Ex Parte Smalley et al

Patent Trial and Appeal Board

Jan 17, 2013

10523887 (P.T.A.B. Jan. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BRIAN LESLIE SMALLEY and ZOE WILKINS
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Appeal 2011-005421
Application 10/523,887
Technology Center 3600
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Before CHARLES N. GREENHUT, PATRICK R. SCANLON,
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/523,887

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STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4, 6, 9, 60-66, 70-73, 75, and 76. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
The claimed subject matter relates to dispensing packages for canned
products such as food and drink. Spec. 1, ll. 1-3. Claims 1 and 64 are the
independent claims on appeal. Claim 1, reproduced below, with emphasis
added, is illustrative of the claimed subject matter:
1. A paperboard carton for articles arranged in
an end-on-end relationship, the carton comprising:
six sides, the six sides including a first side
disposed between a second side and a third side,
the first side being perpendicular a fourth side, the
second side, and the third side, the second side and
the third side being parallel,
a two-piece dispenser that includes a first
portion and a second portion; the first portion
defined at least partially along its perimeter by a
first tear line;
the first portion extending at least partially
into the first side, the second side, and the third
side;
the first portion being removable from the
carton along the first tear line to create a first
opening for article removal, the second portion
being adjacent the first portion and being defined

1 Appellants identify the real party in interest as Graphic Packaging
International, Inc. App. Br. 1.
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at least partially along its perimeter by the first tear
line, a first provision, and a second provision;
the first provision having a first end
proximate the first portion and a second end distal
the first portion, the second end of the first
provision being intersected by a first intersection
line that prevents the first provision from
extending beyond its intended length;
the second provision having a first end
proximate the first portion and a second end distal
the first portion, the second end of the second
provision being intersected by a second
intersection line that prevents the second provision
from extending beyond its intended length;
the second portion being separable along the
first provision and the second provision to create a
second opening in the carton; and
wherein the second opening and the first
opening together define an enlarged opening, the
enlarged opening enabling easier article removal
from the carton than the first opening alone.

REJECTIONS
Appellants seek review of the following rejections:
(1) the rejection of claims 1, 6, 9, 60-66, 70-73, 75, and 76 under 35
U.S.C. § 102(b) as anticipated by Hoy (US 5,878,947, iss. Mar. 9, 1999)
(Ans. 3-8); and
(2) the rejection of claims 2 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Hoy (Ans. 9).

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Application 10/523,887

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ANALYSIS
Rejection of claims 1, 6, 9, 60-66, 70-73, 75, and 76
under 35 U.S.C. § 102(b) as anticipated by Hoy
Appellants argue claims 1, 6, 9, 60-66, 70-73, 75, and 76 as a group.
App. Br. 5-7. We select independent claim 1 as the representative claim.
See 37 C.F.R. § 41.37(c)(1)(vii)(2011).
Appellants contend that Hoy fails to disclose a “first portion being
removable from the carton along the first tear line to create a first opening
for article removal.” Claims App’x. (emphasis added); App. Br. 5-7. In
particular, Appellants contend that “stop 56 [formed by the Examiner-
identified first portion comprising strips 58, 60 and flap 62] remains attached
to the carton so that it can perform its function of stopping the cans as they
roll out of the carton.” App. Br. 6. Appellants point out there are tear lines
on only three sides of strips 58, 60, whereas there is merely “a fold line on
the fourth side . . . so that the strips [58, 60] can be folded relative to strip
62.” Id. (emphasis added). Since the strips 58, 60 are hingedly connected to
the carton, the Appellants contend that the examiner has failed to show a
first portion that is removable from the carton as claimed. Id. at 6-7.
The Examiner found that “the reference discloses a package made of
paperboard.” Ans. 10 (citing Hoy, col. 1, l. 6). The Examiner further found
that “the lines of perforation [for the dispenser tray 50 “to be torn out”] in
combination with the material provides a disclosure which enables a first
portion [strips 58, 60 and flap 62] to be removed from the carton.” Id.; Hoy,
col. 3, ll. 7-9. The Examiner further found that “the stop 56 [formed by the
Examiner-identified first portion comprising strips 58, 60 and flap 62] does
not need to be completely removed in order to anticipate the claims because
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Appellant does not claim removal in such a way that requires actual
separation from the carton.” Id. at 12.
The combination of tear-out lines and/or fold lines surrounding strips
58, 60 and flap 62, coupled with the paperboard material of the carton, as
pointed out by the Examiner, support that the first portion of strips 58, 60
and flap 62 are reasonably capable of being removed or gotten rid of from
the carton along such tear-out lines and/or fold lines.2 It is immaterial
whether Hoy discloses the actual removal of strips 58, 60 and flap 62 since
the claims do not require actual removal of the first portion, but rather
merely require that the first portion be “removable” or capable of being
removed. Claims App’x. The United States Patent and Trademark Office
gives claims their broadest reasonable interpretation consistent with the
specification, reading claim language in light of the specification as it would
be interpreted by one of ordinary skill in the art. In re Am. Acad. Of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Appellants additionally contend that “[e]ven if the strip 58, 60 of Hoy
(the ‘first portion’) were considered removed from the carton, it would not
create a first opening for removal of articles 52.” Reply Br. 7. In particular,
Appellants contend that “the first opening [created by removal of strips 58,

2 We find the definition of “removable” is “to be capable of being removed.”
Reply Br. 6 (citing MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (11th ed.
2004)). We adopt the definition of “remove” advanced by the Appellants—
“to get rid of”—as the broadest reasonable interpretation in light of the
disclosure in Appellants’ Specification, which distinguishes between the
removable portion 33 and the stop wall 28 that remains fixed to the carton
but can also have an outwardly flexing portion. Id. at 5-6 (citing Spec. 3, ll.
24-25 and Spec. 4, ll. 23-25); see also Spec. 5, ll. 14-20.

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60] would not enable any article removal at all.” Id. Claim 1 does not
include structural limitations (e.g., size or shape) with regard to the recited
articles. The removal of Hoy’s strips 58, 60 creates a first opening capable
of article removal when utilized with articles of appropriately configured
sizes and shapes. See Ans. 4. The burden shifted to Appellants to show that
removal of Hoy’s strips 58, 60 would not necessarily create a first opening
that would allow for article removal. See In re Schreiber, 128 F.3d 1473,
1478 (Fed. Cir. 1997) (once the Examiner finds that the prior art structure
would be capable of performing all of the functions claimed, the burden
shifts to the applicant to show that this is not the case). Appellants’
arguments are not persuasive because they are based specifically on Hoy’s
articles 52, rather than simply “articles” without any structural limitations as
recited.
For the foregoing reasons, we find that the Examiner did not err in
finding that the subject matter of claim 1 was disclosed by Hoy, and we
sustain the rejection of claims 1, 6, 9, 60-66, 70-73, 75, and 76 under 35
U.S.C. § 102(b).

Rejection of claims 2 and 4
under 35 U.S.C. § 103(a) as unpatentable over Hoy
Claims 2 and 4 depend from claim 1. Claim 2 recites a carton
according to claim 1 “wherein a divider pad is secured to the inside of the
carton,” and claim 4 recites “the divider pad has a fold down gluing panel.”
Claims App’x. The Examiner acknowledges that Hoy fails to teach a carton
where a divider pad is secured to the inside of the carton or wherein the
divider pad has a fold down gluing panel. Ans. 9. However, the Examiner
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concludes that “adding [the divider pad] would have been obvious because
the selection of a known material based upon its suitability for the intended
use is a design consideration within the skill of the art.” Id. (citing In re
Leshin, 227 F.2d 197 (CCPA 1960)).
Appellants contend that the instant case is distinguishable from the
facts of In re Leshin. Reply Br. 7-8. In particular, Appellants contend that
“the question [in the present case] is not the selection of a known material
[as in Leshin, but] rather . . . whether it would have been obvious to add the
claimed additional structure to the Hoy carton.” Id. The reasoning to
support a conclusion of obviousness may, in appropriate circumstances,
properly come from legal precedent established by prior case law. See, e.g.,
In re Eli Lilly & Co., 902 F.2d 943 (Fed. Cir. 1990). However, we find that
the facts in the prior legal decision of Leshin are not sufficiently similar to
the instant case to support the Examiner’s sole reliance on legal precedent in
making a conclusion of obviousness. “The key to supporting any rejection
under 35 U.S.C. 103 is the clear articulation of the reason(s) why the
claimed invention would have been obvious.” See In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006), cited with approval in KSR International Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
For the foregoing reasons, we find that the Examiner erred in
concluding that the subject matter of claims 2 and 4 would have been
obvious over Hoy for the reasons stated, and we do not sustain the rejection
of claims 2 and 4 under 35 U.S.C. § 103(a).

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DECISION
The Examiner’s rejection of claims 1, 6, 9, 60-66, 70-73, 75, and 76
under 35 U.S.C. § 102(b) is AFFIRMED.
The Examiner’s rejection of claims 2 and 4 under 35 U.S.C. § 103(a)
is REVERSED.
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)(iv).

AFFIRMED-IN-PART

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