ inner container and
insulated can holder 10 reasonably cannot be considered “a cylindrical
drinking cup” in accordance with Appellant’s proffered definition.
Appellant argues that “[n]either Byrns nor Jackson, alone or in
combination, disclose[s] a compressible OUTER SURFACE that is
compressible by at least 0.125 inches.” Appeal Br. 14. Appellant asserts
that the Examiner “[c]onced[es] that Byrns fails to disclose the compressible
outer surface . . . [and] points to Jackson.” Id.; see also Reply Br. 15
(asserting that “[t]he Examiner has already conceded the fact that Byrns does
not disclose the claimed compressible outer surface” (emphasis omitted)
(citing Ans. 7)). Appellant asserts that “one of skilled in the art would at
most, modify the ‘insulated can holder[’] of Byrns to have a compressible
INNER surface to better grip the can.” Appeal Br. 15. Appellant argues that
the Examiner has “failed to articulate a valid rationale that would lead one
skilled in the art to modify the cupholder[] of Byrns so as to have . . . a
compressible OUTER surface that is compressible by at least 0.125 inches.”
Reply Br. 15. Appellant contends that “the Examiner’s alleged motivation
appears to be drawn out of thin air. NOWHERE does Jackson even
remotely disclose any need ‘to promote gripping action of the outer
surface.’” Reply Br. 15 (emphasis omitted). According to Appellant,
“NOWHERE is there any teaching provided by Jackson for necessarily
modifying the outer ‘tough’ shell of Byrns so as to necessarily have a
compressibility of at least 0.125 inches.” Id. at 17–18.
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Here, the Examiner finds that Byrns discloses a compressible outer
surface (see Ans. 11 (“The examiner maintains that the outer surface of
Byrns is compressible.”); Byrns col. 1, ll. 50–52 (“[T]he insulated can holder
. . . includes a shell formed from a moldable, resilient thermoplastic
material.”)), but does not specifically disclose that “the outer surface is
compressible by at least 0.125 inches to change shape to increase surface
area contact with an interior of differently configured cup holders” (Final
Act. 7). The Examiner relies on Jackson only for teaching an elastomeric
material used to manufacture a container grip. Id. The Examiner takes the
position that “it is the one piece structure [of Byrns] that i[s] being modified
so the outer and inner portions of the outer surface would be compressible.”
Ans. 12. Appellant replies that Byrns’ “insulated can holder . . . is formed
from multiple distinct pieces, (1) an outer ‘tough’ shell having ridges 18 and
valleys 20 and (2) an inner insulating liner 42.” Reply Br. 17. Appellant
maintains that the Examiner has not articulated reasoning having rational
underpinnings for modifying Byrns to make “the outer ‘tough’ shell of
Byrns so as to necessarily have a compressibility of at least 0.125 inches.”
Id. at 17–18.
We are not persuaded by this argument because at least closed bottom
24 of outer shell 12 has an inwardly facing surface that contacts an inserted
can. See Byrns col. 2, ll. 20–22 (“[A] cooled can, indicated in dashed lines
in FIG. 3, is inserted until it strikes the bottom 24.”). Here, the Examiner
provides additional explanation in the Answer that it would have been
obvious to modify the one-piece structure of Byrns. Ans. 12. In light of this
additional explanation that the Examiner is modifying Byrns’ one-piece
structure that provides both an inner and outer surface, the Examiner
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articulates adequate reasoning based on rational underpinnings as to why it
would have been obvious to modify shell 12 of Byrns’ can holder to be
made of Jackson’s elastomeric material, when considering that at least
closed bottom 24 of shell 12 has an inwardly facing surface that contacts an
inserted can. See Final Act. 7 (reasoning that the proposed modification
would promote gripping); Byrns col. 2, ll. 20–22. The Examiner also takes
the position that that “[t]he modified outer surface would be compressible to
the degree claimed based on the material used” (Final Act. 7), which
Appellant does not contest.
Appellant also argues that Byrns teaches that “valleys 20 between
ridges 18 are to receive a person’s fingers. Thus, it would stand to reason
that one would NOT want the valleys 18 to be compressible or change
shape, destroying the principle of operation independent functioning of the
ri[dg]es 18 and the intermediate valleys 20.” Appeal Br. 13. The
“principle of operation” referred to by Appellant (id.) relates to the “basic
principles” under which the prior art device was designed to operate. In
re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested combination of
references would require a substantial reconstruction and redesign of the
elements shown in [the primary reference] as well as a change in the basic
principles under which the [primary reference] construction was designed to
operate.”) (emphasis added). Under Ratti, “a change in the basic principles”
refers to change that is fundamental in scope so as to relate to scientific or
technical principles under which the invention is designed to operate. Here,
Appellant does not provide factual evidence or persuasive technical
reasoning to explain how or why manufacturing Byrns’ can holder with
Jackson’s elastomeric material, as proposed by the Examiner, would result
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in a change in the basic principles of Byrns’ can holder, or otherwise render
it unsatisfactory for its intended purpose of insulating a can and maintaining
its contents below ambient temperature. Byrns, col. 1, ll. 5–8.
Appellant also argues that Jackson teaches away from a rigid inner
shell, as recited in claim 1. Reply Br. 15–16. This contention against
Jackson essentially repeats the argument discussed above with respect to
Rejection I of claim 1. For the same reasons that Appellant’s argument does
not apprise us of error in Rejection I, this argument, likewise, does not
apprise us of error in Rejection IV.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s conclusion of obviousness with respect to claim 1. Accordingly,
we sustain the rejection of claim 1, and of claims 3 and 18 falling therewith,
as unpatentable over Byrns and Jackson.

Rejection V — Obviousness based on Aquino and Jackson
In this rejection of claim 1, the Examiner finds that “Aquino discloses
a mug comprising: a rigid inner shell to contain a liquid (Abstract); an outer
surface (11) about a lower portion of the rigid inner shell (Fig. 3).” Final
Act. 7. The Examiner finds that Aquino does not disclose that “the outer
surface is compressible by at least 0.125 inches to change shape to increase
surface area contact with an interior of differently configured cup holders.”
Id. at 7. However, the Examiner finds that “Jackson teaches that it is known
in the art to manufacture a grip for a container out of an elastomeric
material.” Id. at 8 (citing Jackson, col. 4, lines 26–37). The Examiner
determines that it would have been obvious “to have manufactured the outer
surface of Aquino with a low shore A durometer, as taught by Jackson, in
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order to promote gripping action of the outer surface” and that “[t]he
modified outer surface would be compressible to the degree claimed based
on the material used.” Id.
Appellant argues that the Examiner has “failed to articulate a valid
rationale that would lead one skilled in the art to modify the cupholder of
Aquino so as to have . . . a compressible OUTER surface that is
compressible by at least 0.125 inches.” Reply Br. 20. Appellant explains
that “Jackson is entirely concerned with promoting gripping action of the
INNER surface to promote gripping of the bottle being conveyed by the
assembly line.” Id.; see also Appeal Br. 18 (“Jackson teaches that the
surface that contacts the bottle . . . should be compressible so as to grip the
bottle.”).
The Examiner responds that “[t]he rejection is using the teachings of
hardness when gripping a structure. This teaching can be applied to both an
outer and an inner surface depending on the use that one of ordinary skill in
the art intends the structure to go through.” Ans. 13. Appellant replies that
NONE of the “teachings of hardness when gripping a structure”
relied upon by the Examiner actually teach a compressibility of
at least 0.125 inches on the exterior of a mug. . . . The
Examiner has failed to present any evidence that simply
manually gripping a cupholder would otherwise necessarily
require or inherently have a compressibility of at least 0.125
inches.
Reply Br. 22–23.
Even if “Jackson teaches that it is known in the art to manufacture a
grip for a container out of an elastomeric material” (Final Act. 8 (emphasis
added)), the Examiner does not explain adequately why the teaching of a
material for a surface that performs a gripping action (i.e., a surface that
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grips a bottle or other container) is relevant to a surface that is gripped (i.e.,
a surface that is manually gripped by a hand). We agree with Appellant that
the Examiner has not explained adequately why one of ordinary skill in the
art would have been led to modify the outer surface of Aquino’s
cupholder 11 having “a multi-layer construction” (Aquino ¶ 23) “in order to
promote gripping action of the outer surface” based on Jackson’s teaching of
a material for a grip for a container (Final Act. 8).
Aquino teaches a cupholder 11 comprising “a multi-layer
construction” that “preferably comprises an interior layer 17 . . . [that] is
adapted to contact the base and/or sidewalls of the beverage container,” “an
absorbent layer 18,” and “an exterior layer 19 composed of a waterproof
material, such as a polymeric material.” Aquino ¶¶ 23–25. In other words,
Aquino’s outer surface is provided by exterior layer 19 that is described only
as a polymeric material without any discussion of its properties (e.g.,
compressibility), and Aquino’s inner surface is provided by interior layer 17
that contacts a received beverage container. The outer surface of Aquino’s
cupholder is not the same material as an inner surface of Aquino’s
cupholder. Consequently, even if Aquino’s inner surface provided by
interior layer 17 might grip a container in the way Jackson does, any
modification of interior layer 17 would not result in any corresponding
change in exterior layer 19 in light of Aquino’s multi-layer construction.
Moreover, the outer surface of Aquino provided by exterior layer 19 does
not grip a container in the way Jackson does, and the Examiner has not
supported sufficiently that a material shown to be useful for improving
gripping action in the context of gripping a container provides similar
advantages in the context of being manually gripped by a hand.
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For the above reasons, Appellant apprises us of error in the
Examiner’s conclusion of obviousness with respect to claim 1. Accordingly,
we do not sustain the rejection of claim 1, and of claim 19 depending
therefrom, as unpatentable over Aquino and Jackson.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
New
Ground
1, 2, 4–
15, 20
103 Alger, Jackson 1, 2, 4–
15, 20
9–11
16 103 Alger, Jackson,
Davis
16
17 103 Alger, Jackson,
Stipp
17
1, 3, 18 103 Byrns, Jackson 1, 3, 18
1, 19 103 Aquino, Jackson 1, 19
Overall Outcome 1–16, 18,
20
17, 19 9–11
We designate our affirmance of the rejection of claims 9–11 as a
NEW GROUND OF REJECTION.
This decision contains a NEW GROUND OF REJECTION pursuant
to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and
state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART; 37 C.F.R. 41.50(b)