Ex Parte 6,715,639 B2 et al

Patent Trial and Appeal Board

Dec 18, 2014

90012773 (P.T.A.B. Dec. 18, 2014)

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.
90/012,773 01/28/2013 6,715,639 B2 RWZ-90R 1083
7590 12/19/2014
WOMBLE CARLYLE SANDRIDGE & RICE
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
12/19/2014 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
____________________

GRAPHIC PACKAGING INTERNATIONAL, INC.
1

Patent Owner, Appellant
____________________

Appeal 2014-007770
Ex parte Reexamination Control 90/012,773
2

Patent US 6,715,639 C1
3

Technology Center 3900
____________________

Before JOHN C. KERINS, KEVIN F. TURNER and DANIEL S. SONG,
Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1
Graphic Packaging International, Inc. is the Patent Owner and the real
party in interest (Appeal Brief (hereinafter "App. Br.") 1).
2
Request for Ex Parte Reexamination filed by The C.W. Zumbiel Company
on January 28, 2013 (hereinafter "Request"), was granted in the Order
Granting/Denying Request for Ex Parte Reexamination mailed April 16,
2013 (hereinafter "Order").
3
Patent US 6,715,639 C1 (hereinafter " the '639 patent") issued April 6,
2004, to Spivey, Inter Partes Reexamination Certificate having been issued
April 11, 2013.
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STATEMENT OF THE CASE
Claims 2, 9, 14 and 42-50 are subject to reexamination and stand
rejected (Examiner's Answer (hereinafter "Ans.") 3). Claims 42-50 were
newly added during the subject reexamination (see App. Br., Claims App.).
In addition to its Appeal Brief, the Patent Owner also relies on its Reply
Brief and Declarations of Mssrs. Raymond Spivey, Sr., Tod Hoyme, and
Robert Olenjniczak in support of patentability. We have jurisdiction under
35 U.S.C. §§ 134(b) and 315 (2002) as to arguments directed to the merits of
the entered rejection.
We REVERSE the Examiner's rejection.

BACKGROUND
The '639 patent was the subject of inter partes Reexamination Control
95/000,077. An appeal to the Board of the Examiner's decisions was
decided in Appeal 2010-002215 mailed July 19, 2010 (hereinafter "the '2215
Board Dec." or "the '2215 Board Decision"), which concluded that claims 1,
3-8, 10-13, 19-21, 40 and 41 of the '639 patent were properly rejected, but
that the record failed to establish obviousness of claims 2, 9 and 14 ('2215
Board Dec. 45). The '2215 Board Decision was affirmed by the Court of
Appeals for the Federal Circuit in Zumbiel Company, Inc. v. Kappos and
Graphic Packaging Int’l., Inc., 702 F.3d 1371 (Fed. Cir. 2012). Information
relevant to the present appeal is set forth in Zumbiel which is binding on the
Board.
We are also informed that the '639 patent was involved in the
following infringement proceedings, both of which have been terminated:
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1. Riverwood Int'l Corp. v. Meadwestvaco Corp., No. 1:03-CV-
1672 (TWT) (N.D. Ga 2003); and
2. Graphic Packaging Int'l, Inc. v. The C.W. Zumbiel, No. 1:04-
CV-0314 (TWT) (N.D. Ga 2004).
(App. Br. 1).

PRESENT APPEAL
Claims 2, 9 and 14 involved in the present appeal depend from
independent claims 1, 3 and 13, respectively, these independent claims
having been canceled by Inter Partes Reexamination Certificate issued April
11, 2013. Newly added claims 42-50 ultimately depend from one of claims
2, 9 or 14. Claim 2 reads as follows, canceled claim 1 being also reproduced
below for reference (Claims App.):
1. (Canceled) An enclosed carton for carrying a plurality of
containers in two rows, with a top row and a bottom row, said
containers each having a diameter, the carton comprising:
a. a top panel, side panels, a bottom panel, and closed
ends, at least one of which is an exiting end;
b. a dispenser which is detachable from the carton to
form an opening at an exiting end through which the containers
may be removed;
c. the dispenser being a unitary structure comprising a
portion of the top panel, portions of the side panels, and a
portion of the exiting end, said portions being defined by a tear
line extending across the top panel, side panels, and exiting
end;
d. means for preventing the end container in the bottom
row from accidentally rolling out of the carton after the
dispenser has been opened, the height of the means above the
bottom panel being less than the diameter of said end container;
and
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e. a finger flap located along the portion of the tear line
extending across the top panel for pulling the dispenser open
along the tear line,
f. whereby when the dispenser is opened it may
optionally remain attached to the carton at the exiting end to
form a basket at the exiting end of the carton.

2. The carton of claim 1, in which the finger flap is located
between the first and second containers in the top row.

PRIOR ART
The prior art in the appeal record is:
Ellis 3,178,242 Apr. 13, 1965
Pilger 3,416,719 Dec. 17, 1968
Cherry Canadian Patent 874828 July 6, 1971
Dutcher 4,498,581 Feb. 12, 1985
Wonnacott 4,817,866 Apr. 4, 1989
Herzberger Papierfabrik G 85 14 718 U1 Aug. 8, 1985
(hereinafter "German '718")

ANALYSIS
We address the Patent Owner's arguments infra in an order that differs
slightly from the order presented.

Merits of the Rejection
The Examiner rejects dependent claims 2, 9, 14 and 42-50 under 35
U.S.C. § 103(a) as being unpatentable over Ellis in view of German '718,
and in view of either Dutcher, Pilger, Wonnacott or Cherry (RAN 4). The
Examiner finds that Ellis discloses a tear line that "defines the
dispenser/removable section R as a unitary structure," and relies on German
'718 for disclosing a finger flap (finger hole 9) opening structure that may be
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attached by a fold line or a tear line (Ans. 5). According to the Examiner,
"[c]laims 2, 9 and 14 differ only in the inclusion of the finger flap located
between the first and second containers in the top row," and finds that "[t]his
position of the tear line in combination with the finger flap is taught by
Dutcher, Pilger, Wonnacott and Cherry." (Ans. 6, 9). The Examiner
concludes that "[i]t would have been obvious to one of ordinary skill in the
art to have included the finger flap located between the first and second
containers in the top row of the carton of Ellis and German '718, . . . in view
of the teachings in Dutcher, Pilger, Wonnacott or Cherry so as to easily
facilitate the opening of the tear line." (Ans. 7; see also Ans. 10).
The Patent Owner argues (App. Br. 10), inter alia, that the Examiner
ignores the Federal Circuit's affirmation of the finding in Zumbiel that "Ellis
teaches away from having the tear line between the first and second
containers." (App. Br. 10, citing Zumbiel, 702 F.3d at 1383).
The Examiner disagrees and states that:
The decision by the Board of Appeals and the CAFC do not
merely rely upon the discussion that Ellis teaches away from
positioning the finger flap between two containers. These
decisions also rely upon the determination that Palmer failed to
show a specific position of the finger flap along a tear line. In
addition, while Ellis may teach away from positioning the tear
line between the first and second containers, there is nothing to
suggest that moving the tear line would make the carton of Ellis
inoperable as noted above. On the whole, the prior art teaches
positioning of the tear line between two containers. This
position of the tear line in combination with the finger flap is
taught by Dutcher, Pilger, Wonnacott and Cherry.
(Ans. 9).

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For clarity, we reproduce the relevant portion of Zumbiel wherein the
court states:
Substantial evidence also supports the Board's finding
[4]

that the location of Ellis's tear line would not place the finger
flap near the location between the first and second containers on
the top row as recited in claim 2. In fact, Ellis teaches away
from having the tear line between the first and second
containers. Ellis specifically states that the tear line is "a
distance more than one-half diameter and less than one
diameter of one can, preferably about three-fourths of a
diameter." Ellis col. 2 ll. 31-33. Ellis's expressly recited range

4
The finding set forth in the '2215 Board Decision referred to in Zumbiel
states:
the Requester's articulated reason for relocating the tear line of
Ellis (together with the finger flap of German '718) in view of
Palmer, to enhance "access and ability to remove can C-1 as the
first can" by enlarging the dispenser opening (RBR to Ex. 7) is
contrary to the explicit teachings of Ellis. In particular, such
relocation of the tear line in the carton of Ellis would position
the tear line away from the carton end at a distance of
approximately one and one-half (i.e., 1.5 times) the diameter of
the cans of Ellis. However, Ellis specifically states that the
position of the tear line is to be less than one can diameter, and
preferably about three-fourths of one can diameter (FF 2). In
this regard, we find support in the Patent Owner's contention
that Ellis teaches away from the modification suggested by the
Requester (RBPO to R 6).
Hence, in view of the above, the record is insufficient to
support the conclusion that Palmer provides the teaching for
moving the tear line of Ellis with a finger flap to be between
first and second containers as specifically recited in claims 2
and 9. Therefore, we are not persuaded that the Examiner erred
in refusing to adopt Requester's proposed rejection based on
Ellis, German '718 and Palmer.
('2215 Board Dec. 43).
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for the placement of the tear-line (i.e., for the bottom row,
going leftward one-half a can to one can) lies outside the scope
of claim 2.
Zumbiel, 702 F.3d at 1383.

We initially observe that the carton of Ellis being addressed in the
pertinent portion of Zumbiel regarding "teaching away" is the carton of Ellis
as shown in Figure 3 with its containers arranged in a staggered
configuration. In this regard, the Examiner's rejection of claims 2, 9 and 14
in the present appeal is likewise based on the carton of Ellis wherein the
containers are staggered.
5

Although the Examiner is correct that in Zumbiel, the court "rel[ies]
upon the determination that Palmer failed to show a specific position of the
finger flap along a tear line" in its analysis (Ans. 9), the Examiner overlooks
another subsequent portion of the court's decision which states:

5
We note that the Request includes a proposed rejection asserting that it
would have been obvious to modify the carton of Ellis so that the containers
therein are arranged in a stacked configuration, in further combination with
German '718 which discloses a finger flap opening structure (Request 34-37;
see also Request 17 stating "[t]he Federal Circuit has held that it would be
obvious to stack the cans in Ellis in a non-staggered configuration" (citing
Lingamfelter v. Kappos and MeadWestvacoPackaging Systems, LLC and
Graphic Packaging Int'l. Inc., 2011-1449, 2012 U.S. App. Lexis 16573
(Fed. Cir. 2012))). However, the Examiner declined to order the
reexamination on this alternative basis stating "the combination of Ellis and
German '718 alone does not raise a substantial NEW question of
patentability." (Order 3-4). Thus, this proposed rejection is not before us on
appeal. Moreover, we observe that the court already considered
substantively the same argument, but concluded that "we are not persuaded
by Zumbiel's arguments as to the multiple steps necessary to find claim 2
obvious." Zumbiel, 702 F.3d at 1384-85.

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However, as pointed out by Graphic, there was little incentive
to relocate Ellis's finger flap to a position between cans in order
to provide space for the fingers. This is because the finger flap
in Ellis provides a similar amount of finger space as a finger
flap placed across the top panel and over score line 27, as
pictured.
Zumbiel, 702 F.3d at 1383-84 (referencing Figures 1 and 3 reproduced
therein).

Thus, in addition to the finding that Ellis teaches away from moving
the location of the tear line to be between the first and second containers in
the top row, which would result in the tear line being about 1.5 container
diameter away from the carton end, the court also found that in the staggered
can configuration of Ellis, there is no reason to move the tear line at all
because there is already adequate space at the disclosed position of the tear
line. Therefore, the Patent Owner's argument that "it would not have been
necessary to move tear line 27 at all in order to provide access for a person's
fingers, since Ellis already provides such access" (App. Br. 12; see also App.
Br. 10) is based on the court's determination in Zumbiel that "there was little
incentive to relocate Ellis's finger flap . . .." Zumbiel, 702 F.3d at 1383-84.
The Patent Owner further argues that in view of the court's finding in
Zumbiel, the secondary references relied upon would have to teach, inter
alia, "why such a location of the tear line would be an improvement over the
location disclosed by Ellis." (Reply Br. 3-4). This argument is also well
founded in view of the court's finding that there is little incentive to relocate
Ellis's finger flap because a similar amount of finger space is already
provided (Zumbiel, 702 F.3d at 1383-84). The record fails to indicate how
the secondary references, Dutcher, Pilger, Wonnacott and Cherry, provide
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teachings with respect to positioning of the tear lines, which establish any
reason why a person of ordinary skill would find it obvious to move the tear
line from the position (or range) specifically disclosed in Ellis.
Therefore, in view of the above, we are of the opinion that the
Examiner has not taken into full consideration of the Zumbiel decision,
which is binding, and conclude that the rejection of the present appeal is not
consistent therewith. Correspondingly, we reverse the Examiner's rejection.
The Patent Owner's further arguments based on ordered dispensing (App.
Br. 13; Reply Br. 4), alleged deficiencies of the newly cited references (App.
Br. 14-17), the limitations of dependent claims 42-49 (App. Br. 18-19; Reply
Br. 6-7), and asserted commercial success (App. Br. 19-22), are all moot.

Issue Preclusion/Collateral Estoppel
The Patent Owner also argues that the USPTO is precluded from
reexamining and rejecting the claims of the '639 patent based on the
combination of Ellis with other prior art under issue preclusion/collateral
estoppel because the USPTO was a party in Zumbiel, and the Federal Circuit
held that "Ellis in fact teaches away from locating the finger flap between
the first and second containers." (App. Br. 7-8, quoting Zumbiel, 702 F.3d at
1385). However, this issue is moot in view of our reversal of the Examiner's
rejection on the merits above.

REVERSED

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alw

Patent Owner:
Womble, Carlyle, Sandridge & Rice
P.O. Box 7037
Atlanta, Ga 30357-0037

Third Party Requester:

Wood, Herron & Evans, LLP
2700 Carew Tower
441 Vine Street
Cincinnati, OH 45202