Ex Parte RE34557 et al

Board of Patent Appeals and Interferences

Feb 20, 2009

90006937 (B.P.A.I. Feb. 20, 2009)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte NORTH AMERICAN CONTAINER CORP.1
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Appeal 2008-5880
Reexamination Control 90/006,937
Patent RE 34,5572
Technology Center 3900
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Decided: February 23, 20093
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Before CAROL A. SPIEGEL, JENNIFER D. BAHR and DANIEL S.
SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 NORTH AMERICAN CONTAINER CORPORATION is the real party in
interest (App. Br. 2).
2 Reissued on March 8, 1994 from U.S. Patent No. 4,832,256 issued May 23,
1989 to Grigsby. Payment for the maintenance fee due at 11.5 years was
received by the USPTO on October 26, 2000.
3 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 306 (2002) from a Final
Rejection of claims 1, 2, 6 and 13-18. Patentability of claims 3-5 and 7-12
has been confirmed (Ans. 24; Final Office Action 1). We have jurisdiction
under 35 U.S.C. § 306 (2002).
The RE 34,557 patent is presently involved in an infringement
litigation which has been STAYED pending final resolution of the
reexamination proceedings. North American Container Corp. v. United
Packaging, Inc., Case No. 03 C 1047 (E.D. Wis.) (App. Br. 2).
The Appellant claims a shipping container made of corrugated
paperboard having wood reinforcements and a base frame to allow shipping
of heavy objects.
Independent claims 1 and 13 (App. Br. Claims Appendix, pg. 35 and
40, emphasis added) read as follows:
1. A wood reinforced corrugated paperboard shipping
container comprising:
a base frame suitable for supporting an article to be
packed, said base frame including at least one wood strip that
extends substantially a length of said base frame;
a corrugated paperboard body defining inner wall
surfaces and corresponding outer wail surfaces said corrugated
paperboard body comprising a wall forming blank of

4 The Examiner’s Answer states that the patentability of claims 3, 5 and 7-12
is confirmed, but does not state the status of claim 4. However, this appears
to be a typographical error where “3, 5” should have read “3-5” in view of
the fact that claim 4 depends from claim 3, and claim 4 is not set forth as
being rejected. The cover sheet of the Final Office Action identifies claims
3-5 and 7-12 as patentable and/or confirmed.
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paperboard scored to provide a series of main panels foldably
joined together at a plurality of comers and dimensioned for
mating engagement with said base frame such that at least one
of said main panels extends the length of said at least one wood
strip;
at least one substantially vertically aligned reinforcement
fixedly secured to one of said inner wall surfaces of said main
panels and positioned adjacent one of said comers thereof, but
sufficiently distanced from said comers to permit collapsing of
said corrugated paperboard body;
at least one substantially horizontal attaching strip
fixedly secured to one of said inner wall surfaces of said
corrugated paperboard body, said at least one attaching strip
being positioned on said respective inner wall surface for
alignment with said at least one wood strip of said base frame;
a top frame dimensioned for receipt by said corrugated
paperboard body; and
means for attaching said at least one attaching strip to
said at least one wood strip
whereby attachment of said corrugated paperboard body
to said base frame provides a wood- to-wood connection that
ensures against component separation.

13. A reinforced corrugated paperboard shipping container,
comprising:
a base frame for supporting an article to be packed, said
base frame including at least two wood strips;
a corrugated paperboard body comprising a wall forming
blank of paperboard scored to provide a series of panels
foldably joined together at a plurality of corners and configured
for engagement to said base frame;
a plurality of substantially vertical supports fixedly
secured to said container walls adjacent said corners for
reinforcing said paperboard body and sufficiently distanced
therefrom to permit collapse of said paperboard body;
at least two attaching strips, each one fixedly secured to
a separate one of said panels and positioned for alignment with
one of said wood strips; and
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means for connecting said attaching strips to said wood
strips,
whereby engagement of said reinforced corrugated
paperboard body to said base frame by connecting said
attaching strips to said wood strips ensures against component
separation.

The prior art relied upon by the Examiner in rejecting the claims is:
Whiton 2,768,738 Oct. 30, 1956
Fish 4,171,741 Oct. 23, 1979
Petit French Pat. No. 1,265,313 May 23, 1961

The Examiner rejected claims 13-15 and 18 under 35 U.S.C. § 102(b)
as anticipated by Whiton.
The Examiner rejected claims 13, 14 and 16 under 35 U.S.C. § 102(b)
as anticipated by Fish.
The Examiner rejected claims 1, 2, 6, 13-18 under 35 U.S.C. § 103(a)
as unpatentable over Whiton and Petit (we rely on the English translation of
record).
We AFFIRM-IN-PART.

ISSUES
The following issues have been raised in the present appeal.
1. Whether the Appellant has shown that the Examiner erred in
finding that the limitation “means for connecting” recited in independent
claim 13 is satisfied by the strap of Whiton.
2. Whether the Appellant has shown that the Examiner erred in
finding that the limitation “means for connecting” recited in independent
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claim 13 is satisfied by the staples described in Fish which also secures the
attaching strips to the panels of the shipping container.
3. Whether the Appellant has shown that the Examiner erred in
concluding that the combination of Whiton and Petit satisfies the limitations
of claims 1 and 13 reciting horizontal attaching strips, and a means for
attaching or connecting the same.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Whiton describes a crate 10 (i.e., reinforced corrugated
paperboard shipping container) including a bottom assembly 12 (i.e., a base
frame) for supporting an article to be packed, the base frame including two
wooden slats 33 (i.e., two wood strips), and a body 11 (i.e., a corrugated
paperboard body) with a wall forming sheet 16 (i.e., a blank) of paperboard
scored by score lines 17 to provide a series of panels foldably joined
together at a plurality of corners and configured for engagement to the base
frame (col. 3, ll. 51-71; col. 4, ll. 31-36; figs. 1, 3, 5 and 6).
2. Whiton also describes a plurality of cleats 26 (i.e., vertical
supports) fixedly secured via fasteners 28 to the container walls adjacent the
corners for reinforcing the paperboard body and distanced from the corners
(col. 3, l. 72-col. 4, l. 1; col. 4, ll. 4-7; fig. 3).
3. Whiton includes two narrower wooden cleats 27 (i.e., two
attaching strips) that are fixedly secured via fasteners 28 to different panels
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and positioned for alignment with one of the wood strips of the base frame
upon assembly (col. 4, ll. 1-7; col. 5, ll. 47-52; figs. 2 and 4).
4. Whiton describes that a metal strap 14 secures the base frame
and the tubular body together (col. 3, ll. 53-56; col. 5, ll. 55-58; fig. 1).
5. Whiton does not describe a staple (or equivalent) that connects
or attaches the attaching strips to the wood strips of the base frame.
6. Fish describes a packaging carton (i.e., reinforced corrugated
paperboard shipping container; not enumerated) including a wooden skid 10
(i.e., a base frame) for supporting an article to be packed, the base frame
including two side members 12, 14 (i.e., two wood strips), and a cover 50
(i.e., a corrugated paperboard body) formed like a box with side walls 52,
54, 56, 58 (i.e., panels) foldably joined together at a plurality of corners and
configured for engagement to the base frame (col. 3, ll. 21-37; col. 4, ll. 12-
25; fig. 1).
7. Fish describes a plurality of structural members 68, 70, 72, 74
(i.e., vertical supports) fixedly secured to the container walls adjacent the
corners for reinforcing the paperboard body, the vertical supports being
distanced from the corners (col. 4, ll. 30-40; col. 6, ll. 29-34; figs. 1 and 5).
8. Fish includes two horizontal runners 80, 82, each having a side
panel 102 (i.e., two attaching strips) that are fixedly secured to different
panels when the packaging carton is assembled and in use, each attaching
strip being positioned for alignment with one of the wood strips of the base
frame upon assembly (col. 5, ll. 30-31, 49-65; col. 6, ll. 12-18; figs. 1 and 4).
9. Fish describes that, in use, staples are driven through the side
panel 102 of the attaching strips, the side walls 52, 54 of the paperboard
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body, and into side members of the base frame, thereby attaching the
attaching strip to the wood strip of the base frame (col. 6, ll. 12-18; fig. 4) to
ensure against component separation.
10. Petit describes a package (i.e., reinforced corrugated paperboard
shipping container; not enumerated) including a base 2 (i.e., a base frame)
for supporting an article to be packed, the base frame including two flat
elements 24, 25 (i.e., two wood strips), and a sheet of cardboard 1 (i.e., a
corrugated paperboard body) that provides a series of lateral surfaces 3, 4, 5,
6 (i.e. panels) foldably joined together at a plurality of corners and
configured for engagement to the base frame (Translation, pgs. 2, 3; figs. 1-
3).
11. Petit includes wood moldings 11, 12, 13, 14 (i.e., attaching
strips) that are fixedly secured to different panels and positioned for
alignment with one of the wood strips of the base frame upon assembly
(Translation, pgs. 2, 3; figs. 1 and 4).
12. Petit describes that upon inserting the attaching strips in the
peripheral housing 26, metallic strips 28 are nailed to attach the ends of the
attaching strips together so as to mount the carton to the base frame in a
removable manner, but do not attach the attaching strips to the wood strips
of the base frame (Translation, pgs. 3, 4; fig. 3).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
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628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Prater, 415 F.2d 1393,
1395-96 (CCPA 1969); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). In construing means-plus-function claim language in
accordance with 35 U.S.C. § 112, ¶ 6, one must “look to the specification
and interpret that language in light of the corresponding structure, material,
or acts described therein, and equivalents thereof, to the extent that the
specification provides such disclosure.” In re Donaldson Co., Inc., 16 F.3d
1189, 1193 (Fed. Cir. 1994). The properly interpreted claim must then be
compared with the prior art.
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). The Court noted that “[t]o facilitate review, this analysis should be
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made explicit.” Id. at 1741, citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”).

CLAIM CONSTRUCTION
We construe “means for attaching” recited in independent claim 1,
and “means for connecting” recited in independent claim 13, as meaning
“staples”, and equivalents thereof under 35 U.S.C. § 112, ¶ 6 (App. Br. 5, 7,
31; col. 8, ll. 9-12). In this regard, we further construe the recited limitations
“means for attaching” and “means for connecting” as requiring “joining” or
“fastening” the recited attaching strips and the wood strips together (App.
Br. 5, 7, 16, 33; Spec. col. 6, ll. 21-24).

ANALYSIS
Rejection of claims 13-15 and 18 based on Whiton
The Examiner rejected claims 13-15 and 18 as lacking novelty,
contending that Whiton discloses each and every limitation recited in these
claims (Ans. 3). The Appellant contends that the Examiner erred because
Whiton “lacks the claimed attaching strips, lacks the limitation of attaching
strips fixed secured to the main panel, and lacks the limitation means for
connecting the attaching strips to the wood strips of the base frame” (App.
Br. 14). While we agree with the Examiner that Whiton does disclose the
recited attaching strips and fixedly securing the attaching strips to the main
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panel (FF 1 and 3), the Appellant is correct that Whiton fails to describe a
“means for connecting said attaching strips to said wood strips” as recited in
claim 13.
In particular, the Appellant argues that the narrow vertical cleats 27 of
Whiton cannot be read as corresponding to the recited “at least two attaching
strips” because the attaching strips must be horizontal (App. Br. 14).
However, as the Examiner notes (Ans. 3), claim 13 does not recite that the
attaching strips are horizontal. Hence, this argument fails because it is not
based on limitations appearing in the claims. See In re Self, 671 F.2d 1344,
1348 (CCPA 1982). The Appellant argues that the Examiner cannot re-use
the vertical cleats for the attaching strips (App. Br. 15; Reply Br. 5).
However, as explained by the Examiner (Ans. 7 and 8), only two vertical
cleats 26 correspond to the “plurality of substantially vertical supports”
recited in claim 13, while vertical cleats 27 correspond to the recited
attaching strips. In this regard, we note that the two vertical cleats 27 are
fixedly secured to separate panels using fasteners 28, and are positioned so
that the ends thereof align with the slats 33 of the bottom assembly 12 (FF 3)
as also recited in claim 13.
Nonetheless, we agree with the Appellant that Whiton does not
describe a “means for connecting said attaching strips to said wood strips” as
recited in claim 13. The Examiner states that the limitation “means for
connecting” is broad and that the metal strap 14 of Whiton which holds the
tubular body 11 to the bottom assembly 12 satisfies this limitation (Ans. 8
and 9). However, as set forth supra, the claim limitation “means for
connecting” is construed as “staples”, and equivalents thereof, and functions
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to “join” or “fasten” together, the recited attaching strips and the wood
strips. Straps that merely bound objects together are not equivalent to
staples that function to join, or fasten, objects together (FF 4). Moreover, we
are also persuaded by the Appellant’s argument that the strap 14 of Whiton
merely wraps around the bottom assembly 12 (i.e., base frame) to hold the
bottom assembly 12 and the body 11 together, but does not connect, or strap,
the vertical cleats 27 (i.e., attaching strips) to the slats 33 (i.e., wood strips)
of the bottom assembly 12 (App. Br. 15 and 16).
Therefore, the Appellant has shown that the Examiner erred in finding
claim 13, and claims 14, 15 and 18 depending therefrom, as lacking novelty
over Whiton.

Rejection of claims 13, 14 and 16 based on Fish
The Examiner rejected claims 13, 14 and 16 as lacking novelty
contending that Fish discloses each and every limitation recited in these
claims (Ans. 4). The Appellant contends that the Examiner erred because
Fish does not describe the attaching strips, fixedly securing the attaching
strips to the main panel, and a means for connecting the attaching strips to
the wood strips of the base frame recited in independent claim 13 (App. Br.
23). We disagree with the Appellant.
Initially, we note that the container of Fish includes horizontal runners
80, 82 which correspond to the “attaching strips” recited in claim 13, the
panel 102 of these runners being “fixedly secured to a separate one of said
panels and positioned for alignment with one of said wood strips” (FF 8) via
a plurality of staples once the packaging carton is constructed for use (FF 9).
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The Appellant contends that because Fish merely provides panel 102 made
of corrugated paperboard that is attached to the side members 12, 14 of the
wooden skid 10, the invention of Fish would experience the same problem
of the prior art where the corrugated paperboard would separate from the
staples (App. Br. 21 to 23). However, claim 13 does not set forth any
limitations regarding the material of the recited “attaching strips” or
preclude the use of cardboard for the attaching strips. Indeed, claim 15
depending from claim 13 specifies that the “attaching strips are wood,”
thereby indicating that claim 13 is broader in scope and may be made of a
material other than wood.
The Appellant argues that the Examiner erred in concluding that only
one attaching means is required because the limitation “fixedly securing the
attaching strips to the panels” is the same as the limitation “means for
connecting the attaching strips to the wood strips” (App. Br. 11, 12, 18;
Reply Br. 2-4). However, the Appellant appears to be misunderstanding the
Examiner’s rejection.
In stating that “some of the staples can be the connecting structure for
attaching strip to the main panel, and the other staples can be the connecting
means for attaching the attaching strips to the wood strips” (Ans. 9 and 10),
the Examiner is correctly finding that because the container of Fish includes
a plurality of staples that fasten the attach the panel 102, the side walls 52,
54 and the side members 12, 14 together (FF 9), at least some of the plurality
of staples can be considered as satisfying the limitation “at least two
attaching strips, each one fixedly secured to a separate one of said panels,”
while others of the plurality of staples can be considered as satisfying the
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limitation “means for connecting said attaching strips to said wood strips”.
In this regard, we note that the limitation “means for connecting said
attaching strips to said wood strips” does not preclude the staples (and
equivalents) from securing other components of the shipping container, such
as securing the attaching strips to the panels.
While the Appellant’s argument is not entirely clear, the Appellant
appears to be arguing that once the Examiner considers one staple of the
plurality of staples of Fish as corresponding to either the structure used to
fixedly secure the attaching strips to the panel, or alternatively, as
corresponding to the recited “means for connecting,” all of the plurality of
staples of Fish must be applied in a like manner. However, there is no basis
to require that all of the plurality of staples of Fish must be considered as
corresponding exclusively to one limitation. Furthermore, to the extent that
the Appellant is arguing that the attaching strips are fixedly secured to the
panels by staples (or equivalents) that do not also connect the attaching
strips to the wood strips, or that the recited “means for connecting” only
attaches the attaching strips to the wood strips, such arguments are not
persuasive because they are not based on any limitation appearing in claim
13. In re Self, 671 F.2d at 1348. Hence, the Appellant’s argument to the
contrary is not persuasive.
The Appellant further argues that the Examiner failed to properly
consider the claim limitation that the attaching strips are first fixedly secured
to the main panel, and subsequently, the attaching strip is connected to the
wood strip (App. Br. 20). However, the Appellant’s argument is not
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persuasive because there is no language in the claim which requires the
sequencing of steps advocated by the Appellant. In re Self, 671 F.2d at 1348.
Thus, in view of the above, the Appellant has not shown that the
Examiner erred in rejecting independent claim 13 as lacking novelty over
Fish. The Appellant does not submit separate arguments directed to claims
14 and 16 that depend from independent claim 13. Hence, claims 14 and 16
fall with independent claim 13. See 37 C.F.R. § 41.37(c)(1)(vii).

Rejection of claims 1, 2, 6 and 13-18 based on Whiton and Petit
In rejecting claims 1, 2, 6, 13-18, the Examiner contends that Whiton
describes each and every limitation of independent claim 1 except for the
recited “horizontal attaching strip[s]” and “means for attaching said at least
one attaching strip to said at least one wood strip” (Ans. 6). The Examiner
contends that Petit’s description of moldings which are secured by metallic
strips 28 and nails cures the deficiencies of Whiton, and that “modification
of Whiton in view of [Petit] requires only substituting one type of base for
an alternative one” which would have been obvious (Ans. 6 and 11). We
disagree.
The moldings of Petit can be considered as corresponding to the
recited horizontal attaching strip fixedly secured to a main panel (FF 11).
However, the metallic strips 28 and the described nails do not correspond to
the recited “means for attaching” as construed supra which requires joining
or fastening of the attaching strip to the wood strip. While nails described in
Petit are equivalent to staples, these nails attach the ends of the moldings
(i.e., the horizontal attaching strips) together in a hinge-like manner (FF 12)
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instead of attaching the attaching strip to the wood strip as specifically
recited in claim 1 (App. Br. 31). This deficiency is not remedied by Whiton
which utilizes a strap to secure the base frame to the body (FF 4) as
discussed supra. Similar analysis applies to independent claim 13 as well.
The Examiner has not articulated a rational reason for modifying the use of
the described moldings and nails described in Petit to result in the invention
of independent claims 1 and 13.
Therefore, in view of the above, we conclude that the Appellant has
shown that the Examiner erred in rejecting independent claims 1 and 13, as
well as dependent claims 2, 6 and 14-18, as unpatentable over Whiton and
Petit.

CONCLUSIONS
1. The Appellant has shown that the Examiner erred in finding
that the limitation “means for connecting” of claim 13 is satisfied by the
strap of Whiton.
2. The Appellant has not shown that the Examiner erred in finding
that the limitation “means for connecting” of claim 13 is satisfied by the
staples described in Fish.
3. The Appellant has shown that the Examiner erred in concluding
that the combination of Whiton and Petit satisfies the limitations of claims 1
and 13 reciting horizontal attaching strips, and a means for attaching or
connecting the same.
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ORDER
1. The Examiner’s rejection of claims 13-15 and 18 as lacking
novelty over Whiton is REVERSED.
2. The Examiner’s rejection of claims 13, 14 and 16 as lacking
novelty over Fish is AFFIRMED.
3. The Examiner’s rejection of claims 1, 2, 6, 13-18 as obvious
over Whiton and Petit is REVERSED.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

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MAT

For Patent Owner:
Baker, Donelson, Bearman, Caldwell & Berkowitz PC
Intellectual Property Department
Monarch Plaza, Suite 1600
3414 Peachtree Road
Atlanta GA 30326-1164

For Third Party Requester:

Joseph S. Heino
Davis & Kuelthau, S. C.
111 East Kilbourn Avenue Suite 1400
Milwaukee, WI 53202