Ex Parte 6789673 et al

Board of Patent Appeals and Interferences

Mar 14, 2011

95000066 (B.P.A.I. Mar. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,069 12/03/2004 6789673 RO297004 8092
7590 03/15/2011
Daniel. D. Chapman, Esq.
JACKSON WALKER, LLP
112 E. Pecan Street
Suite 2400
San Antonio, TX 78205-1521
EXAMINER
FOSTER, JIMMY G
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/15/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,066 12/17/2004 6789673 04965.0039 7863
7590 03/15/2011
Daniel D. Chapman, Esq.
JACKSON WALKER, LLP
Suite 2400
112 E. Pecan Street
San Antonio, TX 78205-1521
EXAMINER
FOSTER, JIMMY G
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/15/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

MEADWESTVACO PACKAGING SYSTEMS, LLC
Requester I
and
GRAPHIC PACKAGING INTERNATIONAL, INC.
Requester II

v.

Patent of C. BROWN LINGAMFELTER
Patent Owner
____________________

Appeal 2011-000001
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Patent US 6,789,673 B22
Technology Center 3900
____________________

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

SONG, Administrative Patent Judge.

DECISION ON APPEAL3

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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STATEMENT OF THE CASE
This case has been returned to the Board for reconsideration of our
prior decision in Appeal 2009-002578 mailed January 12, 2010 (hereinafter
"Prior Decision"), and for issuance of a new decision pursuant to 37 C.F.R.
§ 41.77(f). We have jurisdiction under 35 U.S.C. §§ 134 and 315.
In the Prior Decision, we reversed the Examiner's refusal to reject
claims 11, 13 and 14 over the combination of Imazato, Ellis and Farquhar as
proposed and cross-appealed by Requester I (Prior Decision 76-79). We
also reversed the Examiner's refusal to reject claims 19-21, 23 and 24 over
the combination of Ellis, Imazato, and Wonnacott or Spivey as proposed and
cross-appealed by Requester II (Prior Decision 86-90). These rejections
were entered as NEW GROUNDS OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.77(b) (Prior Decision 83 and 91).
The Patent Owner filed a Request To Reopen Prosecution Before The
Examiner Under 37 C.F.R. § 41.77(b)(1) dated February 11, 2010
(hereinafter "Req. to Reopen"), amending claims 23 and 24 as well as
submitting additional evidence for consideration including supplemental
declarations and exhibits attached thereto. Requesters I and II submitted
comments, Requester I also submitting additional evidence. The Examiner
issued a Determination under 37 C.F.R. § 41.77(d) dated June 18, 2010
(hereinafter "Determination"), maintaining the entered rejections of the Prior
Decision (Determination 8).

3 The two-month time period for filing an appeal, as recited in 37 C.F.R. §
1.304 (see 37 C.F.R. § 1.983(b)(1)) begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
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The Patent Owner contends that the Examiner's Determination
maintaining these rejections is erroneous for various reasons, and has
submitted Patent Owner's Comments On The Examiner's Determination
dated July 16, 2010 (hereinafter "PO Comments"). Requester I submitted
comments on the Determination, and both Requester I and Requester II
submitted replies to the PO Comments. The Patent Owner submitted Patent
Owner's Reply to Requester II's Comments On Examiner's Determination
dated August 19, 2010.

ISSUES
The following issues have been raised in the record:
1. Whether a person of ordinary skill in the art would be dissuaded
from enlarging the top front dispensing opening of the carton in Imazato by
providing scores on the side walls thereof.
2. Whether a person of ordinary skill in the art, when adapting the
carton of Ellis for use with cans in a row/column arrangement, would further
modify the carton of Ellis to reduce the size of the dispenser by eliminating
the score on the top wall.
3. Whether the evidence as a whole establishes a nexus between
the claimed invention and the successes of, and praise for, the commercially
sold "Fridge Pack" and other like cartons.
4. Whether the Patent Owner has shown a long-felt but unsolved
need which has been satisfied by the claimed invention.
5. Whether the burden of rebutting existence of a nexus and
commercial success shifts to the Requesters and the Examiner in an inter
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partes reexamination proceeding if a prima facie showing has been made by
the Patent Owner.
6. Whether the reexamination statutes and rules preclude
consideration of evidence pertaining to commercial success and praise of the
commercially sold "Fridge Pack" and other like cartons as submitted by the
Requesters.
7. Whether the reexamination statutes and rules fail to meet the
Due Process requirements under the Fifth Amendment of the U.S.
Constitution.

ANALYSIS
Having reconsidered the matter, including the contentions of the
involved parties, the determinations of the Examiner, as well as the evidence
of record, we issue the present Decision declining the Patent Owner's request
to withdraw the rejections entered in the Prior Decision which is
incorporated herein. See 37 C.F.R. § 41.77(f). We address the Patent
Owner's various contentions infra to the extent that they are based on new
evidence, or as needed for disposition of the present case.

Rejection of Claims 11, 13 and 14
The Examiner's Determination maintains the rejection of claims 11,
13 and 14 as obvious over the combination of Imazato, Ellis and Farquhar
that was entered in the Prior Decision (Determination 8; see also Prior
Decision 76-79). In the Prior Decision, we concluded that it would have
been obvious to one of ordinary skill in the art to modify the "can dispensing
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opening at a top-corner of the carton [of Imazato] 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." (Prior Decision 78).
Relying on the Supplemental Declaration of Dr. Singh dated February
11, 2010 (hereinafter "Supp. Decl. Singh"), the Patent Owner contends that
it would not be obvious to modify Imazato in this manner because the
"common wisdom" in the art is "to make dispensing openings just large
enough for their intended purpose[,]" and to "minimize the size of
weakening features, such as score lines for dispensing openings or handle
features, to optimize strength." (Req. to Reopen 5; PO Comments 2; Supp.
Decl. Singh ¶¶ 16-19). The Patent Owner submitted various other prior art
references which purport to support this "common wisdom" (Supp. Decl.
Singh Exhibits I-L).
The parties, including the Examiner, disagree as to whether there is
such a "common wisdom" in the packaging art, whether the existence of
such wisdom has been sufficiently established, and what the prior art
references submitted as evidence by the Patent Owner teach and do not teach
(see, e.g., Determination 9-11 and 17-20). However, we think that it is self-
evident that presence of, or increasing the size of, perforations or scoring in
a given package will necessarily weaken the ultimate strength of the package
to some extent. The question is whether, knowing this fact, a person of
ordinary skill in the art would have been dissuaded from modifying Imazato
to provide scores on the sidewalls thereof. Stated more broadly, the question
is how strictly do those of ordinary skill in the art adhere to this "common
wisdom" in designing packages for cans?
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A package is inoperative as a package if it is not strong enough to
contain the contents therein, either because the material of the package is too
weak, and/or is over-weakened, for example, by providing too large or too
many perforations or scoring. A person of ordinary skill in the art would be
fully cognizant of this fact when designing a package that is sufficiently
strong to properly contain its contents during use. In this regard, the
evidence indicates that those of ordinary skill in the packaging art routinely
design openings for packages having different configurations that
incorporate perforations or scoring that is significantly larger than that
required for removing the cans. See Okajima v. Bourdeau, 261 F.3d 1350,
1355 (Fed. Cir. 2001) ("the absence of specific findings on the level of skill
in the art does not give rise to reversible error where the prior art itself
reflects an appropriate level and a need for testimony is not shown")
(citations omitted); Union Carbide Corp. v. American Can Co., 724 F.2d
1567, 1573 (Fed. Cir. 1984). In particular, Ellis, Imazato, Farquhar and
Cherry all incorporate openings which are larger than necessary to dispense
the cans therein. Arguably, this is also true with respect to Wonnacott,
Spivey and Kornick since the smallest opening for dispensing (and thus,
arguably resulting in the strongest package) would actually be shaped as a
circle, sized to correspond to the diameter of the can.
In view of the above considerations, we are not persuaded by the
Patent Owner's argument that the "common wisdom" in the art would
dissuade modification of Imazato to incorporate scoring in the side walls as
shown in Ellis and/or Farquhar. The Patent Owner's further assertion that
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Imazato specifically teaches against weakening the disclosed carton has
already been sufficiently addressed (Prior Decision 47).
We further observe that there appears to be a misunderstanding as to
the effect of declaration evidence submitted by experts such as Mr. Singh,
which were heavily relied upon by the Patent Owner as "establishing" that a
person of ordinary skill in the art would not make the proposed combination.
The mere fact that evidence has been submitted (by declaration or other
evidence) does not automatically resolve the obviousness question in the
Patent Owner's favor as the Patent Owner implies, but rather, such evidence
is evaluated and considered for its probative value. See In re Oetiker, 977
F.2d 1443, 1445 (Fed, Cir. 1992); Velander v. Garner, 348 F.3d 1359, 1371
(Fed. Cir. 2003). The Board has "broad discretion as to the weight to give
declarations offered in the course of prosecution." In re Am. Acad. of Sci.
Tech Center, 367 F.3d 1359, 1368 (Fed. Cir. 2004). Neither the Examiner
nor the Board is bound by statements of an expert in an Affidavit, but rather,
such evidence is evaluated and considered for its probative value, like all of
the other evidence in the record, to determine whether a claimed invention is
obvious or unobvious. See Velander v. Garner, 348 F.3d at 1371 ("It is
within the discretion of the trier of fact to give each item of evidence such
weight as it feels appropriate . . . In giving more weight to prior publications
than to subsequent conclusory statements by experts, the Board acted well
within that discretion"). Teachings of the prior art and objective evidence,
such as well-documented experimental test data, are, in our view, much
more persuasive and can be given more weight than conclusory statements
by experts. In the present case, sufficient objective evidence has not been
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submitted to establish as fact by a preponderance of the evidence that
impaired function of Imazato would result if the suggested modification
thereto was made, so that one of ordinary skill would be dissuaded from
making the proposed modification.

Rejection of Claims 19-21, 23 and 24
The Examiner's Determination also maintains the rejection of claims
19-21, 23 and 24 as obvious over the combination of Ellis, Imazato, and
Wonnacott or Spivey, that was entered in the Prior Decision (Determination
8; see also Prior Decision 86-90). In the Prior Decision, we concluded 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[,]" and that the claimed invention is merely "a
predictable variation of the carton of Ellis to accommodate an arrangement
of cans well known in the art." (Decision 87-88).
The Patent Owner disagrees because Ellis does not mention the
broader purpose articulated by the Board, that is, of providing a carton for
dispensing cans, and contends that Ellis does not provide "a reason for its
opening to be used with other can arrangements." (Req. to Reopen 10; PO
Comments 7). However, there is no rigid requirement to find a specific
teaching, suggestion or motivation in order to establish obviousness. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007). In our view, this
broader purpose of Ellis is clearly evident, and we decline to view a person
of ordinary skill as being merely an automaton. Id. at 421.
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The Patent Owner again relies on the Supplemental Declaration of Dr.
Singh to assert that the reason why Ellis provides the top wall opening is to
allow the user to reach the top, forward-most can which is spaced back from
the front wall due to the staggered arrangement and ordered dispensing
(Req. to Reopen 9-10). Hence, according to the Patent Owner, if the cans of
Ellis are arranged to have a row and column configuration, "there is no need
for Ellis's top wall opening, because there is no need to reach back to access
that 'first' can[,]" and "the common wisdom teaches not to use it, because, as
described above, enlarging openings increases package weakness, which is
contrary to fundamental design concerns." (Supp. Decl. of Singh ¶ 24;
Request 9).
This line of reasoning has been substantially addressed supra with
respect to the rejection based on Imazato wherein the "common wisdom"
argument was also raised. We do not think that a general understanding of
the impact of perforations or scoring on the strength of a carton would
dissuade one of ordinary skill in the art from utilizing the carton of Ellis with
its top front corner opening as a carton for containing cans that are arranged
in a row and column arrangement. We disagree with the Patent Owner that a
person of ordinary skill would be compelled to further modify the opening
of Ellis to delete the score on the top wall when adapting the carton of Ellis
for use with cans in a row/column arrangement. In this regard, the Patent
Owner does not provide any objective evidence showing that the carton of
Ellis would have insufficient strength for such use so as to dissuade the
person of ordinary skill in the art from such use, or compel its further
modification to delete the score on the top wall.
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The Patent Owner also argues that the secondary references do not
concern top corner consumer dispensing (Req. to Reopen 9-10; PO
Comments 7-8). However, this argument is unpersuasive since Imazato
does disclose top corner dispensing, and the other references are clearly in
the same packaging art and pertain to dispensing openings.
The Patent Owner further argues that a person of ordinary skill would
not use the carton of Ellis to contain cans in a row/column arrangement
because such an arrangement would result in the first can shooting out upon
the carton being opened (PO Comments 7). However, we do not find this
argument persuasive. The fact that there may be a disadvantage that results
from a combination does not preclude one of ordinary skill in the art from
making such a combination, 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 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."). In
this regard, we observe that Imazato utilizes a top corner opening which
presumably would have similar issues, and there is an established benefit to
providing a row/column arrangement over the arrangement of Ellis such as
reduction in the paperboard used.
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The Patent Owner's arguments based on the predetermined ordered
dispensing of Ellis (PO Comments 7) was previously addressed (Decision
88-90). In addition, whereas the Patent Owner has amended claims 23 and
24 (Req. to Reopen 3), these claims, as well as claims 20 and 21, ultimately
depend from independent claim 19 and are not argued separately.
Correspondingly, these claims remain rejected.
Finally, we note that Requester II contends that the entry of the
amendments to claims 23 and 24 broadens their scope which is proscribed
under 35 U.S.C. § 314(a), and the Patent Owner did not comply with 37
C.F.R. § 1.111(c) (Req. II Comments July 19, 2010, pgs. 2). However, we
observe that claims 23 and 24 ultimately depend from claim 19. Hence, we
fail to see how the amendments enlarge "the scope of the claims of the
patent." 35 U.S.C. § 314(a). We further fail to see the pertinence of 37
C.F.R. § 1.111 entitled "Reply by applicant or patent owner to a non-final
Office action" in the present instance where the dependent claims have been
amended in the context of reopening prosecution.

Extrinsic Evidence
Commercial Success and Praise
The Patent Owner refers to the evidence of record as supplemented by
the newly submitted documents to again assert non-obviousness of the
claimed invention (PO Comments 8-12; Req. to Reopen 6-8). However,
even when the evidence in the record is reconsidered together with the
Patent Owner's new evidence (itemized in Determination 6-7), we are still
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not persuaded of non-obviousness and decline the request to withdraw the
entered rejections.
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
the subject matter sought to be patented. As indicia of obviousness or
nonobviousness, these inquiries may have relevancy." Graham v. John
Deere Co., 383 U.S. 1, 17-18 (1966) (emphasis added). While clearly
relevant to the obviousness/non-obviousness determination, and while such
indicia must be considered, the mere existence of evidence of commercial
success and other extrinsic evidence is not dispositive. Richardson-Vicks
Inc. v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997) (citations omitted).
Rather, secondary considerations are only a part of the "totality of the
evidence" to be considered. See id.
In this regard, all of the evidence has to be considered for its quality
and probative value so that appropriate weight can be attributed thereto in
determining the obviousness or non-obviousness of the claimed invention,
and the ultimate determination of whether a claimed invention would have
been obvious or unobvious is a legal conclusion which is made based on
considering and weighing all of the facts in evidence. See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). As set forth in the Prior Decision, there
are requirements that a nexus be established between the evidence and the
claims, and that the evidence be commensurate with the scope of the claims
(see Decision 20-21 and citations therein). The newly submitted evidence is
substantively similar in character to the evidence previously submitted, and
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does not sufficiently address the deficiencies with respect to these
requirements so as to alter our prior conclusion. We elaborate on our
conclusion infra.
To be clear, our conclusion is not that the cartons commercially sold
under the names "Fridge Pack," "Fridge Mates," "Fridge Vendor," etc., have
not enjoyed commercial success or have not been praised in the beverage
industry. The evidence tends to show that these products have enjoyed
success and praise (see, generally, Decl. of Gourville and Supp. Decl. of
Gourville, and Exhibits attached thereto). However, the question is whether
such success is due to the claimed invention. As to the required nexus, the
submitted declarations and arguments made by the Patent Owner only focus
on selective portions of the evidence in the record rather than viewing the
evidence in its totality. There is substantial evidence in the record, including
within the evidence the Patent Owner itself submitted as various exhibits to
the declarations of Mr. Gourville, that tend to show that the success of the
commercial cartons can also be attributed to factors other than the invention
claimed.
In particular, the evidence indicates that the success of the cartons can
be attributed to the following:
1. Dispenser which remains attached to the carton so as to provide
a built-in basket (Decl. of Olejniczak, ¶¶ 4, 5; Decl. of Hoyme, ¶¶ 4, 10).
2. Ease of opening the dispenser by providing a finger opening or
a raised tab on the top wall to release the dispenser (Decl. of Gourville,
Exhibit I; Decl. of Hoyme, ¶¶ 4).
3. Capability of handling inserts (Decl. of Gourville, Exhibit I).
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4. Slim shape of the carton which allows it to be easily received in
the consumer's refrigerator (Decl. of Gourville, Exhibits G-J; Supp. Decl. of
Gourville, Exhibits D-H; Decl. of Olejniczak, ¶¶ 6).
5. Promotion and advertising of the Fridge Pack in an amount in
excess of $16,000,000 since 2001 (Decl. of Agulla ¶ 11; Supp. Decl. of
Gourville, Exhibit F).

Hence, in our view, when the evidence is considered in its totality, the
requisite nexus has not been established.
The Patent Owner relies on the fact that Pepsi acquired a license for
the reexamined patent as evidence of nonobviousness (Supp. Decl. of
Gourville ¶ 15), but the terms of the license are not explained, so the
evidence cannot be given much weight. For example, the license could have
been royalty-free or at a nominal royalty rate or small paid-up fee. The
Patent Owner further relies on the fact that cartons arranged in a 2x5
configuration without the top front corner dispenser opening was not
commercially successful (Decl. of Gourville ¶¶ 8, 23; Supp. Decl. of
Gourville ¶ 13, 38). However, this is not very persuasive because there is a
substantial difference between a carton having 10 cans and a carton having
12 cans which is the conventional number of cans included in a carton of a
beverage.
Moreover, the Patent Owner points out that Pepsi utilized a 3x4
configuration with an opening in the top corner as recited in the rejected
claims of the '673 patent resulting in 300 million 12-packs being sold (Supp.
Decl. of Gourville ¶ 8). However, the relevancy of 300 million 12-packs
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cannot be given much weight without some context as to the total number of
12-packs sold in the pertinent time period. See In re Huang, 100 F.3d 135,
140 (Fed. Cir. 1996)(a very weak showing of commercial success, if any, is
shown where there is no indication of whether the number of units sold
represents a substantial quantity in the relevant market).
We also observe that the 3x4 carton with an opening in the top front
corner as implemented by Pepsi is purported to have the features of the
rejected claims, and is the configuration/arrangement specifically illustrated
and described in the '673 patent (Supp. Decl. of Gourville ¶ 23 and Exhibit
B; '673 patent, col. 2, l. 41-col. 3, l. 35; Figs. 1-3). The evidence indicates
that this 3x4 configuration, which can be implemented into the then existing
cartons that utilize a 3x4 configuration, was not commercially successful by
the virtue of the fact that Pepsi, like the other bottling companies, modified
their production equipment and processes to utilize the 2x6 configuration at
very significant expense of approximately $500,000 per bottling plant,
which for Pepsi, amounted to $100,000,000 (Supp. Decl. of Gourville ¶ 23,
Exhibit J; Decl. of Hoyme, ¶¶ 6, 10-12; Decl. of Spivey, ¶ 7). Thus, the
evidence of lack of success with respect to the 3x4 configuration
incorporating the claimed invention, together with the above noted evidence
with respect to features and factors not related to the claimed invention at
issue, indicates a deficiency in the requisite showing of nexus between the
claimed invention and the success and praise. See In re GPAC, Inc., 57 F.3d
1573, 1580 (Fed. Cir. 1995).
The Patent Owner argues that it is the combination of the row and
column arrangement together with the corner opening as claimed in the '637
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patent that contributed to commercial success (PO Comments 9-10, 14).
The Patent Owner further argues that the "law does not require that success
be attributable solely to the claimed invention." (PO Comments 8). We
agree. To be clear, it is not our position that the evidence must show that the
claimed invention was the sole reason for any commercial success and
praise. It is also not our position that the opening positioned on the top front
corner of the carton did not contribute to the success of, and the praise for,
the commercial cartons.
However, it is the Patent Owner relying on extrinsic evidence who
must sufficiently establish a nexus between the claimed invention and the
evidence of success and praise. The weight that is given to the proffered
evidence must be based on the quality and the persuasiveness of the
evidence, and the evidence must be viewed in its totality. In the present
case, there is evidence that the success may have been largely due to other
factors, which together with the evidence that the 3x4 configuration with the
claimed corner opening was unsuccessful, significantly diminish the strength
of the Patent Owner's argument as to the nexus between the claimed feature
and the success. In addition, the statements of praise are more generally
directed to the commercial implementations of the carton in which the
dispenser may include other features, and are at least equally directed to the
general slender shape of the carton.
The Patent Owner argues that the Examiner has not considered the
fact that the 2x6 slim configuration is still in the row and column
arrangement which is the subject of the '637 patent (PO Comments 9-10).
However, this argument highlights the breadth of the claims and the fact that
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the evidence is not commensurate with their scope. In re Tiffin, 448 F.2d
791, 792 (CCPA 1971). An important aspect of the proof of nexus is that
the objective evidence must be commensurate in scope (coextensive) with
the claimed subject matter. See Joy Tech., Inc. v. Manbeck, 751 F. Supp.
225, 229-30 (D.D.C. 1990) (and cases cited therein), aff'd, 959 F.2d 226
(Fed. Cir. 1992). The claims are unreasonably broader in scope than the
objective evidence if a limitation recited in the claims is broader than the
limitation in the objective evidence, or if the evidence contains elements not
recited in the claims. Id.
As noted, the '637 patent illustrates and discusses only a 3x4 carton.
Claim 11 does not recite a row or column arrangement but implicitly
requires such arrangement by the recited dimension of the walls of the
carton, while claim 19 specifically recites "a row and column arrangement."
The evidence of success is directed solely to a 2x6 configuration with
elements not recited in the claims, and there is significant evidence to
indicate that the success may be attributable to these unclaimed features. In
this regard, a carton having a row and column (3x4) arrangement with the
opening at the top front corner was commercialized by Pepsi with the
claimed features, but the evidence indicates that this configuration was
dropped, at significant expense, in favor of the 2x6 configuration.
To be clear, we are not requiring evidence of commercial success for
every carton configuration that is within the scope of the claims at issue, or
even for multiple embodiments. We are also not dismissing the evidence of
commercial success and praise, or refusing to consider such evidence.
Rather, we are weighing the evidence of commercial success and praise
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together with the countervailing evidence of record and the scope of the
claims that tends to undermine the showing that such success and praise are
due to the claimed invention, to conclude that the entirety of the evidence is
insufficient to establish non-obviousness.
Hence, in considering the evidence in total, the evidence of success
and praise of the commercially sold "Fridge Pack" and similar cartons does
not outweigh the evidence of record pointing to the obviousness of the
claimed invention. See Asyst Technologies., Inc. v. Emtrak, Inc., 544 F.3d
1310, 1316 (Fed. Cir. 2008) ("[E]vidence of secondary considerations does
not always overcome a strong prima facie showing of obviousness.").

Long-Felt Need
Relying on the Supplemental Declaration of Mr. Gourville, the Patent
Owner contends that "[t]here was a long-felt but unsolved need in the soft
drink industry for an innovative container that would boost sales of soft
drinks in aluminum cans." (Supp. Decl. of Gourville ¶ 11; PO Comments
12). In this regard, Mr. Gourville refers to statements from Requester II
regarding the existence of such a need and the lack of success of alternate
designs (Supp. Decl. of Gourville ¶¶ 11-14).
Firstly, establishing long-felt need requires objective evidence
showing existence of a persistent problem recognized by those of ordinary
skill in the art for which a solution was not known. In re Gershon, 372 F.2d
535, 539 (CCPA 1967). Increasing sales is not a persistent problem or "a
long-felt but unsolved need." Rather, the need to increase sales is the
general goal and objective of businesses. Furthermore, to show non-
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obviousness through long-felt need, the invention must satisfy the long-felt
need. In re Cavanagh, 436 F.2d 491, 496 (CCPA 1971). It cannot be
reasonably asserted that the bottling companies including Coca-Cola and
Pepsi have satisfied this alleged "long-felt need" of boosting sales, and are
now content with their current sales attained by "Fridge Pack," etc.
The Patent Owner's assertion of long-felt need is not based on any
known technological problem recognized in the art for which a solution was
not known. Rather, the assertion appears to be that the claimed invention
provided a different packaging solution than previously used in the industry,
which, due to its commercial success, indicates that there was a need for
such a carton. Hence, the Patent Owner's assertion of "long-felt need" is
essentially that of commercial success. However, as discussed supra, there
is insufficient nexus between the claimed invention and the commercial
success, and the submitted evidence is not commensurate with the broad
scope of the claims.

Burden of Proof
The Patent Owner argues that, because inter partes reexamination
proceedings are somewhat similar to litigation proceedings, "the burden of
proof for commercial success and nexus should shift to the Patent Office and
requesters once a patent owner has established prima facie commercial
success and nexus." (PO Comments 17).
However, the Patent Owner does not direct us to any legal precedent
providing for such shifting of the burden of proof with respect to
commercial success evidence in a reexamination proceeding. Even if such
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shifting of burden of proof existed, the Patent Owner has not established the
requisite nexus between the claimed invention and the commercial success
as discussed supra. In this regard, we further note that even if there was a
shifted burden, the evidence sufficiently rebuts any prima facie showing of a
nexus exists between the claimed invention and the commercial success and
praise. Correspondingly, we decline to withdraw our rejection on this basis.

Improper Consideration of Requesters' Evidence
Ultra Vires
The Patent Owner argues that by considering of evidence submitted
by Requester I and Requester II, the USPTO engages in acts that are not
within the scope if its statutory authority and that such actions are ultra vires
(PO Comments 17-19). The Patent Owner contends that 35 U.S.C. §§ 301
and 311 authorizes reexamination of a patent based on prior art consisting of
patents or printed publications (see also 37 C.F.R. § 1.906). Hence, the
Patent Owner contends that the USPTO's authority (and thus, the Board's
authority) to consider Requesters' evidence is limited solely to evidence that
pertains to the prior art patents or printed publications. Hence, the Patent
Owner contends that consideration of various declarations submitted by
Requester I and Requester II was improper (PO Comments 18).
The pertinent portions of the statutes and the regulation cited by the
Patent Owner are set forth below.
35 U.S.C. § 301 Citation of prior art.
Any person at any time may cite to the Office in writing prior
art consisting of patents or printed publications which that
person believes to have a bearing on the patentability of any
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claim of a particular patent. If the person explains in writing
the pertinency and manner of applying such prior art to at least
one claim of the patent, the citation of such prior art and the
explanation thereof will become a part of the official file of the
patent….

35 U.S.C. § 311 Request for inter partes reexamination
(a) IN GENERAL.— Any third-party requester at any
time may file a request for inter partes reexamination by the
Office of a patent on the basis of any prior art cited under the
provisions of section 301.
(b) REQUIREMENTS.— The request shall—
(2) set forth the pertinency and manner of applying
cited prior art to every claim for which reexamination is
requested.
….

37 C.F.R. § 1.906 Scope of reexamination in inter partes
reexamination proceeding.
(a) Claims in an inter partes reexamination proceeding
will be examined on the basis of patents or printed
publications....

The Patent Owner's argument is not persuasive. The above-
reproduced statutes and regulation limit the type of evidence that can be
considered for instituting an inter partes reexamination, and the type of
evidence that forms "the basis" of any rejections of claims in a reexamined
patent. They do not specifically address the types of evidence that can be
considered during the reexamination proceeding.
In the present appeal, the reexamination was instituted based on prior
art consisting of patents or printed publications, and "the basis" of the
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rejections that we entered are combinations of this prior art (Decision 76-79,
83, and 86-91). The evidence objected to by the Patent Owner is not the
basis on which these claims are rejected. Rather, the evidence was
considered as being pertinent to the Patent Owner's assertions that the prior
art combination would not have been obvious based on secondary
considerations. Hence, we disagree that consideration of such evidence is
ultra vires.

Due Process
The Patent Owner further argues that "[t]he current inter partes
reexamination rules and procedure [] do not meet Due Process requirements"
under the Fifth Amendment of the U.S. Constitution (PO Comments 19). In
particular, the Patent Owner contends that the present rules and procedures
deprive it of a patent, which is a property right, with no opportunity to cross-
examine the declarants, no opportunity to conduct discovery to determine
veracity of the assertions in the declaration, and may have no opportunity to
rebut, especially in instances where the relevant evidence is exclusively
controlled by requesters (PO Comments 20).
However, the Board does not have the authority to address such
arguments, and the Patent Owner does not direct us to any precedent to the
contrary. See 35 U.S.C. § 6(b). Therefore, we do not address the Patent
Owner's argument.

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DECISION
In view of the above, the Patent Owner's request to withdraw the
previously entered rejections is DENIED.

DENIED

ack
cc:

Daniel D. Chapman, Esq.
JACKSON WALKER, LLP
Suite 2400
112 E. Pecan Street
San Antonio TX 78205-1521

Third Party Requesters:
R. Bruce Bower
Finnegan Henderson Farabow Garrett & Dunner LLP
3200 Sun Trust Plaza
303 Peachtree Street, NE
Atlanta, GA 30308-3201

James F. Vaughn
Womble, Carlyle, Sandridge & Rice PLLC
P.O. Box 7037
Atlanta, GA 30357-0037