Ex Parte Miller

Board of Patent Appeals and Interferences

Jan 9, 2012

10680364 (B.P.A.I. Jan. 9, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/680,364 10/07/2003 Charles A. Miller RWZ/78U 4643
26875 7590 01/10/2012
WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
EXAMINER
KUMAR, RAKESH
ART UNIT PAPER NUMBER
3651
MAIL DATE DELIVERY MODE
01/10/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte CHARLES A. MILLER
________________

Appeal 2010-001123
Application 10/680,364
Technology Center 3600
________________

Before CHARLES N. GREENHUT, MICHAEL C. ASTORINO and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001123
Application 10/680,364

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-3, 6-29, 32-47, 50-60 and 62-84. Claims 4, 5, 30, 31,
48, 49 and 61 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

The Claimed Subject Matter
The claimed subject matter pertains to a carton having tear lines for
gaining access to the carton’s contents. Independent claim 1 is illustrative of
the invention and is reproduced below:

1. A carton for containing a plurality of articles comprising:
a plurality of walls including a bottom wall spaced from a top
wall, a pair of spaced side walls and a pair of spaced end walls, the
side and end walls extending between the top and bottom walls;
a plurality of flaps extending from at least some of the walls,
the end walls being formed by combinations of the flaps;
a corner of the carton formed by one of the end walls and either
the top wall or the bottom wall;
a dispenser portion for dispensing articles from the carton, the
dispenser portion of the carton being defined by at least one tear line
formed in more than one of the flaps and at least in part from the
corner to define a dispenser opening for exposing an article for
removal from the carton; and
a finger hole for grasping the dispenser portion, the finger hole
being located opposite from the corner and at least in part in the
bottom wall,
wherein the dispenser portion does not include either of the side
walls and the flap extending from the bottom wall is at least one of the
flaps through which the tear line is formed.

References Relied on by the Examiner
Wood US 4,558,816 Dec. 17, 1985
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Application 10/680,364

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Brintazzoli US 5,348,219 Sep. 20, 1994
Sylvie FR 2761342 Oct. 2, 1998

The Rejections on Appeal
1. Claims 1-3, 6-11, 14, 15, 17-29, 32, 33, 35-39, 43-47, 51, 53-59, 63-
67, 70, 71, 73, 74 and 76-84 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Sylvie (Ans. 4).
2. Claims 12, 40, 50, 60 and 72 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sylvie and Wood (Ans. 4).
3. Claims 13 and 41 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sylvie and Brintazzoli (Ans. 4).
4. Claims 16, 34, 42, 52, 62, 68, 69 and 75 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sylvie (Ans. 4).

ISSUE
Does Sylvie anticipate a carton having at least one tear line in multiple
end flaps that define a dispenser portion which, when torn, define a
dispenser opening as set forth in claim 1?
Has the Examiner provided sufficient reasoning for the rejection of
dependent claim 16 as being obvious over Sylvie?

ANALYSIS
Appellant argues claims 1-3, 6-11, 14, 15, 17-29, 32, 33, 35-39, 43-
47, 51, 53-59, 63-67, 70, 71, 73, 74 and 76-84 together (App. Br. 15). We
select claim 1 for review. Appellant also argues dependent claims 12, 40,
50, 60 and 72 together and dependent claims 13 and 41 together (App. Br.
19). We address these separate claim groupings below. Appellant further
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Application 10/680,364

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argues dependent claims 16, 34, 42, 52, 62, 68, 69 and 75 together (App. Br.
20). We select claim 16 for review.
The rejection of claim 1 as anticipated by Sylvie
Independent claim 1 requires a carton whose end walls are formed by
a combination of flaps and a “dispenser portion” that is “defined by at least
one tear line formed in more than one of the flaps and at least in part from
the corner to define a dispenser opening.” The Examiner relies on Sylvie as
anticipating all the limitations of claim 1 stating that “the applicant has not
distinguished how the structure of the Sylvie’s carton is structurally different
as claimed in the applicant’s claimed limitations” (Ans. 4, 6). Appellant
contends that the “disclosure of Sylvie is directed to an aspect that is far
afield from what is recited in the independent claims and whose only
connection with Applicant's invention appears to be that it involves a carton
having a tear line” (App. Br. 15). Appellant further contends that Sylvie
“has nothing to do with a dispenser to facilitate the dispensing of articles
carried by a carton or package” (App. Br. 15).
It has long been settled that claims must be distinguished from the
prior art in terms of structure rather than function (In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997)). The patentability of a claim “depends on the
claimed structure, not on the use or purpose of that structure” (Catalina
Marketing Int’l. Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002). In view of these instructions, Appellant’s contentions that the
function and purpose of Sylvie is different or that Sylvie “has nothing to do
with a dispenser” or that “one of ordinary skill in this art would not view
Sylvie as disclosing a dispenser” is not persuasive (App. Br. 15, 17-18, see
also Reply Br. 3, 4- 6).
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Appellant further contends that Sylvie lacks or does not disclose “a
‘dispenser’, ‘dispenser portion’, or ‘dispenser opening’ as is recited in the
independent claims” (Reply Br. 2, 3-4, 5-6; see also App. Br. 17, 18).
Appellant contends that the Examiner’s finding of these limitations in
Sylvie, “completely ignores the true teachings of Sylvie” and that “Sylvie
fails to disclose any such feature” because “the divisible portions in Sylvie
are configured such that when they are removed from the carton, the carton
falls apart” and is “totally inoperable as a dispenser” (App. Br. 17-18, see
also Reply Br. 4-5).
The United States Patent & Trademark Office is tasked with
interpreting claims as broadly as their terms reasonably allow (In re Zletz,
893 F.2d 319, 321 (Fed. Cir. 1989)). We have also been instructed that
“absent contravening evidence from the specification or prosecution history,
plain and unambiguous claim language controls the construction analysis”
(DSW, Inc. v. Shoe Pavilion, Inc., 537 F.3d 1342, 1347 (Fed. Cir. 2008)).
Of these three terms identified by Appellant, two are defined in claim
1 itself (Claim 1 states: “the dispenser portion of the carton being defined by
at least one tear line formed in more than one of the flaps and at least in part
from the corner to define a dispenser opening” (italics added)). Further,
Appellant’s Specification does not provide an explicit definition for either
“dispenser portion” or “dispenser opening.” Hence the plain and
unambiguous language as set forth in claim 1 controls their construction.
The third term identified by Appellant, i.e., “dispenser” does not appear
alone in claim 1 but the term “dispensing” does appear in an intended use
phrase in claim 1 (“a dispenser portion for dispensing articles from the
carton”).
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Regarding the two terms explicitly defined in claim 1, Appellant does
not show how the limitations related to “a dispenser” define a carton
structurally different from Sylvia’s carton. Instead Appellant addresses the
functional difference between Appellant’s claim and Sylvie’s teachings
(App. Br. 17-18). This is not persuasive. Appellant also contends that the
Examiner’s interpretation of Sylvie “is not a reasonable interpretation” but
Appellant fails to explain such unreasonableness other than in terms of “the
function and purpose” of Sylvie (Reply Br. 2-6).
Regarding the intended use of the claim term “dispensing,” the
Examiner states that “a recitation of the intended use of the claimed
invention must result in a structural difference” (Ans. 6). Appellant has not
cogently refuted the Examiner’s finding that if “the prior art structure is
capable of performing the intended use, then it meets the claim” (Ans. 6).
We are not persuaded by Appellant’s contentions.
Appellant further references American Hoist & Derrick for the
proposition that “[a]nticipation requires the presence in a single prior art
reference disclosure of each and every element of the claimed invention,
arranged as in the claim” (App. Br. 17 citing Lindemann Maschinenfabrik
GmbH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir.
1984)). Appellant argues that “the scored lines in the carton of Sylvie are
for the purpose of easily collapsing the carton back down to a relatively flat
configuration” and not for dispensing articles (App. Br. 17). As stated
supra, a difference in purpose alone is not persuasive. Further, Appellant
has not persuaded us that Sylvie is not arranged as set forth in claim 1. We
further note that a “reference does not fail as an anticipation merely because
it does not contain a description of the subject matter of the appealed claim
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in ipsissimis verbis” (In re May, 574 F.2d 1082, 1090 (CCPA 1978) (citing
In re Schaumann, 572 F.2d 312, 317 (CCPA 1978)). Accordingly, we do
not find fault with the Examiner’s statement that “the applicant has not
distinguished how the structure of Sylvie’s carton is structurally different as
claimed in applicant’s claimed limitations” (Ans. 6).
In view of the above and based on the record presented, we sustain the
Examiner’s rejections of claims 1-3, 6-11, 14, 15, 17-29, 32, 33, 35-39, 43-
47, 51, 53-59, 63-67, 70, 71, 73, 74 and 76-84 as being anticipated by
Sylvie.
The rejection of dependent claims 12, 40, 50, 60 and 72 as obvious over
Sylvie and Wood and the rejection of dependent claims 13 and 41 as obvious
over Sylvie, Wood and Brintazzoli
For each of these claim groups, Appellant contends that each claim is
dependent from one of the allowable independent claims and as such,
Applicant need not address the Examiner’s reliance on Wood or Brintazzoli
because neither “fails to cure the deficiency in the primary reference of
Sylvie” (App. Br. 19). Appellant presents no further arguments and, as we
find no deficiency in the Examiner’s reliance on Sylvie, we sustain the
Examiner’s rejection of claims 12, 13, 40, 41, 50, 60 and 72.
The rejection of dependent claim 16
Dependent claim 16 further requires that “each tear line extends along
a juncture between the top wall and one of the side walls.” Appellant
contends that “the Examiner has provided no rationale or support” for the
assertion that “one of ordinary skill would position the tear line as in the
rejected claims” (App. Br. 20 referencing Final Office Action 6-7). The
Examiner’s stated rationale or support is that making the tear lines extend
along such a juncture is “because the dispenser portion size would be larger
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thus, making removable of article easier (sic.)” (Final Office Action 7).
Appellant has not shown how the Examiner’s rationale is unreasonable nor
is Appellant’s contention that “the Examiner has provided no rationale or
support” persuasive. Appellant presents no further arguments except that
claim 16 depends from an allowable claim and should be allowed for the
reasons previously stated (App. Br. 20). Based on the record presented, we
sustain the Examiner’s rejection of claims 16, 34, 42, 52, 62, 68, 69 and 75.

CONCLUSION
Sylvie does anticipate a carton having at least one tear line in multiple
end flaps that define a dispenser portion which, when torn, define a
dispenser opening as set forth in claim 1.
The Examiner has provided sufficient reasoning for the rejection of
dependent claim 16 as being obvious over Sylvie.

DECISION
The rejection of claims 1-3, 6-29, 32-47, 50-60 and 62-84 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

MP