Ex Parte 6789673 et al

Board of Patent Appeals and Interferences

Jan 11, 2010

95000066 (B.P.A.I. Jan. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

MEADWESTVACO PACKAGING SYSTEMS, LLC
Requester I, Respondent I, Cross-Appellant I
(hereinafter “Requester I”)
and
GRAPHIC PACKAGING INTERNATIONAL, INC.
Requester II, Respondent II, Cross-Appellant II
(hereinafter “Requester II”)

v.

Patent of C. BROWN LINGAMFELTER
Patent Owner, Appellant, Respondent
(hereinafter “Patent Owner”)
____________________

Appeal 2009-002578
Reexamination Controls 95/000,066 and 95/000,0691
Patent US 6,789,673 B22
Technology Center 3900
____________________

Decided: January 12, 2010
____________________

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

1 These inter parte reexamination proceedings were merged by Decision,
Sua Sponte, to Merge Reexamination Proceedings, mailed March 14, 2005.

2 Issued September 14, 2004.
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SONG, Administrative Patent Judge.

STATEMENT OF THE CASE
This appeal is from a merged inter parte reexamination proceeding
involving the patent US 6,789,673 B2 (hereinafter ‘673 patent). The ‘673
patent is presently involved in the following district court proceedings which
have been stayed pending outcome of this merged reexamination proceeding
(App. Br. 1):
1. Lingamfelter v. Coca-Cola Enterprises, Inc., The Coca-Cola
Company, Miller Brewing Company, and Dr. Pepper/Seven Up, Inc., C.A.
No. 04-1261 (D. Del. filed 9/15/2004).
2. Graphic Packaging International, Inc. v. Lingamfelter, C.A.
No. 1:04cb842 (N.D. Ga. filed 3/26/2004).

Claims 1-29 are subject of the present appeal, these claims having
been finally rejected by the Examiner.
Patent Owner appeals under 35 U.S.C. §§ 134 and 315 (2002) from
the Examiner’s Final Rejection of claims 1-29 as discussed infra under the
section heading: I. APPEAL OF THE PATENT OWNER.
Requester I cross-appeals under 35 U.S.C. §§ 134 and 315 from the
Examiner’s refusal to enter certain proposed rejections of various claims as
discussed infra under the section heading: II. CROSS-APPEAL OF
REQUESTER I.
Requester II cross-appeals under 35 U.S.C. §§ 134 and 315 from the
Examiner’s refusal to enter certain proposed rejections of various claims as
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discussed infra under the section heading: IIII. CROSS-APPEAL OF
REQUESTER II.
We have jurisdiction under 35 U.S.C. §§ 134 and 315. An oral
hearing with the representatives of each of the involved parties was held
before the Board of Patent Appeals and Interferences on July 15, 2009.
We AFFIRM-IN-PART the Examiner’s rejections. We also
AFFIRM-IN-PART the Examiner’s refusal to adopt various proposed
rejections of Requester I and Requester II as discussed infra, and enter
NEW GROUNDS OF REJECTION pursuant to our authority under 37
C.F.R. § 41.77(b).

ABBREVIATIONS
While this Decision takes into consideration the entire appeal record,
in view of the number of arguments and documents, we refer to and address
only specific portions of the voluminous record. In this regard, we utilize
the following abbreviations herein when citing to the various documents in
the appeal record:
1. Right of Appeal Notice = RAN
2. Examiner’s Answer = Ans.
3. Appeal Brief of the Patent Owner = ABPO
4. Rebuttal Brief of the Patent Owner in response to Examiner’s Answer
= RBPO to Ex.
5. Respondent Brief of the Patent Owner in response to Cross-
Appellant’s Appeal Brief of Requester I = RBPO to RI
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6. Respondent Brief of the Patent Owner in response to Cross-
Appellant’s Appeal Brief of Requester II = RBPO to RII
7. Inter Partes Reexamination Request of Requester I = RRRI
8. Cross-Appeal Brief of Requester I = CABRI
9. Rebuttal Brief of Requester I in response to Examiner’s Answer =
RBRI to Ex.
10. Respondent Brief of Requester I in response to Appeal Brief of the
Patent Owner = RBRI to PO
11. Inter Partes Reexamination Request of Requester II = RRRII
12. Cross-Appeal Brief of Requestor II = CABRII
13. Respondent Brief of Requester II in response to Appeal Brief of the
Patent Owner = RBRII to PO

THE INVENTION
The ‘673 patent is directed to a beverage container for containing cans
therein and a method of providing access to a container having items therein,
the container having an opening at an upper corner thereof which is defined
by portions of the top, front and side walls.
Figure 1 of the ‘673 patent is reproduced below.
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Figure 1 of the ‘673 patent reproduced above is a perspective view of a
preferred embodiment of a container 10 being formed of side walls S/W, a
top wall T/W, a bottom wall B/W, a front wall F/W and a rear wall R/W,
including a section 12 that is removable. (‘673 patent Spec. Col. 2, ll. 41-60;
Fig. 1).
Claims 1-14, 19-24 and 28 are apparatus claims directed to a
container, claims 1, 6, 11, 19 and 28 being independent claims. Claims 15-
18, 25-27 and 29 are method claims, claims 15 and 25 being independent
claims.
Representative independent claims 1, 15 and 19 read as follows
(ABPO, Claims App’x, emphasis added):
1. A container for holding a multiplicity of cylindrical cans,
each can having a can diameter and a can height, the container
comprising:
twelve cylindrical cans, each can comprising a can
diameter and a can height, each can further comprising a
longitudinal axis;
a rear wall having a rear wall height of about a whole
multiple of the can diameter;
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a front wall having a front wall height, the front wall
height being less than the rear wall height by at least about 1.2
times the can diameter, the front wall being substantially
parallel to the longitudinal axes;
a bottom wall having a bottom wall length of about a
whole multiple of the can diameter;
a top wall having a top wall length less than the bottom
wall length by at least about the can diameter; and
two side walls, each of the side walls having a front edge
running from the front wall to the top wall,
wherein at least part of each edge is oblique with respect
to the front wall and the top wall, the sidewalls separated by
about the can height.

15. A method of providing easy access to items arranged in
a container in a plurality of rows and columns, each item
having an item diameter and an item height, wherein the
arrangement has a top row and a next-to-the-top row, and
wherein each column has a column width of about the item
diameter and each row has a row height of about the item
diameter, comprising:
providing a rectangular paper container comprising six
rectangular walls including two side walls separated by about
the item height, a front wall and a rear wall having a height of
about a whole multiple of the row height, and a top wall and a
bottom wall adapted to rest on a support surface, the bottom
wall having a length of about a whole multiple of the column
width;
scoring a front wall score on the front wall, at least a part
of the front wall score being made at a height less than the rear
wall height but sufficiently high to restrain the next-to-the-top
row of items when the bottom wall is resting on the support
surface and when the front wall is separated at the front wall
score;
scoring a top wall score on the top wall, at least part of
the top wall score being made about an item diameter from the
front wall;
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scoring side wall scores on the side walls, at least a part
of each of the side wall scores being made oblique to the front
wall and the top wall; and
wherein the scores define a section, the removal of which
allows easy access to the items, and wherein each of the items
comprises a longitudinal axis substantially parallel to items, and
wherein each of the items comprises a longitudinal axis
substantially parallel to the front wall.

19. A container comprising:
twelve substantially identical cylindrical twelve-ounce
beverage cans, each can having a height and a diameter;
a rectangular paper carton, adapted to contain the twelve
cylindrical beverage cans in a row and column arrangement,
the row and column arrangement including a top row and a
next-to-the-top row, each of the rows having a respective
bottom level, the rectangular paper carton including a front
wall, a rear wall, a top wall, a bottom wall for resting on a
support surface, and two side walls, the front and rear walls
having a height, the top and bottom walls having a length, the
rectangular paper carton further adapted to enclose the twelve
cylindrical beverage cans such that the height of the front wall
and the height of the rear wall is about equal to a multiplicity of
whole can diameters and the length of the bottom wall and the
length of the top wall is about equal to about a multiplicity of
whole can diameters and wherein the front wall includes a front
wall scored line segment located below the bottom level of the
top row and above the bottom level of the next-to-the-top row
such that removal of a front wall portion above the front wall
scored line segment will define a lip that will retain the next-to-
the-top row of cylindrical cans from falling out of the container
when the bottom wall is on a support surface, and wherein the
top wall includes a top wall scored line segment such that
removal of a top wall portion in front of the top wall scored line
segment results in, in conjunction with the removal of the front
wall portion above the front wall scored line segment, an
opening providing access to the beverage cans.

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PRIOR ART
The prior art of record in the present appeal is:
Palmer 2,718,301 Sep. 20, 1955
Ellis 3,178,242 Apr. 13, 1965
Farquhar 3,265,283 Aug. 9, 1966
Spivey 6,105,854 Aug. 22, 2000
Wonnacott GB 2 186 550 A Aug. 19, 1987
Cherry CA Pat. No. 874828 Jul. 6, 1971
Kornick CA Pat. No. 2,246,020 Feb. 28, 2000
Imazato JP Utility Model 7-9721 Feb. 10, 1995
(citations to translation of record)

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Ellis describes a self-dispensing carton 1 to be inserted into a
home refrigerator, the carton 1 being designed to hold and dispense multiple
cylindrical objects or cans (col. 1, ll. 10-14). The carton 1 includes a bottom
wall 2, a top wall 4, and foldably attached adjoining left side wall 3 and right
side wall 5 (col. 1, ll. 62-70; Figs. 1-3). Figures 1 and 3 of Ellis are
reproduced below.

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Figure 1 of Ellis reproduced above shows a perspective view of the carton
and Figure 3 of Ellis reproduced above shows a side elevational view of the
carton.
2. Ellis describes that the carton includes a removable section R in
its upper front portion that is formed from portions of the top, front and side
walls of the carton, and defined by scores 21, 26, 27, and cuts 25 (col. 2, ll.
22-49; Figs. 1-3). In this regard, Ellis states:
The side front flaps 16 and 18 are provided with cut-out
portions 20 and scores 21 which are coterminous with the lower
edge of the cut-out portions 20 and which are adjacent to the
top edge 22 of the bottom front flap 15 when assembled. . . .
The side walls 3 and 5 have cuts 25 extending rearwardly from
said scores 21 for a distance more than one half diameter and
less than one diameter of one can, preferably about three-
fourths of a diameter, and then upwardly in each side wall 3 and
5 from the cuts 25 to a top score 27 in the top wall 4, thereby
providing the carton 1 with removable section R in its upper
front portion.
(Col. 2, ll. 22-26 and 30-37).
3. Ellis further describes a back stand 32 which is used to prop up
the rear of the dispensing carton and front stops 45 that prevent rolling of the
cans upon removal of section R and subsequent insertion into a home
refrigerator (col. 2, ll. 50-64; col. 3, ll. 26-44; Figs. 1-3).
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4. Ellis also describes that the cylindrical objects C-1 to C-10 are
staggered so that the cans are removed in a predetermined order, C-1, C-2,
C-3, and so forth, so as to allow a “re-order” reminder to be placed on a can
near the middle of the carton (col. 1, ll. 65-67; col. 3, 44-58; Fig. 3).
5. Ellis states that “[t]he length of the carton 1 may be so
dimensioned as to carry any number of cans or cylindrical objects, odd or
even in number.” (Col. 3, l. 74-col. 4, l. 2).
6. Ellis further describes that the carton 1 is formed of double-
faced corrugated paperboard (col. 3, ll. 59-61).
7. Imazato describes a packing box formed from corrugated
cardboard 10 for storing and dispensing cans (¶¶ [0006] and [0008]). Figures
11 and 12 of Imazato are reproduced below.

Figure 11 of Imazato reproduced above shows a perspective view of the
packing box including lid flaps 27, 30, side flap 13 and a ceiling flap 13. (¶¶
[0006] and [0008]). Figure 12 of Imazato reproduced above shows the
packing box with lid flaps 27, 30 and side flap 13 partially cut off.
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8. To dispense the cans in the packing box of Imazato, the ceiling
flap 13 is cut off and opened via the cut off guide 52, and the lid flaps 27, 30
are cut off via the cut off guide 35 in accordance with the need (¶ [0020]).
Hence, Imazato describes a packing box having an opening at its upper front
portion that is formed from portions of the top and front walls of the packing
box. However, Imazato does not specifically describe removal of the cut off
portions of the ceiling flap 13 and the lid flaps 27, 30.
9. Farquhar describes a shipping and dispensing carton 10 for
dispensing cans, the carton 10 including an end wall 14 having a dispensing
flap 22 (Col. 1, ll. 9-15; col. 2, ll. 17-21; Fig. 1). Figure 1 of Farquhar is
reproduced below.

Figure 1 of Farquhar reproduced above shows that the dispensing flap 22 is
positioned at the bottom of the carton 10 (Fig. 1).
10. In the carton 10 of Farquhar, the dispensing flap 22 is defined
by a separation line 24 which extends across the end wall 14 and to the side
panels 12 to define triangular ear portions 26 of the dispensing flap 22 (Col.
2, ll. 17-24; Fig. 1). In this regard, Farquhar states:
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In this connection it will be noted that ear portions 26 of the
flap 22 torn from side panels 12 permit the thumb and
forefinger to be readily placed about the ends of the cans C
whereby the same may be easily grasped and pulled from the
carton with a slight upward motion as indicated by the dashed
line in FIGURE 4. In the absence of ear flaps as at 26, it will
be appreciated that manual grasp of a container would be quite
difficult or inconvenient by virtue of the normally snug packing
of the cans within the carton.
(Col. 2, l. 69-col. 3, l. 6).

11. Cherry describes a container for carrying beverage cans, the container
including side wall forming panels 26, 28, a top forming panel 27 with a
handle strip 41 (Pg. 3, ll. 21-25; pg. 4, ll. 15-18). The bottom of the side
wall forming panel 28 and flap 35 are provided with a weakened line (e.g.,
perforations) that defines a detachable panel section 47 which may be
detached to permit the contents of the container to be removed (Pg. 4, l. 30-
pg. 5, l. 13; Figs. 1 and 6). Figures 1 and 6 of Cherry are reproduced below.

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Figure 1 of Cherry reproduced above is a perspective view of the container.
Figure 6 of Cherry reproduced above is a vertical sectional view showing the
detachable panel section 47 removed, and the handle strip 41 raised.
12. Cherry also describes tearing the top forming panel 27 and the
side forming panel 28 along line 41A to provide an opening at the top of the
container to permit empty cans to be returned to the interior of the container
(Pg. 7, ll. 5-9; Fig. 8). Figure 8 of Cherry is reproduced below.

Figure 8 of Cherry reproduced above is a perspective view of the container
in which the opening at the top of the container has been opened. The
opening at the top of the container is perpendicular to the dispensing
opening at the bottom of the container defined by the detachable panel
section 47.
13. Palmer describes a carton 1 for can goods 2 including a carton
wall 3 with U-shaped cuts 4 thereon which provide a convenient and
comfortable finger grip for carrying the carton (Col. 1, l. 47-58; Fig 4).
Figure 4 of Palmer is reproduced below.
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Figure 4 of Palmer reproduced above shows a perspective view of the carton
1 being carried using the grip formed by the U-shaped cuts 4.
14. Wonnacott describes a blank and packaging carton for cans 31
including access flaps 23, 24 that can be torn back along perforated or score
lines 22a, 22b on the base wall 11 for dispensing of the cans 31 therein (Pg.
2, ll. 15-21 and 46-52; Fig. 4). Figure 4 of Wonnacott is reproduced below.

Figure 4 of Wonnacott reproduced above shows a perspective view of the
packaging carton in which access flap 23 has been torn along score line 22b
to allow dispensing of the cans 31.
15. Wonnacott states “[p]referably the blank is folded around a
double row array of articles, but it is not ruled out that the two rows of
articles can be slipped into a partially erected carton.” (Pg. 1, ll. 35-38).
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16. Spivey describes a carton for enclosing cans or bottles, the
carton being made from a blank having a bottom panel 10, side panels 12,
14, and top flaps 20, 22 (Col. 2, l. 57-col. 3, l. 3; Fig. 1). Figures 1 and 4 of
Spivey are reproduced below.

Figure 1 of Spivey reproduced above is a plan view of a blank from which a
carton may be formed. Figure 4 of Spivey reproduced above is a perspective
end view of the assembled carton with a dispensing flap 76 opened.
17. Spivey also describes that the top flaps 20, 22 are provided with
hand carrying apertures 28, 30, and the dispensing flap 76 is attached to the
exiting end of bottom panel 10 (Col. 3, ll. 18-20 and 52-57; Figs. 1 and 4).
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18. Kornick describes a carton for beverage cans including an
opening structure (Spec. pg. 1, ll. 3-6; pg. 3, ll. 9-10; pg. 4, ll. 15-16; Fig. 1).
Figure 1 of Kornick is reproduced below.

Figure 1 of Kornick reproduced above is a perspective view of a twelve can
carton with the opening structure opened.
19. The Specification of the ‘673 patent under reexamination states
“[t]he twelve pack containers provide a convenient means to carry the
beverage cans but are not handy for dispensing the cans.” (Col. 1, ll. 32-34).
20. The Specification of the ‘673 patent states:
As can be seen in FIGS. 1 and 2 the typical twelve pack
beverage container is a little over 4 diameters long (about 26
cms) and about 3 “diameters” high (about 20 cms) to enclose
therein, in a 3x4 matrix, twelve cans. Furthermore it sometimes
includes a handle 14 thereon, the handle typically being walls
defining a cut out in the top wall for the receipt of a hand
thereinto.
(Col. 2, l. 64-col. 3, l. 3).
21. The Specification of the ‘637 patent states:
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Scored line 18 may be grooves, scratches or notches, or any
other means known in the trade to weaken the paperboard such
that it is easier for the user to remove portion twelve. Indeed,
with proper scoring in ways known in the trade, it is fairly easy
to remove portion twelve without a cutting instrument.
(Col. 3, ll. 41-46).

PRINCIPLES OF LAW
Claim Construction
The words of the claim must be given their plain meaning unless the
plain meaning is inconsistent with the specification. See In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989). We determine the scope of the claims 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 this regard, “claims are not to be read in a
vacuum, and limitations therein are to be interpreted in light of the
specification in giving them their broadest reasonable interpretation.” In re
Okuzawa, 537 F.2d 545, 548 (CCPA 1976); In re Marosi, 710 F.2d 799, 802
(Fed. Cir. 1983). This is the standard for claim interpretation in both
original examination and re-examination. See In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). The challenge is to interpret claims in view of
the specification without unnecessarily importing limitations from the
specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003).
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Moreover, “the Board is required to use a different standard for
construing claims than that used by district courts.” In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d at 1369. “[I]t is error for the Board to ‘appl[y] the
mode of claim interpretation that is used by courts in litigation, when
interpreting the claims of issued patents in connection with determination of
infringement and validity’” Id. (citing In re Zletz, 893 F.2d at 321). “It
would be inconsistent with the role assigned to the PTO in issuing a patent
to require it to interpret claims in the same manner as judges who, post-
issuance, operate under the assumption the patent is valid.” In re Morris,
127 F.3d 1048, 1054 (Fed.Cir.1997).

Anticipation
“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 Cal., 814 F.2d 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.
The properly interpreted claim must then be compared with the prior art.

Obviousness
“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., 550 U.S. 398, 406
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(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).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and reaffirmed principles based on its precedent that “[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” KSR, 550 U.S. at 415-
16. The Court also affirmed that “when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.” Id. at 416 (citing United States v. Adams, 383 U.S. 39,
50-51 (1966)). The Court further explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, §103 likely bars
its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
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Id. at 417. The operative question is “whether the improvement is more than
the predictable use of prior art elements according to their established
functions.” Id.
The Court stated that “[o]ften, it will be necessary for a court to look
to interrelated teachings of multiple patents; the effects of demands known
to the design community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in order
to determine whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.” Id. at 418.
The Court also noted that “[t]o facilitate review, this analysis should
be made explicit.” KSR, 550 U.S. at 418, (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”)). However, “the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. In this regard, the
Court also noted that “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” Id. at 421.

Secondary Considerations
In Graham, the Supreme Court stated that “secondary considerations
as commercial success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding the origin of
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the subject matter sought to be patented. As indicia of obviousness or non-
obviousness, these inquiries may have relevancy.” See Graham, 383 U.S. at
17-18. Objective evidence of secondary considerations must be considered
in making an obviousness decision. See Stratoflex, Inc. v. Aeroquip Corp.,
713 F.2d 1530, 1538-39 (Fed. Cir. 1983). Any initial obviousness
determination is reconsidered anew in view of the proffered evidence of
non-obviousness. See In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976); In
re Eli Lilly & Co., 90 F.2d 943, 945, (Fed. Cir. 1990).
In order for the evidence to be given substantial weight, a “nexus”
must be established between the merits of the claimed invention and the
evidence of secondary considerations. See In re GPAC, Inc., 57 F.3d 1573,
1580 (Fed. Cir. 1995). In addition, the scope of the “[o]bjective evidence of
non-obviousness must be commensurate in scope with the claims which the
evidence is offered to support.” In re Tiffin, 448 F.2d 791, 792 (CCPA
1971). The objective evidence is not commensurate in scope (coextensive)
with the claimed subject matter if the claims are broader in scope than the
scope of the objective evidence. See Joy Techs. Inc. v. Manbeck, 751 F.
Supp. 225, 229-30 (D.D.C. 1990) (and cases cited therein), aff'd, 459 F.2d
226 (Fed. Cir. 1992). If evidence of commercial success is relied upon, the
Appellant must offer proof “that the sales were a direct result of the unique
characteristics of the claimed invention-as opposed to other economic and
commercial factors unrelated to the quality of the patented subject matter.”
In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996).

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DECISION ON APPEAL
As noted, in view of the complexity of the present appeal, we address
the appeal of the Patent Owner, and the cross-appeals of Requesters I and II
under separate section headings. Only those arguments actually made by the
parties have been considered and arguments that the parties did not make are
deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii).

I. APPEAL OF THE PATENT OWNER
The Patent Owner appeals the Examiner’s rejections of all pending
claims 1-29. In addition to various arguments against the Examiner’s
rejections, the Patent Owner also relies on evidence as set forth in the
Evidence Appendix (ABPO, Evidence App’x) which includes Declarations
of Mssrs. Sher Paul Singh and John T. Gourville, with Exhibits attached
thereto, and dictionary definitions of various terms.

A. Examiner’s Rejections
In the present appeal, the Examiner has rejected the pending claims as
follows (Ans. 6-7):
1. Claims 1, 2, 4, 5, 11, 13-16, 18-21, 23, 24, 28 and 29 under 35
U.S.C. §102(b) as anticipated by Ellis.
2. Claims 1, 2, 4-7, 9-11, 13-16, 18-21, 23, 24, 28 and 29 under 35
U.S.C. §103(a) as unpatentable over Ellis.
3. Claims 1, 2, 4-7, 9 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Ellis and Imazato.
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4. Claims 1, 2, 4-7, 9, 10, 15, 16, 18, 28 and 29 under 35 U.S.C.
§ 103(a) as unpatentable over Imazato, Ellis and Farquhar.
5. Claims 1, 2, 5-7, 10, 28, and 29 under 35 U.S.C. § 102(b) as
anticipated by Cherry.
6. Claims 1, 2, 5, 7, 10, 28, and 29 under 35 U.S.C. § 103(a) as
unpatentable over Cherry.
7. Claims 4 and 9 under 35 U.S.C. § 103(a) as unpatentable over
Cherry and Ellis.
8. Claims 3, 8 and 17 under 35 U.S.C. § 103(a) as unpatentable
over Imazato, Ellis, Farquhar, and admission of prior art in the ‘673 patent.
9. Claims 3, 8 and 17 under 35 U.S.C. § 103(a) as unpatentable
over Imazato, Ellis, Farquhar and Palmer.
10. Claims 3, 8, 12, 17 and 22 under 35 U.S.C. § 103(a) as
unpatentable over Ellis and admission of prior art in the ‘673 patent.
11. Claims 3, 8, 12, 17 and 22 under 35 U.S.C. § 103(a) as
unpatentable over Ellis and Palmer.
12. Claims 3 and 8 under 35 U.S.C. § 103(a) as unpatentable over
Ellis, Imazato, and admission of prior art in the ‘673 patent.
13. Claims 3 and 8 under 35 U.S.C. § 103(a) as unpatentable over
Ellis, Imazato and Palmer.
14. Claims 19-24 under 35 U.S.C. § 103(a) as unpatentable over
Cherry, Ellis and Imazato.
15. Claims 19-21, 23 and 24 under 35 U.S.C. § 103(a) as
unpatentable over Imazato and Ellis.
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16. Claim 22 under 35 U.S.C. § 103(a) as unpatentable over
Imazato, Ellis, and an admission of prior art in the ‘673 patent.
17. Claim 22 under 35 U.S.C. § 103(a) as unpatentable over
Imazato and an admission of prior art in the ‘673 patent.
18. Claim 22 under 35 U.S.C. § 103(a) as unpatentable over
Imazato, Ellis and Palmer.
19. Claims 25-27 under 35 U.S.C. § 103(a) as unpatentable over
Ellis and Wonnacott.

B. Issues
The following issues have been raised in the present appeal:
1. Whether the Patent Owner has shown that the Examiner erred
in construing the term “column” as “a formation of things.”
2. Whether the Patent Owner has shown that the Examiner erred
in construing the term “about” as “almost” or “nearly” so that the limitation
reciting a rear wall having a “height of about a whole multiple of the can
diameter” encompasses a wall height of 1.93 can diameters as described in
Ellis.
3. Whether the Patent Owner has shown that the Examiner erred
in concluding that the recitation “comprising … twelve” cans or items is
open ended and is satisfied by more than twelve cans or items.
4. Whether the Patent Owner has shown that the Examiner erred
in finding that Ellis describes an “oblique score.”
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5. Whether the Patent Owner has shown that the Examiner erred
in combining Ellis and Imazato because the manners in which the cartons
are used teach away from the suggested combination.
6. Whether the Patent Owner has established that the Examiner
erred in combining Imazato with Ellis and Farquhar because of lack of
motivation, and because these references teach away from such a
combination.
7. Whether the Patent Owner has established that the Examiner
erred in construing the term “about” so that the limitation reciting a rear wall
having a “height of about a whole multiple of the can diameter”
encompasses a wall height of 6.25 can diameters as described in Cherry.
8. Whether the Patent Owner has shown that the Examiner erred
in concluding that providing a handle cut-out in the top wall of a carton
would have been obvious to one of ordinary skill in the art because the prior
art teaches away from such a feature.
9. Whether the Patent Owner has shown that the Examiner erred
in finding that Imazato discloses a front wall scored line segment “such that
removal of a front wall portion above the front wall scored line segment will
define a lip” as recited in independent claim 19.
10. Whether the Patent Owner has shown that the Examiner erred
in concluding that it would have been obvious to one of ordinary skill in the
art to fold the carton blank of Ellis around the plurality of cans based on the
teaching of Wonnacott.
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11. Whether the Patent Owner has shown that the Examiner erred
in refusing to construe the limitation “stacked rows” to mean “rows and
columns.”
12. Whether the Patent Owner has shown through secondary
considerations, including evidence of commercial success, long-felt need,
and copying, that the Examiner erred in making the obviousness rejections.

C. Claim Construction
In rejecting all of the pending claims 1-29, the Examiner construed the
term “about” recited in independent claims 1, 11, 15, 19, 25 and 28, as well
as the term “column” recited in independent claims 6, 15 and 19 (Ans. 11-
24). The Patent Owner and the Examiner disagree as to the proper
construction of these terms. We further understand the Patent Owner’s
contention that these claim construction issues are of “paramount
importance” and that “each rejection has been infected by the improper
interpretation of one or both of these terms” (ABPO 5) as arguing the claim
construction issues with respect to each and every rejection on appeal. In
the record, they argue the construction of the term “column” first and the
term “about” second, and hence, we address the construction of “column”
first.

1. “Column”
In rejecting the various claims, the Examiner construes the term
“column” in independent claims 6, 15 and 19 which recite “row(s)” and
“column(s)” to mean “a formation of things” based on a definition provided
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in a dictionary (Ans. 16; RAN 20). The Examiner also notes that the
specification does not even use the terms “row” and “column,” much less
define them narrowly to require the recited columns to be vertical (Ans. 15).
Thus, based on the construction of “column(s)” to mean “a formation of
things,” the Examiner finds that Ellis describes slanted or non-vertical
columns thereby satisfying the limitation “column” recited in these claims
(Ans. 15-17). Requester I and Requester II agree with the Examiner’s claim
construction (RBRI to PO 8 and RBRII to PO 5-6).
The Patent Owner disagrees and contends that the Examiner’s
construction of “column” is improper. In particular, the Patent Owner
contends that the intrinsic record and plain and ordinary meaning requires
the recited “column” to be vertical, this feature being missing in the
staggered arrangement of Ellis (ABPO 5-10; RBPO to Ex. 1-4). The Patent
Owner argues that the Examiner’s construction is unreasonable and strained
(ABPO 5-10; RBPO to Ex. 3). In further support of the contention that
“column” recited in the claims must be vertical, the Patent Owner refers to
use of the term “matrix” in the Specification and the combined recitation in
the claims of “rows and columns”, as well as the Declaration of Singh
(ABPO 7).
We agree with the Patent Owner that the Examiner’s construction of
“column” to mean “a formation of things” so as to encompass the staggered
arrangement of cans in Ellis is contrary to the plain meaning and is also
unreasonably broad. We also agree with the Patent Owner that, in the
context of the present case where “rows and columns” are recited together,
one of ordinary skill in the art would understand the plain meaning of
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“column” as requiring a vertical arrangement which is perpendicular to the
rows. Such plain meaning is not inconsistent with the Specification and the
Specification does not indicate a broader meaning. See In re Zletz, 893 F.2d
at 321.
While claims are to be given their broadest construction, such
construction must also be reasonable. In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d at 1364. We find persuasive the Patent Owner’s contention that the
Examiner’s interpretation of column as “a formation of things” is
unreasonable. In this regard, the record indicates that in selecting this
definition of “column”, the Examiner ignored the other definitions of the
term “column” that suggest vertical orientation (such as pillars, printed
columns, etc. (Ans. 16)) which would likely be in the mind of one of
ordinary skill in the art. Hence, the Patent Owner’s contention that the
Examiner is merely “picking and choosing a meaning that suits his logic”
(RBPO to Ex. 3) is well taken. See Liebscher v. Boothroyd, 258 F.2d 948,
951 (CCPA 1958) (“One need not arbitrarily pick and choose from the
various accepted definitions of a word to decide which meaning was
intended as the word is used in a given claim. The subject matter, the
context, etc., will more often than not lead to the correct conclusion.”). In
this regard, as pointed out by the Patent Owner, the broad definition of
“column” adopted by the Examiner is equally applicable to “rows” (RBPO
to Ex. 4), yet these terms are used in the claims to define two different
arrangements or orientation of items.
We also do not agree with the Examiner that such construction
impermissibly imports limitations from the Specification into the claims
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(Ans. 15-16). While we do not dispute that there are such things as
slanted/non-vertical columns (Ans. 15), we consider such terms as “slanted”
and “non-vertical” as modifying the plain and ordinary meaning of columns,
and such a modifier would be used in the case where the column is other
than vertical. See In re Zletz, 893 F.2d at 321; In re Marosi, 710 F.2d at 802.
The evidence filed on behalf of Requester I and Requester II in the form of
Declarations fails to persuade us that, in the art of container cartons, the term
“column” has a meaning that broadly encompasses such slanted/non-vertical
columns as asserted by the Examiner, without the use of such modifying
terms therewith. There is insufficient evidence in the record to establish the
broader scope of the meaning of “column” advocated. (See, e.g., Decl. of
Gomes; Decl. of Bates).
Therefore, in the context of the present reexamination, we construe
the limitation “column” to refer to a vertical arrangement, which is not
satisfied by the slanted and non-vertical arrangement such as that described
in Ellis.

2. “About”
Independent claim 1 recites “a rear wall having a rear wall height of
about a whole multiple of the can diameter”, and all other independent
claims 6, 11, 15, 19, 25 and 28 include similar limitations. The Examiner
has construed the term “about” to mean “almost” or “nearly”, and that a wall
height of 1.93 can diameters as described in Ellis is “about” the whole
multiple of 2.0 can diameters, thereby meeting the recitation in these claims.
(Ans. 22; RAN 15).
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The Patent Owner contends that the Examiner did not construe the
term in the context of the specification and the claim as a whole, and that the
Examiner’s construction is unreasonable and inconsistent with its plain
meaning (ABPO 10-12; RBPO to Ex. 5). The Patent Owner argues that the
claim term “about” in the field of packaging “relates to small ranges,
commonly called tolerances, of acceptable variation that still allow the
package to perform as intended”, namely, to provide a tight packaging
(ABPO 12). The Patent Owner advocates that “about a whole multiple of
the can diameter” means a whole multiple of the can diameter and any
tolerance, although the Patent Owner also states that “a numerical
definition” is inappropriate (ABPO 12-13). Thus, the Patent Owner
contends that 1.93 can diameters, which would require the staggered
arrangement of Ellis instead of a columnar arrangement, does not satisfy the
recitation requiring “about” 2 can diameters (ABPO 12). In essence, the
Patent Owner argues that “about” should be construed to require the
dimensions which would result in a tight packaging of row and column
arrangement of the cans, while precluding the staggered arrangement of cans
as described in Ellis (ABPO 13; RBPO to Ex. 4).
The Patent Owner’s arguments are not persuasive. The Patent Owner
urges an unduly restrictive construction of the term “about” to limit its scope
when there is no reason to do so. The construction of the term “about” using
its plain meaning adopted by the Examiner is not inconsistent with the
Specification. In addition, while “tolerance” would fall within the range of
“about,” the term “about” is broader in its plain meaning and scope. The
Patent Owner has not directed us to a definition in the Specification or to a
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disclaimer which would merit such restrictive construction. See In re Bigio,
381 F.3d 1320, 1325 (Fed Cir. 2004) (“Absent claim language carrying a
narrow meaning, the PTO should only limit the claim based on the
specification or prosecution history when those sources expressly disclaim
the broader definition.”).
We further note that nothing in the limitation “about a whole multiple
of the can diameter” implies, or requires, a column/row arrangement of cans.
The Patent Owner relies on Dr. Singh’s Declaration to support the
contention that “about” as used in the art relates to tolerances and that the
limitation must not be construed to allow loose packages (ABPO 12).
However, other evidence disputes Dr. Singh’s statements. (See, e.g., Decl. of
Bates; Decl. of Gomes). Further, while we do not disagree with the Patent
Owner’s contention that in the art, cartons must not allow loose packages,
there is nothing peculiar to a “column” arrangement that makes it the only
type of arrangement that can yield a tight packaging. In this regard, we note
that in the staggered arrangement of Ellis, the walls of the carton are
dimensioned to prevent loose packaging of the cans therein. (See Fig. 3 of
Ellis, generally). Moreover, the Patent Owner’s reference to Encyclopedia
of Packaging Technology cited in Dr. Singh’s Declaration is misguided
because the Declaration does not state that the referenced encyclopedia
provides a definition of “about” as set forth in the reference, but rather, sets
forth what acceptable tolerances are which presumes that “about” refers only
to tolerances (RBPO to Ex. 5-6; Decl. of Singh ¶ 8).
Hence, we find no reversible error with respect to the Examiner’s
construction of “about” to mean “almost” or “nearly” and adopt this
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construction in the present appeal. We further agree with the Examiner
(Ans. 21 and 22) that construing the limitation “about” so as to require a
columnar arrangement is tantamount to improperly reading the limitation of
the preferred embodiment of the Specification into these claims. See E-Pass
Techs., Inc. v. 3Com Corp., 343 F.3d at 1369.
The Patent Owner further argues that in the context of inter partes
reexaminations, the statutory presumption of validity should apply with
respect to old art so that the term “about” should be construed so as to
preserve validity of the claims (ABPO 14-15; RBPO to Ex. 7). However,
the Patent Owner does not direct us to any statutory authority or to case law
in support of this position. In this regard, the position advocated by the
Patent Owner appears to be contrary to established law that the broadest
reasonable interpretation consistent with the Specification is to be applied in
reexamination proceedings before the U.S. Patent and Trademark Office. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364; In re Yamamoto, 740 F.2d
at 1571. While the Patent Owner is correct that this proceeding is inter
partes, it is nonetheless a reexamination proceeding before the U.S. Patent
and Trademark Office, and is a proceeding in which the Patent Owner can
amend the claims. See In re Yamamoto, 740 F.2d at 1571. Hence, such
argument for narrower construction based on presumption of validity is not
persuasive.
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D. Analysis
1. Rejection of claims 1, 2, 4, 5, 11, 13-16, 18-21, 23, 24,
28 and 29 as anticipated by Ellis (Examiner’s Rejection 1)
a. “Column” and “About”
The Examiner rejected these claims contending that Ellis describes
each and every limitation of these claims including the recited wall height of
about a whole multiple of the can diameter, and, with respect to claims 15,
16, 18, 19-21, 23 and 24, the recited columns (RAN 15; Ans. 25-26; see
generally FF 1). The Patent Owner contends that the claims have been
construed improperly (ABPO 5-15) and that because Ellis does not describe
the recited column or the wall height, the Examiner’s rejection should be
reversed (ABPO 16-17).
In view of the above construction of the limitation “column”
discussed supra, we agree with the Patent Owner that the Examiner erred in
finding that Ellis describes the recited “column” (See generally FF 1).
Hence the Patent Owner has shown that the Examiner erred in rejecting
independent claims 15 and 19, which recite a column or columns as claim
elements, as well as dependent claims 16, 18, 20, 21, 23 and 24 that depend
from independent claims 15 and 19.
However, we find no reversible error in the Examiner’s construction
of the term “about” to mean “almost or nearly” as also discussed supra. As
such, we find no reversible error in the Examiner’s finding that a wall height
of 1.93 can diameters as described in Ellis is “about” a whole multiple (2.0)
of can diameters as recited in these claims. (Ans. 22 and 25-26; RAN 15).
In our view, 1.93 can diameters is “almost or nearly” two can diameters, and
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the difference of 0.07 can diameters (about 0.18 inches) is within the range
claimed by the recited “about a whole multiple of the can diameter”. Thus,
the Patent Owner has not established Examiner error based on the
construction of “about”, with respect to the anticipation rejection of
independent claim 1 which recites “a rear wall having a rear wall height of
about a whole multiple of the can diameter”, and other independent claims
11 and 28 that include similar limitations, as well as dependent claims
depending therefrom.

b. Twelve Cans
The Patent Owner further contends that the Examiner’s anticipation
rejection of independent claims 1 and 19, as well as dependent claim 29,
should be reversed because Ellis fails to describe “twelve” cans or a bottom
wall length “about a whole multiple of the can diameter” as recited in these
claims (ABPO 17-20). The basis of this argument is that the arrangement of
cans in Ellis, which is even numbered, requires a length that is greater than a
whole multiple of can diameters by ½ of a can diameter (ABPO 17-20). In
this regard, the Patent Owner notes that the Examiner conceded Ellis does
not disclose the limitation of claim 6 reciting “wherein the multiplicity of
substantially identical items comprises twelve items” (ABPO 17).
While conceding that these claims recite twelve cans, the Examiner
contends that claims 1, 19 and 29 are open-ended by use of the transitional
term “comprising” (Ans. 27) so that “a carton holding an odd number of
cans that is more than twelve as taught by Ellis, such as with thirteen cans,
will include twelve cans as part of that number, and will have a bottom wall
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which is equal to about a whole multiple of the diameters of those cans.”
(Ans. 27, parentheticals omitted; FF 5). The Examiner also distinguishes
claim 6 which is directed to a “container holding” twelve cans from claims
1, 19 and 29, which “do not claim the cans within the container” (Ans. 27).
While the Patent Owner and the Examiner disagree as to whether the
recited can diameter must be of a can among those in the recited twelve cans
(ABPO 19; Ans. 28), in our view, resolution of that dispute is not required.
The issue is whether the Patent Owner has shown that the Examiner erred in
the rejection as set forth, by establishing that the recited “comprising . . .
twelve” cans or items cannot be satisfied by a disclosure of more than twelve
cans or items.
Turning to this dispositive issue, representative claim 1 recites a
container “comprising: twelve cylindrical cans . . ..” It is well established
that the transitional term “comprises” is open-ended and does not exclude
additional, unrecited elements. See SanDisk Corp. v. Memorex Prods., Inc.,
415 F.3d 1278, 1284 (Fed. Cir. 2005); AFG Indus., Inc. v. Cardinal IG Co.,
Inc., 239 F.3d 1239, 1244-45 (Fed. Cir. 2001). As the Examiner noted, Ellis
describes that a different number of cans may be held in the carton,
including an odd number of cans (FF 5). Thus, in the instance where the
carton is implemented for holding thirteen cans in two rows, for example,
the bottom wall length would have a length “of about a whole multiple of
the can diameter” (and have a wall height of 1.93 cans, which as discussed
supra, is “about” 2 can diameters). As such, we find no error in the
Examiner’s construction that claims 1, 19 and 29 are open-ended and the
limitation reciting twelve cans can be satisfied by more than twelve cans.
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The Patent Owner relies on Innovad Inc. v. Microsoft Corp. to
contend that “neither eleven cans nor thirteen cans would infringe” these
claims (ABPO 18). See Innovad, 260 F.3d 1326, 1333 (Fed. Cir. 2001)
(finding that "the term 'single,' ...precludes the use of multiple switches to
perform [a specifically recited function]" although the preamble recited the
transitional phrase "comprising"). Of course, we agree with the Patent
Owner that eleven cans would not literally infringe. However, the Patent
Owner’s reliance on Innovad is misplaced.
In Innovad, the claim at issue recited a telephone dialer system
comprising “a single, bi-state switch operable from the exterior of said case
for activating said signal means to produce said sequence of dual tone
modulated frequency signals during said dialing mode corresponding to said
digits in said programmable memory means[;]”. Id. The Federal Circuit
stated:
The term ‘single, bi-state switch,’ as well as the
specification describing that term, do not limit the
dialer unit to only one bi-state switch. The claim
language does not preclude other switches on the
exterior of a dialer unit, such as another switch to
choose a different preprogrammed telephone
number. The term ‘single,’ however, precludes the
use of multiple switches to perform the activating
function for one phone number. Only a single
switch activates the dialing function for a
preprogrammed number.”
Id. at 1333 (emphasis added).
In this regard, the court in Innovad further stated that “[i]ndeed, by
using the transition term ‘comprising’ at the outset of the claim, the claim
drafter signaled that an accused device could have additional elements-such
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as switches-beyond those expressly recited and still literally fall within the
claim terms.” Id.
Hence, in Innovad, the court did not find that the recitation “single, bi-
state switch” precluded additional bi-state switches, but found that the
“single” limitation which was directly tied to the specifically recited
function of the bi-state switch (i.e., to activate a signal means to produce a
given preprogrammed telephone number) precluded use of multiple switches
for the same function of producing the same preprogrammed number. Id.
The claims at issue do not present a situation analogous to Innovad.
Aside from requiring twelve cylindrical cans that have certain physical
characteristics such as diameter, height and axis, the claims at issue do not
recite any structural or functional limitations tied to the twelve cylindrical
cans. Instead, the claims rely on the “can diameter” to structurally define the
wall height and wall length of the carton. In our view, the Patent Owner’s
reliance on Innovad is misplaced because the recited numeral twelve, that is,
the number of cans which is the limitation at issue, is not directly tied,
structurally or functionally, to the recited dimensions of the container/carton.
Instead, the claims tie the dimension of the container/carton merely to the
physical dimension of a can structure, that is, a single can or item. As such,
Innovad is distinguishable and we do not construe “comprising . . . twelve”
cans or items as being closed-ended.
The Patent Owner further relies (RBPO to Ex. 9) on Dippin’ Dots,
Inc. v. Mosey which stated that “‘comprising’ is not a weasel word with
which to abrogate claim limitations[.]”, and that “[t]he presumption raised
by the term ‘comprising’ does not reach into each of the six steps to render
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every word or phrase therein open-ended - especially where, as here, the
patentee has narrowly defined the claim term it now seeks to have
broadened.” Dippin’ Dots, 476, F.3d 1337, 1343 (Fed. Cir. 2007) (citations
omitted). In Dippin’ Dots, the claims at issue were directed to a method
“comprising” various steps including “freezing said dripping alimentary
composition into beads . . .” Id. at 1340. In Dippin’ Dots, the Patentee
defined the limitation “beads” as having a smooth, spherical appearance, and
previously argued for claim construction that “a ‘bead’ was ‘a small round
ball or round drop’”. Id. at 1343. However, in an infringement action, the
Patentee later argued that “comprising” allows for irregularly shaped
particles in seeking to establish infringement by a competing method in
which the corresponding step of freezing the dripping composition resulted
in production of some irregularly shaped particles. Id.
We understand the Federal Circuit in Dippin’ Dots as holding that
while “comprises” is presumptively open-ended, this presumption does not
extend into the claims so as to “abrogate” or nullify the limitations recited
therein. Such would have been the effect in Dippin’ Dots since the claimed
step requires, and results in, “beads” as defined and advocated by the
Patentee as being smooth and spherical, not irregularly shaped particles.
Otherwise, the limitation of Dippin’ Dots requiring “beads” would be
essentially meaningless, allowing the Patentee to argue a narrow
construction in one instance, and arguing a broad construction of the claim
that nullifies the narrow limitation based on the use of “comprising”.
The current appeal does not present a circumstance analogous to
Dippin’ Dots in which the scope of the limitation was defined and advocated
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in prior proceedings. Moreover, the broader construction applied by the
Examiner to encompass more than twelve cans cannot be said to “abrogate”
the twelve can limitation. In particular, thirteen cans is still inclusive of the
twelve cans recited by the plain language of the claims, especially
considering that the recited numeral in “twelve cans” is not tied to any
structural or functional limitations within the claims. Thus, the limiting
effect of the recited “twelve” in the claims at issue is not abrogated because
the claims clearly require at least twelve cans. As noted, eleven cans do not
literally meet the recitation. However, this does not mean that there cannot
be more than twelve cans.
Hence, in view of the above, in applying the broadest reasonable
construction to claim terms, we do not construe “comprising . . . twelve”
cans or items recited in claims 1, 19 and 29 as closed-ended, or to preclude
provision of additional cans beyond the recited twelve. See Gillette Co. v.
Energizer Holdings, Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005) (“The word
‘comprising’ transitioning from the preamble to the body signals that the
entire claim is presumptively open-ended.”). If a closed-ended construction
of the numerical limitation was desired, the Patent Owner should have
amended the claim to make this clearer, for example, by using the
presumptively closed term “consisting of” or other limiting language,
instead of using the presumptively open ended term “comprising”.
Therefore, with respect to independent claims 1, 19 and 29, and any
claims depending therefrom, the Patent Owner has not shown that the
Examiner erred in construing “comprising . . . twelve” as open-ended which
allows for additional cans beyond the recited twelve cans.
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c. Oblique Score
With respect to claims 11 and 15, the Patent Owner further argues that
Ellis does not describe oblique sidewall score lines recited therein (ABPO
20). The Patent Owner argues that scores 21, 26 and 27 of Ellis are normal
to the top and front walls instead of being oblique (ABPO 20). The Patent
Owner also argues that, in Ellis, the only oblique lines are cuts 25, which are
completely cut and are different from scores which are "weakened areas of
the package, made for example by perforating, stamping, or compressing."
(ABPO 20 citing Decl. of Mr. Singh ¶ 15).
The Examiner’s position is that the cuts 25 of Ellis satisfy the claim
recitation requiring oblique score lines (Ans. 29). In support, the Examiner
refers to a dictionary definition stating that a score may be made by incision
and may includes notches which are defined as V-shaped cuts (Ans. 29).
The Examiner further observes that the specification of ‘673 patent states
that score lines may include notches (Ans. 29).
We first observe that the definitions of “score” proffered by the Patent
Owner and the Examiner are not necessarily inconsistent with one another.
While the Examiner’s contention that score lines are made of incisions/cuts
is well taken, we do not take the Examiner’s view that a score line can be
made of a single, continuous cut which appears to be described in Ellis at
least with respect to the oblique portion of cut 25 (FF 1-2). Although cuts
can form a part of a score so as to weaken the scored portion of the carton,
to construe a single cut as an entire score is unreasonable since such a cut
entirely separates the portion of the carton, rather than weakens it.
Moreover, such construction is inconsistent with Ellis itself which
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recognizes a distinction between scores and cuts in its identification of
features in the described carton (FF 2). Thus, we conclude that the Patent
Owner has shown that the Examiner erred in rejecting claims 11 and 15, and
claims depending therefrom, as anticipated by Ellis.
In view of the above, the Patent Owner has not shown that the
Examiner erred in rejecting claims 1, 2, 4, 5, 28 and 29 as anticipated by
Ellis. However, for the reasons set forth above, the Patent Owner has shown
that the Examiner erred in rejecting claims 11, 13-16, 18-21, 23 and 24 as
anticipated by Ellis.

2. Rejection of claims 1, 2, 4-7, 9-11, 13-16, 18-21, 23, 24,
28 and 29 as unpatentable over Ellis (Examiner’s Rejection 2)
The Examiner rejected these claims contending that they are obvious
over Ellis by itself (Ans. 30-35). The Patent Owner argues the Examiner’s
obviousness rejection of independent claims 1, 6, 11, 15, 19 and 28 (ABPO
20-21).
In particular, with respect to independent claims 1, 6 and 19, the
Patent Owner contends that these claims recite twelve cans or items, in
combination with a wall length equal to a whole number of item diameters
(ABPO 20). As such, the Patent Owner contends that there is no suggestion
in Ellis to modify the described carton to provide an even number of cans
together with the wall length of the container being about a whole multiple
of can diameters, since such a modification would require changing the
staggered arrangement thereby destroying the ability to dispense cans in a
predetermined order (ABPO 20).
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However, this argument is not persuasive because these claims are
open-ended and do not preclude additional cans or items such as thirteen
cans as discussed supra. Hence, we agree with the Examiner that the claim
element requiring that the length of the bottom wall to be a whole multiple
of the can diameter does not confer patentability in view of Ellis’s teaching
that the described carton may be dimensioned to carry any number of cans,
odd or even. (FF 5).
The Patent Owner also argues that claims 1, 6, 11, 15, 19 and 28 recite
limitations directed to row and column arrangement. However, we note that
only claims 6, 15 and 19 recite a column arrangement. To the extent that the
Patent Owner is relying on the construction of limitation “about a whole
multiple” to require a column arrangement, we disagree for the reasons
already discussed supra.
With respect to claims 6, 15 and 19 that explicitly recite a column
arrangement, the Examiner states that “the staggered can arrangement of
Ellis is considered to include slanted columns or columns that are at a non-
perpendicular orientation relative to the rows.” (Ans. 31). Hence, the
Examiner’s obviousness rejection is solely based on an overly broad and
unreasonable construction of the limitation “column” as discussed supra.
Thus, the Examiner’s rejection of claims 6, 15 and 19, as well as dependent
claims 7, 9, 10, 16, 18, 20, 21, 23 and 24 predicated on this unreasonable
construction of “column” is not sustained.
The Patent Owner argues that claims 1, 6, 11 and 15 are patentable
over Ellis because the ordered dispensing of cans would be destroyed if the
top wall opening which performs a restraining function is enlarged (ABPO
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21). However, this argument is not persuasive. We fail see how the ordered
dispensing of Ellis which is largely attained by action of gravity in view of
the staggered arrangement would be impacted at all by an increase in the
size of the opening on the top wall. The portion of Ellis cited by the Patent
Owner does not support the Patent Owner’s contention as it merely states
that can C-1 is to be removed first and removing can C-2 first is difficult and
causes jamming of the remaining cans.
The Patent Owner further argues the patentability of claim 6 relying
on prior arguments submitted with respect to construction of the term
“about,” and the requirement of “columns” (ABPO 21). As discussed supra,
while the Patent Owner’s argument based on construction of “about” is not
persuasive, the Examiner’s rejection is further premised on the unreasonable
construction of “column” and hence, is not sustained. Thus, we need not
reach the arguments presented in support of patentability of claim 6 based on
establishment of commercial success (ABPO 21-22; Ans. 34-35). Rather,
the broader arguments for non-obviousness based on secondary
considerations presented by the Patent Owner are addressed separately infra.
Therefore, in view of the above, the Patent Owner has not shown that
the Examiner erred in rejecting claims 1, 2, 4, 5, 11, 13, 14, 28 and 29 as
unpatentable over Ellis. However, the Patent Owner has shown that the
Examiner erred in rejecting claims 6, 7, 9, 10, 15, 16, 18-21, 23 and 24 as
unpatentable over Ellis.

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3. Rejection of claims 1, 2, 4-7, 9 and 10 as unpatentable
over Ellis and Imazato (Examiner’s Rejection 3)
The Examiner alternatively rejects these claims as obvious based on
the combination of Ellis and Imazato, further relying on Imazato for
describing selective sizing of the dispensing opening to address the
limitation directed to the difference in lengths of the top and bottom walls
(Ans. 35-36; RAN 40; FF 8).
The Patent Owner contends that because the objective of the carton in
Imazato, which is to guide the cans during dispensing for loading vending
machines, differs from the ordered dispensing in Ellis, they teach away from
their combination (ABPO 22-23). The Patent Owner also contends that the
two-part, peel down/peel back opening of Imazato is not suitable for use in a
home refrigerator, where the carton of Ellis is to be used, and thus, teaches
away from combination with Ellis (ABPO 23).
The Patent Owner’s arguments are not persuasive. The Examiner’s
contention that there is little difference between the manual removal of the
first can in Ellis and Imazato (Ans. 36) is well taken. Furthermore, we note
that mere description of an implementation in the prior art that differs from
the Appellants’ claimed invention, without more, does not show that the
prior art “teaches away” from the invention claimed. In re Fulton, 391 F.3.d
1195, 1201 (Fed. Cir. 2004) (“the prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed”). Finally, we observe that Ellis
describes removing the removable section R prior to placement in the
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refrigerator (FF 3). The Examiner merely relies on Imazato for teaching that
sizing of the opening is known. As such, the Patent Owner’s argument with
respect to unsuitability of Imazato’s carton for use in a refrigerator is
misplaced.
Nonetheless, we observe that the Examiner does not rely on Imazato
for any other teachings, such as with respect to the row and column
arrangement of the cans in the carton. Rather, the Examiner’s rejection is
based on Ellis disclosing a column arrangement which is predicated on the
unreasonable construction of “column” discussed supra. Thus, while the
Patent Owner has shown that the Examiner erred in rejecting claims 6, 7, 9
and 10 based on the unreasonable construction of “column” which is recited
in these claims, the Patent Owner has not shown that the Examiner erred in
rejecting claims 1, 2, 4 and 5 as unpatentable over Ellis and Imazato, these
claims not reciting a “column”.

4. Rejection of claims 1, 2, 4-7, 9, 10, 15, 16, 18, 28 and 29
as unpatentable over Imazato, Ellis and Farquhar (Examiner’s
Rejection 4)
The Examiner rejected these claims contending that Imazato describes
all of the limitations thereof except for side wall front edges that extend
between the front and top walls, and are at least partly oblique. (RAN 43;
see generally FF 7-8). The Examiner relies on Ellis and Farquhar to cure
this deficiency, Ellis describing the side wall front edges having an oblique
part where the removable part exposes the ends of the cans, and Farquhar
also describing the desirability of removing side wall portions from around
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the dispensing opening to facilitate removal of cans in the carton (RAN 43;
Ans. 39; FF 1, 2, 9, 10). Hence, the Examiner contends that “it would have
been obvious from the suggestions of Ellis and Farquhar to have made
portions of the side walls 12, 14 of Imazato with scores around the top front
corner opening of the Figure 12 container, for the purpose of removing the
front portions of the side walls from the remainder of the side walls,
whereby end portions of the cans in the carton will then be exposed,
permitting the cans to be grasped for removal from the carton.” (RAN 43;
Ans. 39).
The Patent Owner initially contends that claims 15, 16 and 18 should
be held unobvious for the same reason the Examiner concluded non-
obviousness with respect to claims 11, 13 and 14 based on the same
combination of references. (ABPO 23). In this regard, the Patent Owner
contends that claims 15, 16 and 18 require a score line defining a removable
section which corresponds to the sidewall score recited in claims 11, 13 and
14 (ABPO 23). However, this initial argument is not persuasive because as
discussed infra in the section “Cross-Appeal of Requester I”, we consider
the Examiner’s refusal to reject claims 11, 13 and 14 as unpatentable over
Imazato, Ellis and Farquhar a reversible error.
The Patent Owner also contends that there is no reason or motivation
for combining the references in the manner suggested, and that the
references teach away from such a combination (ABPO 23). In particular,
the Patent Owner contends that the carton of Imazato avoids sidewall
openings in order to ensure strength and stability of the carton, and to act as
a guide for dispensing of its cans into a vending machine which would be
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impaired by providing sidewall openings (ABPO 23 citing Decl. of Singh ¶¶
26-27). The Patent Owner also contends that given Imazato’s graduated,
staged openings, there is no reason why one would modify it with a fixed
opening such as shown in Ellis or Farquhar, and that the mode of operation
would be changed (ABPO 23-24). The Patent Owner further contends that
it is desirable to have side access in the carton of Farquhar because it is a
bottom-dispensing carton in which the opening is narrower to prevent cans
from falling out of the carton whereas in cartons with top openings, the user
reaches into the carton to remove each can (ABPO 24; RBPO to Ex. 11).
We are not persuaded by the Patent Owner’s arguments. As the
Examiner observed (Ans. 39), while paragraph [0016] of Imazato relied
upon by the Patent Owner teaches that “oblique cut-ins” will not cause loss
of strength to the carton, it does not teach that no such cut-ins are provided
on the sidewalls to “ensure” the strength of the carton as asserted by the
Patent Owner. While we do not contend that cuts or scoring on the walls of
the container would not impact the strength of the carton, Imazato does not
lead one of ordinary skill in the art away from providing such a feature on
the sidewalls or establish that such features on the sidewalls would weaken
the structure sufficiently so that it would no longer be capable of functioning
as a carton to contain cans therein, such that one of ordinary skill in the art
would be dissuaded from implementing it. Indeed, there is no persuasive
evidence to establish that such openings would weaken the structure
sufficiently so as to dissuade one of ordinary skill in the art from
implementing it.
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The Patent Owner relies on the Declaration of Singh in support of the
argument that such sidewall openings would “impair the purpose of
providing a stable package” due to reduction in strength (ABPO 24; Decl. of
Singh at ¶¶ 26-27). However, the statement is conclusory and not further
substantiated by objective evidence. The Patent Owner is seeking to
establish a lack of motivation based on speculation as to criticality of the
strength of the sidewalls of Imazato without persuasive objective evidence.
In fact, the objective evidence of record is to the contrary; both Ellis and
Farquhar provide perforations or cuts in the sidewalls in cartons for cans (FF
1, 2, 9, 10). The Patent Owner also relies on the Declaration of Singh to
contend that providing sidewall openings on the carton of Imazato would
impair the guiding of the cans (ABPO 24; Decl. of Singh at ¶ 27). However,
Imazato does not appear to describe this guiding function, and importantly,
the Patent Owner again does not present objective evidence to substantiate
the conclusory statements.
The Patent Owner’s arguments that because Farquhar describes a
bottom-dispensing carton, it would not be combined with Imazato which has
a top opening (ABPO 24), and such a combination would change the manner
in which Imazato would be used, are also not persuasive because they do not
take into account what the collective teachings of the prior art would have
suggested to one of ordinary skill in the art. See In re Keller, 642 F.2d 413,
425 (CCPA 1981). “Under the correct analysis, any need or problem known
in the field of endeavor at the time of invention and addressed by the patent
can provide a reason for combining the elements in the manner claimed.”
KSR, 550 U.S. 398, 420.
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As stated by the Examiner, “the access which permits manual removal
of the first metal can (see para. [0014]) would be improved by following the
teachings of Farquhar with respect to including providing sidewall openings.
This is because the first can would be able to be grasped between the thumb
and finger of the hand to assist in pulling the can from the carton.” (Ans.
39). Thus, the Examiner is merely relying on Farquhar for its teaching that
providing sidewall openings facilitates removal of the cans (FF 10), and the
fact that the opening is provided on the bottom rather than the top would not
dissuade one of ordinary skill from enhancing accessibility to the cans of
Imazato. The Examiner’s articulated reason for making such a combination,
that is, to improve access so that the can may be grasped between the thumb
and finger, is sufficient to support the conclusion of obviousness (Ans. 39).
In this regard, we note that both Imazato and Ellis provide the dispensing
opening on the top corner of the carton, and yet, Ellis provides a dispensing
opening with sidewall opening wherein the ends of the cans are exposed (FF
1, 2 and 7; RAN 43).
Therefore, in view of the above, the Patent Owner has not shown that
the Examiner erred in rejecting claims 1, 2, 4-7, 9, 10, 15, 16, 18, 28 and 29
as unpatentable over Imazato, Ellis and Farquhar.

5. Rejection of claims 1, 2, 5-7, 10, 28, and 29 as
anticipated by Cherry (Examiner’s Rejection 5)
The Examiner rejected these claims contending that Cherry describes
each and every limitation of these claims, including the limitation “about a
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whole multiple of the can diameter” recited in independent claims 1, 6 and
28 (RAN 55).
The Patent Owner argues that in Cherry, the top wall is described as
permitting the used cans to be returned to the carton, and is not a can-
dispensing opening (ABPO 24; FF 11, 12). In addition, the Patent Owner
argues that the carton of Cherry has an extra space (or “handle space”) of
approximately 1/4th of a can diameter which far exceeds the range of
acceptable tolerance for packaging so that it does not satisfy the limitation
requiring a rear wall height of “about a whole multiple of the can diameter”
as recited in independent claims 1, 6 and 28 (ABPO 24-25; FF 11). In this
regard, the Patent Owner further contends that the Examiner’s treatment of
the term “about” with respect to Cherry is inconsistent with Ellis and is
arbitrary (ABPO 25). The Patent Owner also argues that the Examiner’s
rejection improperly reads the top panel 27 or the handle 41 of Cherry as
corresponding to the top wall (ABPO 25).
As discussed supra, we find no error in the Examiner’s construction
of the term “about” to mean “almost or nearly” so that a wall height of 1.93
can diameters as described in Ellis is “about” the whole multiple of 2.0 can
diameters as recited in these claims. In the present rejection based on
Cherry, the Examiner does not contest the Patent Owner’s assertion that
Cherry has an extra space (or “handle space”) of approximately 1/4th of a can
diameter. However, the Examiner finds that the wall height disclosed in
Cherry of approximately 6.25 can diameters is “about” 6 can diameters. We
disagree with the Examiner.
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The basis for the Examiner’s rejection is that 6.25 can diameters is 6
can diameters when rounded to a whole can diameter (Ans. 42 and 43). The
Examiner also contends that “[t]he term ‘about’ has not been successfully
tied by [the] Patent Owner to the concept of acceptable tolerance.” (Ans.
42). While we agree with the conclusion that “about” is not tied to
tolerance, this is not dispositive. To agree with the Examiner, we would
have to agree that a deviation in size of approximately 25% of the can
diameter would be understood by one of ordinary skill in the art to be
encompassed by the ‘673 patent’s use of the term “about.” As discussed
supra, there is no specific definition of this term in the ‘673 patent and we
agree with the Examiner’s construction of “about” to mean “almost or
nearly.” That said, we do not agree that such a large overage of 25% of a
can diameter can be considered to be “almost or nearly” a whole can
diameter by rounding down, and thus the Examiner’s finding is inconsistent
with the construction of the term “about” adopted.
We do not view this conclusion as being inconsistent with our
construction of “about,” and application thereof, to the anticipation rejection
based on Ellis discussed supra. There is a substantial deviation between the
0.07 can diameter difference described in Ellis, and the 0.25 can diameter
difference presented in Cherry. The term “about” is a term of degree and
there is nothing inconsistent in concluding that 1.93 can diameters, with a
0.07 can diameter difference is “about” two whole can diameters, and that
6.25 can diameters, with a 0.25 can diameter difference, is not “about” six
whole can diameters.
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The other arguments set forth by the Patent Owner, at least with
respect to this anticipation rejection, are moot. Therefore, the Patent Owner
has shown that the Examiner erred in rejecting claims 1, 2, 5-7, 10, 28, and
29 as anticipated by Cherry.

6. Rejection of claims 1, 2, 5, 7, 10, 28 and 29 as
unpatentable over Cherry (Examiner’s Rejection 6)
The Examiner rejected these claims as obvious over Figure 4 of
Cherry stating that, to any extent Cherry does not specifically teach “the
front wall height being less than the rear wall height by at least about 1.2
times the can diameter” as recited in independent claim 1, or similar
limitations of independent claims 5 and 28, it would have been obvious to
provide such a difference between the front wall height and the rear wall
height (RAN 59).
The Patent Owner relies on the above-discussed argument that the rear
wall of the carton in Cherry is higher than a whole multiple of the diameter
of the can to allow for a handle space (ABPO 26; FF 11). The Patent Owner
also contends that the handle of Cherry is not a top wall and “the handle
cannot serve as part of the top wall to meet the front edge limitation, and
then not be part of the top wall to meet the top wall length limitation.”
(ABPO 26).
Indeed, further to our discussion supra regarding the Examiner’s
anticipation rejection based on Cherry, we observe that the Examiner’s
rejection is premised on the erroneous finding that Cherry describes a rear
wall height of “about” a whole multiple of the can diameter. The Examiner
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also has not set forth any rational reason for dimensioning the rear wall of
the carton of Cherry to be “about” a whole multiple of the can diameter.
Because we disagree with the Examiner that Cherry describes this limitation,
and the Examiner’s obviousness rejection does not address this deficiency,
we conclude that the Patent Owner has shown that the Examiner erred in
rejecting claims 1, 2, 5, 7, 10, 28 and 29 as unpatentable over Cherry.

7. Rejection of claims 4 and 9 as unpatentable over Cherry
and Ellis (Examiner’s Rejection 7)
The Patent Owner relies on the dependencies on claims 1 and 6
respectively for patentability of claims 4 and 9 (ABPO 27). The Examiner
rejects claims 4 and 9 relying on Ellis merely for teaching a carton with
walls comprising paper (RAN 62-63). However, the Examiner has not set
forth any rational reason for dimensioning the rear wall of the carton of
Cherry to be “about” a whole multiple of the diameter of the can. Hence,
because we disagree with the Examiner’s contention that Cherry describes
this limitation, we conclude that the Patent Owner has shown that the
Examiner erred in rejecting claims 4 and 9 as unpatentable over Cherry and
Ellis.

8. Rejection of claims 3, 8, 12, 17 and 22 as unpatentable
under 35 U.S.C. § 103(a) (Examiner’s Rejections 8-13 and 16-18)
We note that the Patent Owner argues against the Examiner’s
obviousness rejections of dependent claims 3, 8, 12, 17 and 22 (Examiner’s
Rejections 8-13 and 16-18) as a group, each of these claims being directed to
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providing a handle on the top wall of the carton. (ABPO 27; RBPO to Ex.
12). As such, we address the general arguments submitted as being
applicable to each of these claims. However, we set forth the decision for
each of these rejections infra under separate sub-headings in view of the fact
that these dependent claims depend from independent claims having
differing scope.
Turning to the rejection and the Patent Owner’s arguments, the
Examiner rejects these claims contending that providing a handle cut-out in
the top wall of a carton is known and would have been obvious to one of
ordinary skill in the art (Ans. 46). The Patent Owner contends that a person
of ordinary skill “knows that score lines are known points of weakness” and
relies on U.S. Patent No. 4,785,991 to Schuster as illustrating the problem of
weakening the top wall to thereby contend that one of ordinary skill would
not provide a handle on the top wall (ABPO 27). The Patent Owner also
contends that Imazato teaches away from providing a handle on the top wall
because of its peel back slits that present weakened areas (ABPO 27). We
are not persuaded.
As the Examiner states, Schuster merely recognizes a tradeoff design
consideration in that a cut-out handle results in loss of some strength (Ans.
46). However, such a tradeoff within carton design does not preclude one of
ordinary skill in the art from making such a design choice, or render such
choice unobvious. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
(Fed. Cir. 2006) (“a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine.”); See also Winner Int'l Royalty Corp. v. Wang, 202
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F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another.”).
Moreover, the fact that Imazato includes peel back slits on the top
wall does not mean that that Imazato teaches away from providing a handle
on the top wall. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)
(“[C]ase law does not require that a particular combination must be the
preferred, or the most desirable, combination described in the prior art in
order to provide the motivation for the current invention.”). In this regard,
Imazato does not criticize, discredit, or otherwise discourage the provision
of a handle on the top wall thereof so as to teach away from the suggested
combination. Id. at 1201.
Therefore, the Patent Owner’s arguments contending unobviousness
of providing a cut-out handle on a top wall of the container are not
persuasive. In view of the fact that dependent claims 3, 8, 12, 17 and 22
depend from independent claims having differing scope, and different
combinations of art have been relied upon by the Examiner in the various
rejections (Examiner’s Rejections 8-13 and 16-18), we decide the present
rejection of these claims as follows:
a. Rejection of claims 3, 8 and 17 over Imazato, Ellis,
Farquhar, and admission of prior art (Examiner’s Rejection 8)
The Patent Owner has not shown that the Examiner erred, and the
rejection of claims 3, 8 and 17 is sustained.
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b. Rejection of claims 3, 8 and 17 as unpatentable over
Imazato, Ellis, Farquhar and Palmer (Examiner’s Rejection 9)
The Patent Owner has not shown that the Examiner erred, and the
rejection of claims 3, 8 and 17 is sustained.
c. Rejection of claims 3, 8, 12, 17 and 22 as unpatentable
over Ellis and admission of prior art (Examiner’s Rejection 10)
The Patent Owner has not shown that the Examiner erred in rejecting
claims 3 and 12, but has shown that the Examiner erred in rejecting claims 8,
17 and 22, these claims being dependent on independent claims reciting
rows and columns. Hence, the Examiner’s rejection of claims 3 and 12 is
sustained, but the rejection of claims 8, 17 and 22 is not sustained.
d. Rejection of claims 3, 8, 12, 17 and 22 as unpatentable
over Ellis and Palmer (Examiner’s Rejection 11)
The Patent Owner has not shown that the Examiner erred in rejecting
claims 3 and 12, but has shown that the Examiner erred in rejecting claims 8,
17 and 22. Hence, the Examiner’s rejection of claims 3 and 12 is sustained,
but the rejection of claims 8, 17 and 22 is not sustained.
e. Rejection of claims 3 and 8 as unpatentable over Ellis,
Imazato, and admission of prior art (Examiner’s Rejection 12)
The Patent Owner has not shown that the Examiner erred in rejecting
claim 3, but has shown that the Examiner erred in rejecting claim 8. Hence,
the Examiner’s rejection of claim 3 is sustained, but the rejection of claim 8
is not sustained.
f. Rejection of claims 3 and 8 as unpatentable over Ellis,
Imazato and Palmer (Examiner’s Rejection 13)
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The Patent Owner has not shown that the Examiner erred in rejecting
claim 3, but has shown that the Examiner erred in rejecting claim 8. Hence,
the Examiner’s rejection of claim 3 is sustained, but the rejection of claim 8
is reversed.
g. Rejection of claim 22 as unpatentable over Imazato,
Ellis, and an admission of prior art (Examiner’s Rejection 16)
The Patent Owner has not shown that the Examiner erred, and the
rejection of claim 22 is sustained.
h. Rejection of claim 22 as unpatentable over Imazato and
an admission of prior art (Examiner’s Rejection 17)
The Patent Owner has not shown that the Examiner erred, and the
rejection of claim 22 is sustained.
i. Rejection of claim 22 as unpatentable over Imazato, Ellis
and Palmer (Examiner’s Rejection 18)
The Patent Owner has not shown that the Examiner erred, and the
rejection of claim 22 is sustained.

9. Rejection of claims 19-24 as unpatentable over Cherry,
Ellis and Imazato (Examiner’s Rejection 14)
In rejecting claims 19-24, the Examiner contends that Cherry
describes most of the limitations recited in these claims, including the
limitation that “the height of the front wall and the height of the rear wall is
about equal to a multiplicity of whole can diameters” as recited in
independent claim 19 (RAN 80). However, as discussed supra with respect
to the Examiner’s anticipation and obviousness rejections based on Cherry,
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we disagree with the Examiner’s contention that 6.25 can diameters is
“about equal to a multiplicity of whole can diameters.” The Examiner does
not rely on other prior art to remedy this deficiency, or articulate a reason for
modifying the walls of Cherry to meet the limitation requiring wall heights
about equal to a multiplicity of whole can diameters. Thus, the Examiner’s
rejection of claims 19-24 is not sustained. Further arguments proffered by
the Patent Owner (ABPO 27-28; RBPO to Ex. 13) are moot.

10. Rejection of claims 19-21, 23 and 24 as unpatentable
over Imazato and Ellis (Examiner’s Rejection 15)
The Examiner rejects these claims contending that Imazato discloses
most of the limitations thereof (RAN 84), including score line segments at
cut-off lines 35 which satisfy the limitation reciting “wherein the front wall
includes a front wall scored line segment located below the bottom level of
the top row and above the bottom level of the next-to-the top row . . .”. The
Examiner merely relies on Ellis for disclosing storage of conventional cans
and that cans are conventionally 12 ounces as recited in claim 19 (RAN 85).
Patent Owner disagrees and contends that Imazato uses folds on the
front wall instead of a “front wall scored line segment” for allowing removal
of a front wall portion as required by independent claim 19, and claims 20,
21, 23 and 24 that depend therefrom (ABPO 50).
We first note that the Examiner considers the cut-off lines 35 as
corresponding to the recited front wall score line segment in contrast to the
Patent Owner who considers the fold lines 36 as corresponding to the recited
front wall score line segment. While we do not necessarily disagree with the
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Examiner’s contention that cut-off lines 35 can correspond to the recited
front wall scored line segment, we fail to see how mere disclosure of
diagonally oriented cut-off lines 35 along the edge of the front wall teaches a
front wall scored line segment “such that removal of a front wall portion
above the front wall scored line segment will define a lip that will retain the
next-to-the-top row of cylindrical cans from falling out of the container
when the bottom wall is on a support surface . . .,” as recited in claim 19. As
discussed infra, Imazato does not disclose or suggest what portion of the
front wall is to be removed for defining a lip, or that the peeled back portion
of the front wall is capable of being removed.
The Examiner contends that because the carton of Imazato is made of
paperboard, the peeled back portions are capable of being removed (Ans.
51), we presume, by tearing or by using a cutting instrument. However, we
decline to adopt the view that the peeled back portions of Imazato’s carton
are capable of being removed simply by the virtue of the fact that the carton
is made of paperboard. Such an expansive view of the substantive
limitations is unreasonable and would call into question patentability of any
openings for paperboard cartons in general since such openings can be
readily formed by removing portions of the paperboard.
The Examiner further contends that the fold lines 36 of Imazato can
also satisfy the limitation requiring “scored line” based on a broad definition
thereof. However, the specification of the ‘673 patent provides some
guidance as to the proper construction of a “scored line” (FF 21) which is
narrower than that of the Examiner. Indeed, we do not agree with the
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Examiner’s contention that a fold line can be reasonably interpreted as
meeting the claim limitation directed to a “scored line”.
The Examiner does not rely on Ellis to cure the above noted
deficiencies of Imazato, and does not articulate a rational reason for
modifying Imazato in view of Ellis to result in the invention claimed.
Therefore, in view of the above, the Patent Owner has shown that the
Examiner erred in rejecting independent claim 19, and claims 20, 21, 23 and
24 that depend therefrom.

11. Rejection of claims 25-27 as unpatentable over Ellis and
Wonnacott (Examiner’s Rejection 19)
The Examiner rejected these claims contending that Ellis describes
each of the limitations recited in these claims except for the recited step of
“folding the sheet member around a plurality of cans” (RAN 91-93). The
Examiner relies on Wonnacott as teaching that “the end loading process for
loading a carton with cans and the wrapping (folding around) process for
loading a carton with cans are recognized equivalents in the art for achieving
the result of a carton that is loaded with cans.” (RAN 93; FF 15).
The Patent Owner first argues that the teaching of Wonnacott is
limited to row and column arrangements, and does not suggest that folding-
around would be suitable for staggered arrangements such as that disclosed
in Ellis which only describes a modified sleeve loading approach. (ABPO
29). Hence, the Patent Owner contends that “[t]here is therefore no
motivation to modify Ellis with Wonnacott.” (ABPO 29).
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However, this argument is foreclosed by KSR, in which the Supreme
Court rejected the rigid requirement of a teaching, suggestion or motivation
to combine known elements in order to establish obviousness. KSR, 550
U.S. at 418-19. Moreover, the mere fact the Ellis describes a sleeve loading
method in which the pusher plate is angled does not establish that one of
ordinary skill in the art would have found it unobvious to manufacture filled
cartons by folding the sheet member around the cans. In this regard, the
Patent Owner has not set forth any evidence that such manufacturing would
not be technically feasible or beyond the skill of one of ordinary skill in the
art. Id. at 417. To the contrary, as the Examiner found, Wonnacott
establishes that the end-loading and wrapping processes are alternatives to
one another in the same art (FF 15).
The Patent Owner also argues that independent claim 25 requires a
height of “about a whole multiple of can diameters” which is not described
by Ellis (ABPO 30; RBPO to Ex. 14). However, this line of argument is not
persuasive for the reasons already discussed supra relative to claim
construction and the disclosure of Ellis.
The Patent Owner further argues that independent claim 25 expressly
requires “stacked rows”, that the proper interpretation thereof is “rows and
columns” since that is the only embodiment disclosed in the specification of
the ‘673 patent, and that Ellis merely discloses a staggered arrangement
(ABPO 30; RBPO to Ex. 14). We disagree with the Patent Owner. There is
no basis for us to require construction of “stacked rows” to mean “rows and
columns” or to require such stacking as to form a columnar arrangement.
See In re Bigio, 381 F.3d at 1325 (“Absent claim language carrying a narrow
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meaning, the PTO should only limit the claim based on the specification or
prosecution history when those sources expressly disclaim the broader
definition.”). We further agree with the Examiner (Ans. 53-54) that
construing “stacked rows” to require a columnar arrangement is tantamount
to improperly reading the limitation of the preferred embodiment of the
Specification into these claims, and that mere recitation of stacking does not
preclude the staggering arrangement of Ellis. See E-Pass Techs., Inc., 343
F.3d at 1369.
The Patent Owner relies on the Declaration of Singh in support, which
states that “the term ‘stacked rows’ is understood by one of ordinary skill in
this art as referring to an arrangement of items in rows and columns . . ..”
(Decl. of Singh ¶ 14). However, this conclusory statement is not
substantiated by further objective evidence, and hence, we decline to limit
the plain meaning of “stacked.”
Therefore, in view of the above, the Patent Owner has not shown that
the Examiner erred in rejecting claims 25-27 as unpatentable over Ellis and
Wonnacott.

12. Secondary Considerations
In support of non-obviousness of the claimed invention and in
attempting to establish Examiner error with respect to the obviousness
rejections, the Patent Owner also contends that the claimed invention has
enjoyed commercial success as evidenced by the success of the “Fridge
Pack” (ABPO 4-5; RBPO to Ex. 7-8; Decl. of Gourville, ¶ 10-30 and
Exhibits). The Patent Owner contends that the commercial success of the
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“Fridge Pack” is due to the combination of the rows and columns
arrangement of cans, and the top opening feature (RBPO to Ex. 7). The
Patent Owner further contends that because a 2x6 arrangement was known
in Wonnacott and Cherry, and there is no evidence that these met with any
commercial success, the arrangement cannot be the reason for the success of
the “Fridge Pack” (RBPO to Ex. 8).
In reconsidering the obviousness determination anew, we do not find
the purported evidence of secondary considerations persuasive to establish
non-obviousness with respect to the claimed invention of the ‘673 patent.
The Patent Owner relies on statements of, and evidence submitted by,
Graphic Packaging, Inc. (f/k/a Riverwood International Corporation)
(Requester II) in a patent litigation against MeadWestvaco Corporation
(Requester I) to attempt to establish commercial success of the “Fridge
Pack”, rather than submitting evidence of commercial success of the
invention claimed in the ‘673 patent under reexamination. The litigation
between Requester II and Requester I relates to the enforcement of U.S.
Patent No. 6,578,736 (hereinafter ‘736) which is directed to a carton for
carrying containers in two rows and a dispenser which remains attached to
the carton, commercially referred to as the “Fridge Pack”. Hence, not only
does the evidence presented and relied upon by the Patent Owner appear to
be hearsay, the evidence is also directed to the “Fridge Pack” and the ‘736
patent.
Underlying the Patent Owner’s contentions regarding unobviousness
through secondary considerations is the presumption that “Fridge Pack” is
the claimed invention of the ‘673 patent under reexamination, so that
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evidence with respect to the success of the “Fridge Pack” can be considered
evidence of success for the claimed invention of the ‘673 patent. For
instance, Mr. Gourville declares that, “[t]here is a nexus between the
increase in beverage sales (both in volume and price) and the commercial
success of the Fridge Pack.” (Decl. of Gourville, ¶ 24).
However, the evidentiary burden on the Patent Owner is to show
commercial success of the claimed invention of the ‘673 patent which is the
subject of the current reexamination proceeding. The Patent Owner’s
assertion of commercial success requires acceptance of the legal and factual
conclusion that the “Fridge Pack” is within the scope of the claimed
invention of the ‘673 patent presently being reexamined, and importantly,
that the success of the “Fridge Pack” is attributable to the limitations
appearing in the claims of the ‘673 patent instead of some other feature of
the “Fridge Pack”, some other feature of the ‘736 patent, or actions of the
owner of the ‘736 patent such as promotion, advertising, etc. Indeed, there
is competing evidence to the contrary. (See, e.g., Decl. of Agulla; Decl. of
Olejniczak; Decl. Hoyme). Therefore, we decline to make such factual and
legal conclusions that “Fridge Pack” is the claimed invention of the ‘673
patent presently reexamined, and that the success thereof is attributable to
the limitations appearing in the claims of the ‘673. Instead, we conclude that
the required “nexus” between the merits of the claimed invention and the
purported evidence of secondary considerations has not been established.
See In re GPAC, Inc., 57 F.3d at 1580.
Moreover, we also note that the scope of the purported evidence is not
commensurate in scope with the claims of the ‘673 patent since the claims
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are broader than the evidence provided. See In re Tiffin, 448 F.2d at 792.
Indeed, the Patent Owner:
readily admits that none of the specific drawings in the [‘673] patent
show a 2x6 arrangement, . . . it is nonetheless disclosed, because,
clearly, it is a matrix of cans, as described in the specification. The
patent nowhere excludes specific matrix sizes (such as a 2x6) from its
invention, and there is no obligation to describe every possible
embodiment in the specification. Moreover, even if there was
something inherently inventive about the specific 2x6 arrangement in
combination with the claimed opening -that is, a species of an already
disclosed genus -the success nevertheless arises in part from the
combination of the matrix with the top opening feature, since, as
mentioned above, the 2x6 alone does not drive success.”
(RBPO to Ex. 8).

Thus, the evidence is also not commensurate in scope with the claims
because the claims are substantially broader in that they are not restricted to
the 2x6 configuration to which the alleged evidence is directed. Therefore,
having considered the Examiner’s initial determination of obviousness anew,
the Patent Owner has not shown that the Examiner’s obviousness rejections
to be erroneous based on secondary considerations.

E. Conclusions With Respect to Appeal of the Patent Owner
1. The Patent Owner has shown that the Examiner erred in
construing the term “column” as “a formation of things”.
2. The Patent Owner has not shown that the Examiner erred in
construing the term “about” as “almost” or “nearly” so that the limitation
reciting a rear wall having a “height of about a whole multiple of the can
diameter” encompasses a wall height of 1.93 can diameters.
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3. The Patent Owner has not shown that the Examiner erred in
concluding that the recitation “comprising … twelve” cans or items is open
ended and can be satisfied by more than twelve cans or items.
4. The Patent Owner has shown that the Examiner erred in finding
that Ellis describes an “oblique score”.
5. The Patent Owner has not shown that the Examiner erred in
combining Ellis and Imazato based on the manner in which the cartons are
used.
6. The Patent Owner has not established that the Examiner erred
in combining Imazato with Ellis and Farquhar based on lack of motivation to
combine.
7. The Patent Owner has established that the Examiner erred in
construing the term “about” such that the limitation reciting a rear wall
having a “height of about a whole multiple of the can diameter”
encompasses a wall height of 6.25 can diameters.
8. The Patent Owner has not shown that the Examiner erred in
concluding that providing a handle cut-out in the top wall of a carton would
have been obvious.
9. The Patent Owner has shown that the Examiner erred in finding
that Imazato discloses a front wall scored line segment “such that removal of
a front wall portion above the front wall scored line segment will define a
lip.”
10. The Patent Owner has not shown that the Examiner erred in
concluding that it would have been obvious to one of ordinary skill in the art
to fold the carton blank of Ellis around the plurality of cans.
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11. The Patent Owner has not shown that the Examiner erred in
refusing to construe the limitation “stacked rows” to mean “rows and
columns.”
12. The Patent Owner has not shown through secondary
considerations that the Examiner erred in making the obviousness rejections
herein being sustained.

F. Orders with Respect to Appeal of the Patent Owner
The rejections of the Examiner as appealed by the Patent Owner are
AFFIRMED-IN-PART as follows:
1. a. The Examiner’s rejection of claims 1, 2, 4, 5, 28 and 29
under 35 U.S.C. §102(b) as anticipated by Ellis is AFFIRMED.
b. The Examiner’s rejection of claims 11, 13-16, 18-21, 23 and
24, under 35 U.S.C. §102(b) as anticipated by Ellis is REVERSED.
2. a. The Examiner’s rejection of claims 1, 2, 4, 5, 11, 13, 14, 28
and 29 under 35 U.S.C. §103(a) as unpatentable over Ellis is
AFFIRMED.
b. The Examiner’s rejection of claims 6, 7, 9, 10, 15, 16, 18-21,
23 and 24 under 35 U.S.C. §103(a) as unpatentable over Ellis is
REVERSED.
3. a. The Examiner’s rejection of claims 1, 2, 4 and 5 under 35
U.S.C. § 103(a) as unpatentable over Ellis and Imazato is
AFFIRMED.
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b. The Examiner’s rejection of claims 6, 7, 9 and 10 under 35
U.S.C. § 103(a) as unpatentable over Ellis and Imazato is
REVERSED.
4. The Examiner’s rejection of claims 1, 2, 4-7, 9, 10, 15, 16, 18,
28 and 29 under 35 U.S.C. § 103(a) as unpatentable over Imazato, Ellis and
Farquhar is AFFIRMED.
5. The Examiner’s rejection of claims 1, 2, 5-7, 10, 28, and 29
under 35 U.S.C. § 102(b) as anticipated by Cherry is REVERSED.
6. The Examiner’s rejection of claims 1, 2, 5, 7, 10, 28, and 29
under 35 U.S.C. § 103(a) as unpatentable over Cherry is REVERSED.
7. The Examiner’s rejection of claims 4 and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Cherry and Ellis is REVERSED.
8. The Examiner’s rejection of claims 3, 8 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Imazato, Ellis, Farquhar, and admission of
prior art is AFFIRMED.
9. The Examiner’s rejection of claims 3, 8 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Imazato, Ellis, Farquhar and Palmer is
AFFIRMED.
10. a. The Examiner’s rejection of claims 3 and 12 under 35
U.S.C. § 103(a) as unpatentable over Ellis and admission of prior art
is AFFIRMED.
b. The Examiner’s rejection of claims 8, 17 and 22 under 35
U.S.C. § 103(a) as unpatentable over Ellis and admission of prior art
is REVERSED.
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11. a. The Examiner’s rejection of claims 3 and 12 under 35
U.S.C. § 103(a) as unpatentable over Ellis and Palmer is AFFIRMED.
b. The Examiner’s rejection of claims 8, 17 and 22 under 35
U.S.C. § 103(a) as unpatentable over Ellis and Palmer is REVERSED.
12. a. The Examiner’s rejection of claim 3 under 35 U.S.C. §
103(a) as unpatentable over Ellis, Imazato, and admission of prior art
is AFFIRMED.
b. The Examiner’s rejection of claim 8 under 35 U.S.C. §
103(a) as unpatentable over Ellis, Imazato, and admission of prior art
is REVERSED.
13. a. The Examiner’s rejection of claim 3 under 35 U.S.C. §
103(a) as unpatentable over Ellis, Imazato and Palmer is AFFIRMED.
b. The Examiner’s rejection of claim 8 under 35 U.S.C. §
103(a) as unpatentable over Ellis, Imazato and Palmer is REVERSED.
14. The Examiner’s rejection of claims 19-24 under 35 U.S.C.
§ 103(a) as unpatentable over Cherry, Ellis and Imazato is REVERSED.
15. The Examiner’s rejection of claims 19-21, 23 and 24 under 35
U.S.C. § 103(a) as unpatentable over Imazato and Ellis is REVERSED.
16. The Examiner’s rejection of claim 22 under 35 U.S.C. § 103(a)
as unpatentable over Imazato, Ellis, and an admission of prior art is
AFFIRMED.
17. The Examiner’s rejection of claim 22 under 35 U.S.C. § 103(a)
as unpatentable over Imazato and an admission of prior art is AFFIRMED.
18. The Examiner’s rejection of claim 22 under 35 U.S.C. § 103(a)
as unpatentable over Imazato, Ellis and Palmer is AFFIRMED.
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19. The Examiner’s rejection of claims 25-27 under 35 U.S.C. §
103(a) as unpatentable over Ellis and Wonnacott is AFFIRMED.

G. Summary with Respect to Appeal of the Patent Owner
1. At least one of the Examiner’s rejections of each of claims 1-
18, 22, 25-29 is AFFIRMED.
2. All of the Examiner’s rejections of claims 19-21, 23 and 24
have been REVERSED.

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II. CROSS-APPEAL OF REQUESTER I
Requester I cross-appeals the Examiner’s refusal to adopt various
proposed obviousness rejections of claims 1-29 (CABRI 8). In addition to
various arguments against the Examiner’s refusal, Requester I also relies on
evidence as set forth in the Evidence Appendix (CABRI, Evidence App’x)
which includes the Declaration of Aaron L. Bates.

A. Cross-Appealed Proposed Rejections of Requester I
1. Claims 1-29 are unpatentable under 35 U.S.C. § 103(a) over
Wonnacott and Ellis.
2. Claims 1-24, 28 and 29 are unpatentable under 35 U.S.C.
§ 103(a) over Spivey and Ellis.
3. Claims 1-24, 28 and 29 are unpatentable under 35 U.S.C.
§ 103(a) over Kornick and Ellis.
4. Claims 11, 13 and 14 are unpatentable under 35 U.S.C. § 103(a)
over Imazato, Ellis and Farquhar.
5. Claims 1, 2, 4-7, 9-11, 13-16, 18, 28 and 29 are unpatentable
under 35 U.S.C. § 103(a) over Imazato, Cherry and Farquhar.

B. Issues
1. Whether Requester I has shown that the Examiner erred in
refusing to adopt the proposed rejection of all claims in the ‘673 patent as
obvious over the combination of Wonnacott and Ellis.
2. Whether Requester I has shown that the Examiner erred in
refusing to adopt the proposed rejection of claims 1-24, 28 and 29 of the
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‘673 patent as obvious over the combination of Spivey and Ellis, or Kornick
and Ellis.
3. Whether Requester I has shown that the Examiner erred in
refusing to adopt the proposed rejection of claims 11, 13 and 14 of the ‘673
patent as obvious over the combination of Imazato, Ellis and Farquhar.
4. Whether Requester I has shown that the Examiner erred in
refusing to adopt the proposed rejection of claims 1, 2, 4-7, 9-11, 13-16, 18,
28 and 29 of the ‘673 patent as obvious over the combination of Imazato,
Cherry and Farquhar.

C. Analysis
1. Proposed rejection of claims 1-29 as unpatentable under
35 U.S.C. § 103(a) over Wonnacott and Ellis
The Examiner refuses to adopt the proposed rejection of all of the
pending claims as obvious over the combination of Wonnacott and Ellis,
contending that the problems addressed, functions and designs as described
in the two references differ (Ans. 57).
Requester I disagrees because “Wonnacott discloses every element of
the claims relating to the carton structure, and Ellis discloses the claimed
score lines or opening arranged at the carton’s top corner.” (CABRI 11-13).
Requester I argues that motivation for combining Wonnacott and Ellis exists
in view of “common knowledge and common sense” and “the fact that both
references address the nature of the problem Lingamfelter sought to solve,
similar goals for dispensing cans only one at a time, and the problem of cans
rolling forward in the carton.” (CABRI 12-15). Requester I contends that
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Ellis discloses a simpler, and therefore more desirable, design which does
not have a handle strap, and the use of a specialized handle or a top-corner
opening is a design choice (CABRI 15-20).
We are not persuaded by Requester I’s arguments and do not agree
that the Examiner reversibly erred. We first note that the proposed rejection
of Requester I modifies the carton of Wonnacott so as to provide a top-
corner dispenser defined by scores and cuts along the carton’s walls,
including on its top wall. (CABRI 12-13; RRRI 37). Requester I relies on
simplicity and the problem of preventing cans from rolling forward to argue
that “achieving a refrigerator carton that dispenses cans only one at a time
and that stops cans that tend to roll forward, while eliminating a specialized
handle strap from the Wonnacott carton, would have made it desirable to
combine the teachings [of] Wonnacott and Ellis.” (CABRI 14-15; RRRI 38-
39).
However, we observe that in Wonnacott, the opening and the
specialized handle which prevents the cans from rolling are provided on the
front wall of the described carton (FF 14). The opening in Wonnacott is
further defined by perforated or slit-score lines that are provided on the side
walls of the described carton (FF 14), we presume for allowing the user to
grasp the cans at the top and bottom edges thereof during removal. In
contrast, the opening of the carton in Ellis is attained by removal of portion
R which is partially defined by the top wall of the carton, not just the front
and side walls (FF 1-2). With respect to Ellis, the bottom front flap 15
which functions to prevent rolling of the cans is provided on the front wall
of the carton (FF 1). Thus, there is merit to the Examiner’s contention that
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there is no use for a top wall opening portion of a type such as suggested by
Ellis in the Wonnacott carton (RAN 53).
We are mindful that recent Supreme Court precedent gives additional
support to Requester I’s arguments based on common sense and substitution
of one element for another known in the field. See KSR, 550 U.S. at 415-16
(“when a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.”).
Indeed, Requester I has further pointed to KSR in support of this, and other
rejections not adopted by the Examiner discussed infra (RBRI to Ex 4-6).
However, in KSR, the Supreme Court further reaffirmed that “a patent
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.” Id. at 418. The Supreme Court further stated that “it can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does[.]” and that “[t]o facilitate review, this analysis
should be made explicit.” Id. at 418.
As such, in our view, while the articulated reason for combining
Wonnacott and Ellis proffered by Requester I may support modifying the
carton of Wonnacott so as to provide a bottom front flap to prevent rolling of
the cans as provided in Ellis, the suggested combination results in providing
an opening which merely has an opening on the front wall with cutaway
portions on the side walls to allow grasping of the cans during removal. The
articulated reason does not sufficiently support, nor do we find an apparent
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reason for, providing an opening of the type described in Ellis which is
partially defined by a portion of the top wall. Hence, the articulated reason
is insufficient to support the proposed rejection. Id. at 417-18. In this
regard, the Examiner’s contention that Requester I is finding motivation for
combining references based on the fact that the references are in the same
field of endeavor (Ans. 58) has merit. The remaining arguments between
Requester I and the Examiner, for example, regarding preventing rolling of
the top can, are moot. Therefore, Requester I has not shown that the
Examiner erred in refusing to adopt the proposed rejection.

2. Proposed rejection of claims 1-24, 28 and 29 as
unpatentable under 35 U.S.C. § 103(a) over Spivey and Ellis
Requester I’s appeal of the non-adopted proposed rejection based on
the combination of Spivey and Ellis is similar to that based on the
combination of Wonnacott and Ellis (CABRI 21-26). Hence, we likewise
find Requester I’s arguments unpersuasive for substantially the same reasons
discussed supra relative to the proposed rejection based on the combination
of Wonnacott and Ellis. In this regard, we note that Spivey also merely
discloses an opening defined by the front and side walls of the carton (FF
17). Therefore, Requester I has not shown that the Examiner erred in
refusing to adopt the proposed rejection.

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3. Proposed rejection of claims 1-24, 28 and 29 as
unpatentable under 35 U.S.C. § 103(a) over Kornick and Ellis
Requester I’s appeal of the non-adopted proposed rejection based on
the combination of Kornick and Ellis is similar to that based on the
combination of Wonnacott and Ellis (CABRI 26-31). Hence, we likewise
find Requester I’s arguments unpersuasive for substantially the same reasons
discussed supra relative to the combination of Wonnacott and Ellis. In this
regard, we note that Kornick also merely discloses an opening provided on
the front wall of the carton (FF 18). Therefore, Requester I has not shown
that the Examiner erred in refusing to adopt the proposed rejection.

4. Proposed rejection of claims 11, 13 and 14 as
unpatentable under 35 U.S.C. § 103(a) over Imazato, Ellis and
Farquhar
Independent claim 11, and claims 13 and 14 depending therefrom
specifically recite “a scored line having . . . side wall segments running on
the side walls . . . at least a part of each of the side wall segments runs
obliquely with respect to the front wall and the top wall . . ..” Requester I
argues that independent device claim 11 is highly similar to independent
method claim 15 which was rejected by the Examiner as obvious over
Imazato, Ellis and Farquhar (CABRI 31). Requester I concedes that Imazato
does not disclose a scored line extending obliquely across the side walls
(CABRI 33), but argues that this feature obvious in view of Ellis and
Farquhar (CABRI 34).
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The Examiner refuses to adopt the proposed rejection of these claims
as obvious over the combination of Imazato, Ellis and Farquhar contending
that the problems addressed described in the two references differ, that there
is no reason to make a “wholesale” replacement of the opening of Imazato
with the removable section of Ellis (Ans. 68-69). The Examiner further
contends that it would not have been obvious to connect oblique cuts 35 and
52 with the sidewall scores of Ellis (Ans. 69). We disagree with the
Examiner.
We understand Requester I’s proposed rejection as relying on Imazato
for disclosing a carton with an opening that is defined by the top wall and
the front wall (RRRI 25-26). Requester I relies on Ellis for disclosing the
claimed features of the side wall, namely, the oblique side wall segments, to
thereby define a removable section (RRRI 27; CABRI 33 and 36).
Requester I relies on Farquhar as providing further motivation and
suggestion for providing a score on the side wall to form a dispensing
opening, Farquhar describing that the removal of the side wall portions from
around the dispensing opening facilitates removal of cans from the carton
when the front panel is opened (CABRI 34; FF 10). While it is true that
Farquhar provides such side openings to allow manual grasping of a can
which would otherwise be difficult (FF 10), we note that Ellis, which
includes a dispensing opening that is at least partially defined by the top wall
and the front wall (like Imazato), also provides access to the cans via the
side walls as well.
Hence, Requester I’s proposed rejection is not a “wholesale”
replacement of the opening of Imazato with the opening of Ellis, but rather,
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modifying the carton of Imazato with its key teaching of a can dispensing
opening at a top-corner of the carton which is defined by the top wall and the
front wall so as to incorporate the side wall openings of Ellis and Farquhar
to further facilitate removal of cans.
While we do not agree with the Requester I’s assertion that Ellis
describes a “scored line” that runs obliquely with respect to the front wall
and the top wall as discussed supra, we observe that Farquhar utilizes a
scored line that does run obliquely. In this regard, we further note that
independent claim 11 does not require the entire side wall segment of the
score line to be oblique, or require the oblique portion of the side wall
segment to connect to the top wall and the front wall. Rather, all that is
required is for “at least a part of each of the side wall segments [to] run[s]
obliquely with respect to the front wall and the top wall.”
The Examiner’s contention that it would not have been obvious to
connect oblique cuts 35 and 52 of the top wall and the front wall to the
sidewall scores (Ans. 69) is not persuasive because Ellis clearly illustrates a
scored line on the side walls interconnected with the scored line on the top
wall, and the cut line 25 with the front wall (FF 1) and Farquhar illustrates a
scored line on the side walls interconnected with the score line on the front
wall (FF 9). Indeed, the prior art relied upon appears to indicate that such
score lines on cartons are typically formed in a continuous manner on the
carton blank (See, e.g., Ellis, Fig. 2; Farquhar, Fig. 6). Moreover, as noted by
the Examiner (Ans. 69), a score line defining a removable section is
specifically disclosed in Ellis. The Examiner’s further arguments based on
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differences in the manner in which the described cartons are intended to be
used are not persuasive.
Therefore, in view of the above, we conclude that the Examiner erred
in refusing to adopt Requester I’s proposed rejection of claims 11, 13 and 14
as obvious over the combination of Imazato, Ellis and Farquhar.

5. Proposed rejection of claims 1, 2, 4-7, 9-11, 13-16, 18,
28 and 29 as unpatentable under 35 U.S.C. § 103(a) over Imazato,
Cherry and Farquhar
Requester I again contends that Imazato describes most of the
limitations in these claims relating to the carton structure except for the
score lines defining a removable section which is disclosed by Cherry, and
Farquhar providing “added motivation to include score lines in the side walls
for grasping ends of the cans.” (CABRI 37-38). According to Requester I,
“one of ordinary skill in the art would have been motivated by Farquhar to
improve Imazato’s top-corner opening with the structure taught by Cherry,”
to thereby render claims 1, 2, 4-7, 9-11, 13-16, 18, 28 and 29 obvious.
The Examiner refuses to adopt the proposed rejection of these claims
as obvious over the combination of Imazato, Cherry and Farquhar
contending that “there is no teaching by Farquhar to provide this removal
access by a score or edge that extends from the front wall to the top wall[.]”
and that the opening at the top of the carton of Cherry provides “a side
access intended for returning empty cans to the carton . . ..” (Ans. 72).
While we do not necessarily agree with the Examiner’s arguments based on
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distinctions in the use of the opening, we nonetheless agree with the
Examiner that the proposed rejection should not be adopted.
In particular, the opening that is provided on the top wall of Cherry is
oriented to be perpendicular to the can dispensing opening provided at the
bottom of the carton (FF 11). Irrespective of the intended use, such
orientation of the opening would structurally impede the cans in the carton
from being “dispensed” therethrough since it is perpendicular to the cans
stored therein (FF 11). Furthermore, in view of the orientation of the top
opening, the oblique score lines of Cherry cannot be reasonably said to be
positioned on the side wall (FF 11) as required by the claims. As such, even
if there was an appropriate reason to combine these references, when the
teachings of Farquhar and Cherry are fairly applied to Imazato, such a
combination does not result in the invention of these claims. Therefore, in
view of the above, Requester I has not shown that the Examiner erred in
refusing to adopt this proposed rejection.

6. Other proposed rejections Examiner deemed
“unnecessary”
Finally, Requester I also requests that if the Board reverses a
determination of (un)patentability for one or more claims, the Board also
instruct the Examiner “to consider for those one or more claims any
proposed rejections not previously adopted because the Examiner believed
they were unnecessary.” (CABRI 41). These supposed non-adopted
rejections are set forth in the Cross-Appeal Brief of Requester I (CABRI 41;
see also RBRI to Ex. 3).
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As discussed supra in section “I. APPEAL OF THE PATENT
OWNER”, only the Examiner’s rejections of claims 19-21, 23 and 24 have
been REVERSED on all grounds. The only supposed non-adopted rejection
that includes these claims is identified as:
1. Claims 11, 13-16, 18-21, 23, 24, 28, and 29 under 35 U.S.C.
§103(a) over Ellis in view of Imazato.
(CABRI 41).
However, the record does not indicate that such a rejection was
proposed by Requester I.3 (RRRI, pg. iii). As such, there is no issue for the
Board to decide.

D. Conclusions With Respect to the Cross-Appeal of Requester I
1. Requester I has not shown that the Examiner erred in refusing
to adopt the proposed rejection of all claims of the ‘673 patent as obvious
over the combination of Wonnacott and Ellis.
2. Requester I has not shown that the Examiner erred in refusing
to adopt the proposed rejection of claims 1-24, 28 and 29 of the ‘673 patent
as obvious over the combination of Spivey and Ellis, or Kornick and Ellis.

3 The Cross-Appeal Brief of Requester I cites to RAN at 41-42 in which the
Examiner states that this rejection was proposed by Requester I (RAN 41).
However, the Examiner appears to be referring to Requester II who made the
proposed rejection except for claims 28 and 29 (RRRII, pg. 1-11; CABRII
5). The Examiner’s refusal to adopt Requester II’s proposed rejection of
claims 11, 13-16, 18-21, 23 and 24 as unpatentable under 35 U.S.C. §103(a)
over Ellis in view of Imazato is cross-appealed by Requester II and is
addressed infra.
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3. Requester I has shown that the Examiner erred in refusing to
adopt the proposed rejection of claims 11, 13 and 14 of the ‘673 patent as
obvious over the combination of Imazato, Ellis and Farquhar.
4. Requester I has not shown that the Examiner erred in refusing
to adopt the proposed rejection of claims 1, 2, 4-7, 9-11, 13-16, 18, 28 and
29 of the ‘673 patent as obvious over the combination of Imazato, Cherry
and Farquhar.

E. Orders with Respect to the Cross-Appeal of Requester I
The refusals of the Examiner to adopt proposed rejections as appealed
by Requester I are AFFIRMED-IN-PART as follows:
1. The Examiner’s refusal to adopt the proposed rejection of all
claims of the ‘673 patent as obvious over the combination of Wonnacott and
Ellis is AFFIRMED.
2. The Examiner’s refusal to adopt the proposed rejection of
claims 1-24, 28 and 29 of the ‘673 patent as obvious over the combination of
Spivey and Ellis or Kornick and Ellis is AFFIRMED.
3. The Examiner’s refusal to adopt the proposed rejection of
claims 11, 13 and 14 of the ‘673 patent as obvious over the combination of
Imazato, Ellis and Farquhar is REVERSED.
4. The Examiner’s refusal to adopt the proposed rejection of
claims 1, 2, 4-7, 9-11, 13-16, 18, 28 and 29 of the ‘673 patent as obvious
over the combination of Imazato, Cherry and Farquhar is AFFIRMED.

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F. Summary with Respect to the Cross-Appeal of Requester I
Therefore, the Examiner’s refusal to adopt the proposed rejections of
Requester I is AFFIRMED-IN-PART, with the Examiner’s refusal to adopt
the proposed rejection of claims 11, 13 and 14 of the ‘673 patent as obvious
over the combination of Imazato, Ellis and Farquhar being REVERSED and
denominated as a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.77(b).

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III. CROSS-APPEAL OF REQUESTER II
Requester II notes that the Examiner has not adopted ten separate
rejections that have been proposed in its Inter Partes Request for
Reexamination (CABRII 5-6; RRRII 1). Requester II cross-appeals on a
“contingent basis,” the Examiner’s non-adoption of the proposed rejections
only with respect to those claims that the Examiner’s rejection(s) is reversed
by the Board (CABRII 8). In addition to various arguments against the
Examiner’s refusal, Requester II also relies on evidence as set forth in the
Evidence Appendix (CABRII 22) which includes the Declaration of Jean
Manuel Gomes.

A. Cross-Appealed Proposed Rejections of Requester II
As discussed supra in section “I. APPEAL OF THE PATENT
OWNER”, only the Examiner’s rejections of claims 19-21, 23 and 24 have
been REVERSED on all grounds. The only non-adopted proposed
rejections of Requester II that include claims 19-21, 23 and 24 are identified
as:
(1) Claims 11, 13 to 16, 18 to 21, 23 and 24, unpatentable over
Ellis et. al. Pat. No. 3,178,242 ("Ellis") in view of Imazato Japanese
Laid Open Utility Model Application Hei 7-9721 ("Imazato").

(3) Claims 6, 7, 9, 10, 15, 16, 18 to 21 and 23 to 27, unpatentable
over Ellis in view of Imazato and Wonnacott U.K. Application
2,186,550A ("Wonnacott') or Spivey et. al. Patent No. 6,105,854
("Spivey").
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(CABRII 5).

Hence, we address Requester II’s cross-appeals of the Examiner’s
refusal to adopt these non-adopted proposed rejections only with respect to
claims 19-21, 23 and 24 which are the only claims that all of the Examiner’s
rejections are reversed by the Board.

B. Issues
1. Whether Requester II has shown that the Examiner erred in
refusing to reject claims 19-21, 23 and 24 of the ‘673 patent as obvious over
the combination of Ellis and Imazato.
2. Whether Requester II has shown that the Examiner erred in
refusing to reject claims 19-21, 23 and 24 of the ‘673 patent as obvious over
the combination of Ellis, Imazato and Wonnacott or Spivey.

C. Analysis
1. Proposed rejection of claims 19-21, 23 and 24 are
unpatentable under 35 U.S.C. § 103(a) over Ellis and Imazato
Of claims 19-21, 23 and 24, claim 19 is the sole independent claim,
the remaining claims depending therefrom. Independent claim 19 recites a
container comprising twelve cans in a row and column arrangement where
the height of the rear wall is “about” equal to a multiplicity of whole can
diameters.
Requester II contends that claims 19-21, 23 and 24 are unpatentable
over the combination of Ellis and Imazato referencing the rationale set forth
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relative to the rejection of independent claim 6 (CABRII 14). In this regard,
Requester II contends that Ellis describes the row and column arrangement
(CABRII 12-13). However, as discussed supra in the “I. APPEAL of the
PATENT OWNER” section, we disagree with such a broad construction of
the term “column” so as to encompass the staggered arrangement of cans
described in Ellis.
Therefore, in view of the above, Requester II has not shown that the
Examiner erred in refusing to adopt this proposed rejection.

2. Proposed rejection of claims 19-21, 23 and 24 are
unpatentable under 35 U.S.C. § 103(a) over Ellis, Imazato and
Wonnacott or Spivey
Requester II also submits that the Examiner erred in refusing to adopt
the proposed rejection of claims 19-21, 23 and 24 as unpatentable under 35
U.S.C. § 103(a) over Ellis, Imazato and Wonnacott or Spivey (CABRII 17).
In the Inter Partes Reexamination Request, Requester II states:
However, if the examiner considers that the
recitation of columns in these claims requires that the
cans be vertically arranged one directly above the other,
even though such a limitation is not contained in the
claims, it would have been obvious to one of ordinary
skill in the art to arrange the cans in the container of Ellis
so that they would be in two rows, with the cans stacked
one above the other. This arrangement would have been
suggested by either Wonnacott or Spivey, both of which
disclose containers with beverage cans in two-row
stacked (column) arrangement. See the arrangement of
cans 16 in Wonnacott Fig. 2, and Wonnacott's disclosure
at page 2, lines 33 to 35. Wonnacott also discloses a
carton holding twelve cans in Fig. 4 and at page 2, lines
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46 to 48. Spivey discloses a two-row stacked (column)
arrangement of cans or bottles in Figs. 2 and 4. One of
ordinary skill would have been motivated to arrange the
cans in the Ellis container in a two-row stacked array by
the self-evident advantage that, for a given number of
cans, such an arrangement would, as compared to Ellis'
staggered arrangement, decrease the length of the
container at the expense of a very small increase in
height. This would decrease the amount of paperboard
required per carton. Also, placing the cans directly above
each other instead of staggering them would eliminate
the necessity, disclosed by Ellis at col. 3, lines 11 to 18,
of modifying the pusher plant in the "expensive high
speed automatic equipment" used to load cartons with
two rows of aligned (stacked) cans.
(RRRII 14, footnote omitted, emphasis in original; CABRII 17-
18).

The Examiner refuses to adopt the above proposed rejection based on
the determination that Ellis describes cans in a “column” arrangement so that
modification thereof based on Wonnacott or Spivey is “not necessary.”
(Ans. 82; RAN 98). However, as discussed supra, we disagree with the
Examiner’s broad construction of the term “column” so as to encompass the
staggered arrangement of cans described in Ellis.
We further agree with Requester II that these claims are unpatentable
over the combination of Ellis, Imazato and Wonnacott or Spivey and
conclude that it would have been obvious to one of ordinary skill in the art to
arrange the cans in the carton of Ellis to be in rows and columns as
suggested by either Wonnacott or Spivey. The Patent Owner’s claimed
invention is merely a predictable variation of the carton of Ellis to
accommodate an arrangement of cans well known in the art. KSR, 550 U.S.
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at 417. A person of ordinary skill in the art is a person of ordinary
creativity. Id. at 421.
The Patent Owner argues that Ellis teaches away from any
modification that would “take its cans out of their staggered relationship”
and that the proposed modification would destroy the intended purpose of
Ellis so that the proposed modification would be improper (RBPO to RII 6).
However, the Patent Owner’s arguments are not persuasive.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). However, the mere description of an implementation in the
prior art that differs from the Appellants’ claimed invention, without more,
does not show that the prior art is “teaching away” from the invention
claimed. In re Fulton, 391 F.3.d at 1201 (“the prior art’s mere disclosure of
more than one alternative does not constitute a teaching away from any of
these alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed”). Hence, the mere disclosure in
Ellis of cans being dispensed in a predetermined order cannot be said to
teach away from implementing the carton of Ellis to have a row and column
arrangement.
The substance of the Patent Owner’s argument is that the suggested
modification would render the carton of Ellis incapable of dispensing the
cans from the carton in a predetermined order. In this regard, the Patent
Owner relies on In re Gordon for the proposition that if the proposed
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modification would render the prior art invention being modified
“inoperable for its intended purpose”, then there is no suggestion or
motivation to make the proposed modification. See In re Gordon, 733 F.2d
900 (Fed. Cir. 1984) (RBPO to RII 4). In re Gordon involved a case where
a prior art gas filter would be entirely inoperative when modified to be
upside down as suggested by the Examiner. This inoperability of the
modified prior art device was the basis for the Federal Circuit reversing the
Board’s decision affirming the Examiner’s rejection. Id. at 902.
However, in the present appeal, the suggested modification of Ellis
does not render the carton of Ellis “inoperative” for the broader purpose of
containing and dispensing cans from the carton. In this regard, we observe
that dispensing cans in a predetermined order is not the sole purpose of the
carton described in Ellis. Instead, Ellis also describes other purposes and
features related thereto such as “self-dispensing” carton with a backstand
which can be placed in a home refrigerator, removable section R, and front
stops (FF 1-3), and such uses would be evident to one of ordinary skill in the
art. While dispensing cans in a predetermined order and the resultant
disclosure of the staggered arrangement of the cans is a purpose of the carton
described in Ellis, this purpose is subservient to the broader purpose which is
to provide a carton for dispensing cans therefrom. In this regard, even the
inventors of Ellis viewed their invention more broadly than as suggested by
the Patent Owner since the claims of Ellis do not recite, or otherwise require,
staggered arrangements of the cans, nor that the cans to be packaged in the
carton are to be dispensed in a predetermined order.
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The modification of Ellis in view of Imazato and Wonnacott or
Spivey as proposed by Requester II does not render the carton of Ellis
inoperative. By solely focusing on one specifically disclosed purpose and
embodiment of Ellis, the Patent Owner fails to appreciate the broader
purposes and teachings of Ellis. A prior art reference must be considered for
everything it teaches by way of technology and is not limited to the
particular embodiment described. In addition, “[o]ne of ordinary skill in the
art need not see the identical problem addressed in a prior art reference” in
order to apply its teachings. Cross Medical Prods., Inc. v. Medtronic
Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005). We do not
subscribe to the view that one of ordinary skill, upon reviewing Ellis, would
only appreciate the teachings with respect to dispensing cans in a
predetermined order, while failing to appreciate the broader teaching of
providing a can-dispensing carton, and further failing to recognize that the
described carton could be implemented to provide a carton in which the cans
are arranged in a row and column configuration, as disclosed by Wannacott
or Spivey, with the other disclosed features of Ellis, such as being self-
dispensing, and/or having a backstand to elevate the rear end of the carton.
Therefore, we conclude that the Examiner erred in refusing to reject
independent claim 19 as obvious over the combination of Ellis, Imazato and
Wonnacott or Spivey. We also do not find patentable subject matter in
claims 20, 21, 23 and 24 that depend from claim 19, Ellis fairly disclosing
the limitations of these dependent claims.

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D. Conclusions With Respect to the Cross-Appeal of Requester II
1. Requester II has not shown that the Examiner erred in refusing
to reject claims 19-21, 23 and 24 as unpatentable over the combination of
Ellis and Imazato.
2. Requester II has shown that the Examiner erred in refusing to
reject claims 19-21, 23 and 24 as unpatentable over the combination of Ellis,
Imazato, and Wonnacott or Spivey.

E. Orders with Respect to the Cross-Appeal of Requester II
The refusals of the Examiner to adopt proposed rejections as appealed
by Requester II are AFFIRMED-IN-PART as follows:
1. The Examiner’s refusal to adopt the proposed rejection of
claims 19-21, 23 and 24 as unpatentable over the combination of Ellis and
Imazato is AFFIRMED.
2. The Examiner’s refusal to adopt the proposed rejection of
claims 19-21, 23 and 24 as unpatentable over the combination of Ellis,
Imazato, and Wonnacott or Spivey is REVERSED.

F. Summary with Respect to the Cross-Appeal of Requester II
Therefore, we AFFIRM-IN-PART the Examiner’s refusal to adopt the
proposed rejections of Requester II, with the Examiner’s refusal to reject
claims 19-21, 23 and 24 of the ‘673 patent as obvious over the combination
of Ellis, Imazato, and Wonnacott or Spivey being REVERSED and
denominated as a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.77(b).
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CONCLUSIONS IN THE APPEAL
1. At least one of the Examiner’s rejections of each of claims 1-
18, 22, 25-29 is AFFIRMED.
2. All of the Examiner’s rejections of claims 19-21, 23 and 24 are
REVERSED.
3. The Examiner’s refusal to adopt the proposed rejections of
Requester I is AFFIRMED-IN-PART, with the Examiner’s refusal to adopt
the proposed rejection of claims 11, 13 and 14 of the ‘673 patent as obvious
over the combination of Imazato, Ellis and Farquhar being REVERSED and
denominated as a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.77(b).
4. The Examiner’s refusal to adopt the proposed rejections of
Requester II is AFFIRMED-IN-PART, with the Examiner’s refusal to reject
claims 19-21, 23 and 24 of the ‘673 patent as obvious over the combination
of Ellis, Imazato, and Wonnacott or Spivey being REVERSED and
denominated as a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.77(b).

Requests for rehearing in this inter partes reexamination proceeding
are governed by 37 C.F.R. § 41.79.
This decision also contains new grounds of rejection pursuant to 37
C.F.R. § 41.77(b) which provides “[a]ny decision which includes a new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.” 37 C.F.R. § 41.77(b) also provides that the Patent
Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION,
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must exercise one of the following two options with respect to the new
grounds of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. …
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …
Should the Patent Owner elect to prosecute further before the
Examiner pursuant to 37 C.F.R. § 41.77(b)(1), in order to preserve the right
to seek review under 35 U.S.C. § 141 with respect to the affirmed rejections,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
If the Patent Owner elects prosecution before the Examiner and this
does not result in patentable claims, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejections, including any timely request for
rehearing thereof.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

AFFIRMED-IN-PART; 37 C.F.R. § 41.77(b)

ack
Appeal 2009-002578
Reexamination Controls 95/000,066 and 95/000,069
Patent US 6,789,673 B2

94

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