Ex Parte Autterson

Board of Patent Appeals and Interferences

Aug 3, 2007

09921204 (B.P.A.I. Aug. 3, 2007)

The opinion in support of the decision being entered today was not written 1
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for publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHRISTOPHER S. AUTTERSON
____________________

Appeal 2007-2111
Application 09/921,2041
Technology Center 3700
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Decided: August 3, 2007
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Before: STUART S. LEVY, LINDA E. HORNER, and JOSEPH
FISCHETTI, Administrative Patent Judges.

LEVY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection
of claims 1 and 11. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

1 Application filed August 2, 2001. The real party in interest is Argent
Automotive Systems, Inc.
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Appellant invented a method of advertising and a shipping/packaging
container product. (Specification 3.) The method includes (id.) the steps of
providing a shipping/packaging container product, such as a
carton; providing on a first predetermined area of said
shipping/packaging container product a first advertisement of a
first party owning said shipping/packaging container product;
and providing on a second predetermined area of said
shipping/packaging container product a second advertisement
of a second party separate and distinct from said first party.

The container product substantially parallels the method steps.
We affirm.
Claim 1 is representative of the claimed invention and reads as
follows:

1. A method of advertising, comprising the steps of:

providing a corrugated or chipboard shipping/packaging
carton having an outer surface and an inner surface, said carton
having the shape of a rectangular parallelepiped;

visibly printing directly on a first predetermined area of
said outer carton surface of said shipping/packaging carton a
first visible advertisement for a first product of a first party
owning said shipping/packaging carton;

visibly printing directly on a second predetermined area
of said outer carton surface of said shipping/packaging carton a
second visible advertisement for a second product of a second
party separate and distinct from said first party, which second
product is not contained in or part of said carton;

said first and second visible advertisements are both
visibly printed on said shipping/packaging carton at the same
time;

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said second visible advertisement is visibly printed on
said second predetermined area of said shipping/packaging
carton which would otherwise be a blank area or void of any
visible printed details;

said second predetermined area is allotted by said first
party;

said second visible advertisement is provided by said
second party to said first party without said first party buying
said second visible advertisement;

said first party determines the size and location of said
second visible advertisement on said shipping/packaging
carton;

said second visible advertisement is visibly printed in
said otherwise blank area on a front, back, side, top or bottom
of said shipping/packaging carton; and

the size of said second visible advertisement is determined, at
least in part, by the shipping/packaging carton size.

The Examiner rejected claims 1 and 11 under 35 U.S.C. § 103(a)
(2004) as being unpatentable over Ford in view of Zimmerman and
Jenniches.
The Examiner has also rejected claim 11 as being unpatentable over
Kapp in view of Zimmerman.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ford US 2,054,596 Sep. 15, 1936
Zimmerman US 2,362,181 Nov. 07, 1944
Jenniches DE 27 23 357 A1 Nov. 30, 1978
Kapp US 5,246,161 Sep. 21, 1993
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We begin with the rejection of claims 1 and 11 under 35 U.S.C.
§ 103(a) as being unpatentable over Ford in view of Zimmerman and
Jenniches. We turn first to claim 1.
The Examiner contends that the shipping/packaging carton of Ford is
not made of corrugated cardboard. To overcome this deficiency of Ford, the
Examiner turns to Zimmerman for a teaching that corrugated cardboard was
a known material in the shipping/packaging art. (Final Rejection 2.) The
Examiner additionally asserts (Final Rejection 3) that the Ford-Zimmerman
combination lacks or does not expressly disclose the provision of a second
advertisement. The Examiner (id.) turns to Jenniches for a teaching of
providing the carton of Ford-Zimmerman with a second advertisement for a
second product of a second party separate and distinct from said first party.
The Examiner adds that it would have been obvious to print the
advertisements simultaneously in order to reduce the number of
manufacturing steps.
Appellant contends (Br. 13) that Ford does not disclose a
shipping/packing carton, nor a shipping/packaging carton as alleged by the
Examiner. Appellant additionally contends that Ford does not disclose a
shipping/packaging carton having an advertisement printed on the outer
carton surface, because Ford does not disclose an advertisement (Br. 13-14).
Appellant additionally contends that it would not have been obvious to form
the carton of Ford from corrugated cardboard in order to improve container
wall strength. Appellant additionally argues (Br. 15) that the combination
of Ford and Zimmerman fails to disclose, either expressly or impliedly, a
first advertisement and a second advertisement.
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Appellant further contends that Jenniches does not teach a
shipping/packaging carton but rather teaches a pack of cigarettes. Moreover,
Appellant contends (Br. 17) that none of the cited references are directed to
a shipping carton that advertises the products of the owner or sender of the
carton, as well as the products of another party.
Turning to claim 11, the Examiner's position (Final Rejection 4) is
that "the carton of Ford-Zimmerman-Jenniches discloses the claimed
invention by presentation." The Examiner explains (Answer 8) that
[A]ppellant questions the rejection based upon presentation. It
is respectfully asserted that the method of claim 1 is directed to
the provision of a final product. As such, when the method is
performed, it results in a final product or article. Accordingly,
when the method of Ford-Zimmerman-Jenniches is performed,
the article of claim 11 is met by presentation of the finished
method.

With respect to the rejection of claim 11 under 35 U.S.C. § 103(a) as
being unpatentable over Kapp in view of Zimmerman, the Examiner
contends (Final Rejection 4-5) that in view of Zimmerman's disclosure of
using corrugated cardboard material in the shipping/packaging art, it would
have been obvious to form the carton of Kapp from corrugated cardboard to
improve the container wall strength. The Examiner adds (Final Rejection 5)
that the printed matter in the claim is not functionally related to the substrate
and does not distinguish from the prior art. Appellant contends (Br. 19) that
Kapp does not disclose a shipping/packaging container, and that it would not
have been obvious to form the box of Kapp of corrugated cardboard because
Kapp's box is made of thin cardboard or reinforced paper. Appellant opines
that since card 22 is detachable from the remainder of the box, it would be
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contrary to the teachings of Kapp to reinforce the Kapp box with corrugated
cardboard.
ISSUES
With respect to the rejection of claims 1 and 11 under 35 U.S.C.
§ 103(a) as being unpatentable over Ford in view of Zimmerman and
Jenniches, the issue is whether the combined teachings and suggestions of
the prior art would have suggested all of the limitations of claims 1 and 11.
With regard to the rejection of claim 11 under 35 U.S.C. § 103(a) as
being unpatentable over Kapp in view of Zimmerman, the issue is whether
the combined teachings and suggestions of the prior art would have
suggested all of the limitations of claim 11.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427, 7 USPQ2d 1152, 1156 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. Appellant invented a method of advertising and a
shipping/packaging container product. (Specification 3.)
2. The method includes (id.) the steps of
providing a shipping/packaging container product, such as a
carton; providing on a first predetermined area of said
shipping/packaging container product a first advertisement of a
first party owning said shipping/packaging container product;
and providing on a second predetermined area of said
shipping/packaging container product a second advertisement
of a second party separate and distinct from said first party.

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The limitations regarding the carton of claim 11 substantially
parallels the language found in the method steps of claim 1.
From our review of Ford, we make the following findings of fact:
3. This invention pertains to boxes or cartons designed
primarily to hold and enclose a plurality of units of
merchandise of a fixed size and character, and from which one
or more units may be removed, from time to time. (Col. 1, ll.
1-5.)

4. The main object of the invention is to provide as a portion
of the carton, an element which may be brought into masking
position with reference to a numeral appearing on the carton
indicating the number of units initially packed in the carton, and
at the same time to present a surface upon which may be placed
a numeral indicating the number of units remaining within the
carton after removal of one or more of such units. (Col. 1, ll.
8-16.)
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5. [I]t may be said that all boxes are shipped from the factory.
(Col. 1, ll. 18-19.)

6. Hence, it is generally the custom to pack the higher number
of rings in each box or carton and for the salesman or jobber to
remove the desired number, close the box and return it with the
remaining rings to the shelf, the box still showing the original
index number, say “12”. (Col. 1, ll. 33-39.)

7. The box . . . ha[s] a surface upon which may be written, if
desired, the number of rings remaining in the box. (Col. 1, ll.
42-48.)

8. [T]he carton is made up in the instant case from a single
piece of cardboard. (Col. 2, ll. 25-26.)

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9. The box in the drawing is designed to have packed therein
say “12” piston rings of a given size, for instance, 31/4 + .0101/8 -
Compression. (Col. 2, ll. 32-34.)

From our review of Zimmerman, we make the following findings of
fact:
10. This invention relates generally to packages. More
particularly [the] invention relates to an improved construction
for shipping or mailing boxes, cases or packages specifically
adapted to carry an envelope or letter along with the shipment
of goods. (Pg. 1, Col. 1, ll. 1-6.)

11. The walls of the carton 10 may be made of the standard
type of construction comprising an inner corrugated cardboard
member 20 to which there is adhesively attached an inner sheet
of cardboard material 21 and an outer sheet of cardboard
material 22. (Pg. 1, Col. 2, ll. 22-27.)

12. [The] invention may be satisfactorily worked out in
connection with any type of carton, made from any suitable
type of material comprising layers or sheets adhesively joined.
(Pg. 2, Col. 1, ll. 12-16.)

From our review of Jenniches, we make the following findings of
fact:
13. The cigarette packet usable for all makes, carries
advertisements from a source other than the manufacturer on
the narrow sides. (Basic Abstract. ¶ 1.)

14. The system enables the manufacturer to reduce his costs by
providing publicity for other firms who for their part have the
opportunity to reach an increased number of consumers.
Printed matter can be applied subsequently by using the
adhesive labels, or can be directly printed on the packet. (Basic
Abstract, ¶ 2.)
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15. CIGARETTE PACK, WHOSE BOTH NARROW SIDES
ARE PLACED AT THE DISPOSAL OF ADVERTISERS OF
OTHER BRANCHES [OF TRADE, INDUSTRY, BUSINESS
etc] (Translation, p. 1 Title) (All text and emphasis original.)

16. The cigarette packs are characterized in that the imprint or
stamp of an advertiser from another branch [of trade, business,
industry, services, etc] appears on the narrow sides.
(Translation, p. 1 ¶ 2) (All text original.)

17. Purpose: In the case of these cigarettes packs [boxes], both
narrow sides are not imprinted – as until recently- with the
imprint or stamp of the cigarette-maker but are kept free for
advertisement imprints of other advertiser, in order to be able to
place therein their advertisements. (Translation, p. 2 ¶ 3) (All
text original.)

18. [T]he cigarette manufacturer significantly increases its
profit by making available the advertisement space for fees or
remuneration. (Translation, p. 3, ll. 3-5.)

From our review of Kapp, we make the following findings of fact:
19. Towards this goal, cereal boxes, for example, often include
cut-out cards or other associated paraphernalia which are
desired by children. (Col. 1, ll. 24-27.)

20. Both sides of the collectible card contain indicia, with one
side of the card preferably depicting an illustration and an
opposite side of the card including a description of the
illustration and other information associated with the
illustration and with respect to a numbering of a particular
series of collectible cards. (Col. 1, ll. 46-50.)

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21. [P]referably, the box is made of thin cardboard or
reinforced paper. (Col. 2, ll. 35-36.)

22. The other exposed surfaces of the box includes advertising
indicia to urge the consumer to buy the contained product with
the additional benefit of having a collectible card storable
within the empty box. (Col. 3, ll. 3-6.)

23. It is an object of the present invention to induce purchasers
of a product contained in a box. (Col. 1, ll. 34-35.)

PRINCIPLES OF LAW
Obviousness
A claimed invention is unpatentable if the differences between it 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.” 35 U.S.C. § 103(a) (2000); In re Kahn, 441 F.3d 977, 985, 78
USPQ2d 1329, 1334 (Fed. Cir. 2006) (citing Graham v. John Deere Co.,
383 U.S. 1, 13-14, 148 USPQ 459, 464-65 (1966)). In Graham, the Court
held that that the obviousness analysis begins with several basic factual
inquiries: “[(1)] the scope and content of the prior art are to be determined;
[(2)] differences between the prior art and the claims at issue are to be
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.”
383 U.S. at 17, 148 USPQ at 467. After ascertaining these facts, the
obviousness of the invention is then determined “against th[e] background”
of the Graham factors. Id. at 17-18, 148 USPQ at 467.
The Federal Circuit has repeatedly recognized that to establish a prima
facie case of obviousness, the references being combined do not need to
explicitly suggest combining their teachings. See e.g., Kahn, 441 F.3d at
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987-88, 78 USPQ2d at 1336 (“the teaching, motivation, or suggestion may
be implicit from the prior art as a whole, rather than expressly stated in the
references”); and In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502
(Fed. Cir. 1988) (“for the purpose of combining references, those references
need not explicitly suggest combining teachings”). The court recently noted,
An explicit teaching that identifies and selects elements from
different sources and states that they should be combined in the
same way as in the invention at issue, is rarely found in the
prior art. As precedent illustrates, many factors are relevant to
the motivation-to-combine aspect of the obviousness inquiry,
such as the field of the specific invention, the subject matter of
the references, the extent to which they are in the same or
related fields of technology, the nature of the advance made by
the applicant, and the maturity and congestion of the field.
In re Johnston, 435 F.3d 1381, 1385, 77 USPQ2d 1788, 1790 (Fed. Cir.
2006).
The Supreme Court has provided guidelines for determining obviousness
based on the Graham factors. KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 82
USPQ2d 1385 (2007). “A combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” Id. at 1731, 82 USPQ2d at 1396. “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.” Id. 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 that person’s
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skill.” Id. at 1740, 82 USPQ2d 1396. “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.” Id. at 1742, 82 USPQ2d at 1397.
ANALYSIS
From the description of Ford (fact 5) that the boxes are shipped from
the factory with the number of rings and the size thereof shown on one face
of the box, we find that the product is shipped in the box and not put into
another container for shipping as advanced by Appellant (Reply Br. 5). We
find Appellant’s assertion (id.) that "common sense also dictates that one
would not ship the piston rings in the same box without an outer or larger
container" to be unsupported by any convincing evidence in the record. In
any event, even if the box of Ford was placed into another box for shipping,
the product is still shipped in box 1.
In addition, from the description of Ford (facts 5-6) that the box or
carton that holds the rings is shipped, we find that the box or carton 1 of
Ford is a shipping/packaging carton.
Moreover, from the description of Ford (fact 8) that the box or carton
is made from a single piece of cardboard, and the description of Zimmerman
(facts 10 and 11) that the shipping or mailing container can be made from
any type of any standard type of construction comprising corrugated
cardboard, we find that an artisan would have been motivated to make the
cardboard box of Ford from corrugated cardboard.
Additionally, from the description of Jenniches (fact 13) that the
cigarette package carries advertisements from a source other than the
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manufacturer on the narrow sides, we find that the manufacturer will
advertise the product on the front of the package and leave the sides of the
product for advertisements from other manufacturers. From the description
of having the manufacturer's advertisement on one portion of the package
and the advertisement of another manufacturer on another predetermined
area of the package, we find that an artisan would have been motivated to
place advertisements of the manufacturer of the rings and other
manufacturers on the package of Ford.
We are not persuaded by Appellant's assertion (Br. 13-14 and Reply
Br. 2) that Ford does not disclose an advertisement on an outer surface of the
carton. As illustrated in Fig. 1 of Ford, and as found in fact 9, the box
illustrates the number, size, and type of rings in the box. As noted by the
Examiner (Answer 5) Ford indicates (p. 1, ll. 17-25) that when stacked on
the shelf, the descriptive matter on the box is exposed. From the description
in Ford that the descriptive matter is exposed, and the description (fact 6)
that when rings are removed, the number of remaining rings is displayed on
the box, we find that the descriptive matter in the box is an advertisement to
customers of how many rings are in the box and for sale. In any event, as
we found, supra, Jenniches suggests having an advertisement from a
manufacturer on one portion of the carton and an advertisement from
another manufacturer on another portion of the carton.
Nor are we persuaded by Appellant's contention (Br. 15) that the
combination of Ford and Zimmerman fails to disclose a first advertisement
and a second advertisement because Jenniches suggests the first and second
advertisements from different manufacturers.
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Nor are we persuaded by Appellant's contention (Br. 17 and Reply Br.
6) that Jenniches does not teach a shipping/packaging carton but rather
teaches a pack of cigarettes. Firstly, Ford teaches the use of a
shipping/packaging carton. Secondly, Jenniches teaches a cigarette packet
which is a package for the cigarettes. The cigarette package, usually in the
form of a box, is a carton for the cigarettes. Because the carton is capable of
being shipped, either alone, or in a larger package, it is a shipping/packaging
carton. We find nothing in the record that would preclude a carton placed
inside a larger carton or container for shipping from being considered to be a
shipping carton.
Nor are we persuaded by Appellant's contention (Br. 17) that none of
the references are directed to a shipping/packaging carton that advertises the
products of the owner or sender, as well as the products of another party. As
we found, supra, Ford describes a shipping/packaging carton, and Jenniches
describes a package having advertisements from both the product
manufacturer and another manufacturer.
Nor are we persuaded by Appellant's contention (Br. 17) that "[i]f the
claim 1 invention were in fact obvious, those skilled in the art would have
implemented it by now." Appellant's contention blurs the distinction
between § 102 and § 103 because Appellant is in effect arguing that since
the invention is not anticipated, it is therefore non-obvious. See, Tokyo
Shiabura Elec. Co., Ltd. v. Zenith Radio Corp., 548 F.2d 88, 95, n. 21, 193
USPQ 73, 80, n. 21 (3rd Cir. 1977).
Nor are we persuaded by Appellant's assertion (Br. 18) that claim 1
solves and is directed to a different problem than that of the cited references.
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Appellant directs us to In re Wright, 848 F.2d 1216, 6 USPQ2d 1959 (Fed.
Cir. 1988), in support of Appellant's position. In In re Dillon, 919 F.2d 688,
693-94, 16 USPQ2d 1897, 1902 (Fed. Cir. 1990), the court, in an in banc
decision, overruled the holding in In re Wright, relied upon by Appellant.
Appellant [Dillon] cited In re Wright, 848 F.2d at 1219, 6 USPQ2d at 1961,
for the proposition that a prima facie case of obviousness requires that the
prior art suggest the claimed compositions’ properties and the problem the
applicant attempts to solve. Dillon, 919 F.2d at 692-93, 16 USPQ2d at 1901.
Appellant Dillon asserted that none of the references relates to the problem
she confronted, Dillon, 919 F.2d at 693-94, 16 USPQ2d at 1902. The court
stated that:
it is not necessary in order to establish a prima facie case of
obviousness that both a structural similarity between a claimed and
prior art compound (or a key component of a composition) be shown
and that there be a suggestion in or expectation from the prior art that
the claimed compound or composition will have the same or a similar
utility as one newly discovered by applicant. To the extent that
Wright suggests or holds to the contrary, it is hereby overruled.

Dillon, 919 F.2d at 692-93, 16 USPQ2d at 1901.
The Supreme Court’s statement in KSR that “The first error of the
Court of Appeals in this case was to foreclose this reasoning by holding that
courts and patent examiners should look only to the problem the patentee
was trying to solve. 119 Fed. Appx., at 288. The Court of Appeals failed to
recognize that the problem motivating the patentee may be only one of many
addressed by the patent's subject matter. The question is not whether the
combination was obvious to the patentee but whether the combination was
obvious to a person with ordinary skill in the art. Under the correct
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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.” 127 S.Ct. 1727, 1742.

Nor are we persuaded by Appellant's assertion (Br. 18) that the cited
references are from different fields than that of the claim 1 invention, and
this factor weighs against their use in a rejection. The test for analogous art
is that the references are either in the same field of invention, or that they are
reasonably related to the problem that Appellant is seeking to overcome.
Here, we find that Jenniches is directed to a package having two sets of
advertisements, one from the manufacturer of the product, and the other
from another manufacturer. The problem of increasing advertising revenue
by setting aside a portion of a package for advertising by another
manufacturer is the same problem that Appellant is solving.
Nor are we persuaded by Appellant's contention (id.) that "the fact
that the last OA resorts to three prior art references in an effort to allege the
unpatentability of claim 1, is an indication in and of itself that the claim 1
invention is not obvious." Appellant's argument is totally lacking in merit.
As correctly noted by the Examiner (Answer 8) "reliance on a large number
of references in a rejection does not, without more, weigh against the
obviousness of the claimed invention." As stated by the court in In re
Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1889 (Fed. Cir. 1991), "[t]he
large number of cited references does not negate the obviousness of the
combination, for the prior art uses the various elements for the same
purposes as they are used by appellants, making the claimed invention as a
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whole obvious in terms of 35 U.S.C. § 103.” We do not consider three
references to be a large number of applied references.
From all of the above, we hold that the combined teachings and
suggestions of Ford, Zimmerman, and Jenniches would have suggested to an
artisan the subject matterof claim 1, for the reasons advanced by the
Examiner and amplified by our comments, supra.
We turn next to claim 11. At the outset, we make reference to our
findings, supra, with respect to the teachings and suggestions of Ford,
Zimmerman, and Jenniches. We note the assertion of the Examiner (Answer
8) to the effect that upon carrying out the method of the applied prior art, as
advanced in the rejection of claim 1, the article of claim 11 results from the
method. Appellant asserts (Br. 18) that "the carton of Ford-Zimmerman-
Jenniches does not disclose the claim 11 invention based on the arguments
set forth above by [A]ppellant with respect to claim 1.” Accordingly, we
hold that the combined teachings and suggestions of Ford, Zimmerman, and
Jenniches would have suggested to an artisan the limitations of claim 11 for
the same reasons as we found claim 1 to be met by the applied prior art.
We turn next to the rejection of claim 11 under 35 U.S.C. § 103(a) as
being unpatentable over Kapp in view of Zimmerman. The Examiner's
position can be found on pages 4-6 of the Final Rejection. From our review
of Kapp, we find that Kapp describes a box having a product inside (fact
23). We further find that Kapp describes the box as being made from
cardboard (fact 21). From the fact that the product is inside the box, we find
the box to be a package containing the product. Since the box is capable of
being shipped we find the box of Kapp to be a shipping/packaging carton.
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From the description of Zimmerman that a shipping/packaging carton (fact
10) can be made of corrugated cardboard (fact 12), we find that an artisan
would have considered it obvious to have formed the box of Kapp out of
cardboard. In addition, we find that Kapp describes plural advertisements on
the exposed surfaces of the box (fact 22). Thus, we agree with the
Examiner (Final Rejection 5) that the claim differs from the combination of
Kapp and Zimmerman only by the specific arrangement and/or content of
the indicia (advertisements). We add that the claim also recites that the first
advertisement is for a product of a party owning the carton, and that the
second advertisement is of a second party whose product is not in the carton.
The claim additionally recites that both advertisements are printed on the
carton and that the second advertisement is in an area that would otherwise
be void of advertising. Moreover, the claim recites that the second
advertisement area is allotted by the first party, and that the first party does
not buy the second party's advertisement. The claim additionally recites that
the first party determines the size and location of the second advertisement,
and that the size of the second advertisement is determined, at least in part,
by the size of the carton.
From our consideration of the claim as a whole, we agree with the
Examiner (Final Rejection 5) that because the printed matter is not
functionally related to the substrate (carton), the printed matter, based upon
the specific facts of this case, does not patentably distinguish the claimed
invention from the prior art. In our view, the size, location, and ownership
of the advertisements would have been obvious to an artisan as predictable
results of familiar elements according to known methods, as advanced by the
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Examiner. As stated by the court in KSR Int’l v. Teleflex Inc., 127 S.Ct.
1727, 82 USPQ2d 1385 (2007) “[a] combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results. Id. at 1731, 82 USPQ2d at 1396.
We are not persuaded by Appellant's contention (Br. 23) questioning
why it would have been obvious to have a first party own the
shipping/packaging carton. If a company placed a product of their company
in a carton for shipping, an artisan would have been motivated to place the
name of the company on the carton as an advertisement. This is well known
to an artisan in the field of placing advertising on shipping cartons. For
example, if Sony Corp. placed a television in a carton for shipping to a
distributor or buyer, they would know to place the name Sony on the carton.
Nor are we persuaded by Appellant's contention (id.) questioning why
a first party would provide an advertisement from a second, distinct party.
It is well known in Nascar and in cycling, etc. to have multiple
advertisements on products. From this knowledge, an artisan would have
considered it obvious to place different advertisements on packages.
Nor are we persuaded by Appellant's contention (id.) questioning
why it would have been obvious to have a first party determine the size and
location of a second party's advertisement. If a first party is allowing a
second party to advertise their product on the first party's package, it is
inherent that the first party will determine how much advertising space to
allow the second party to have.
Nor are we persuaded by Appellant's contention (id.) questioning
why it would have been obvious to place an advertisement in an area that
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would otherwise be blank. Aside from the fact that Ford teaches this feature,
we fail to see how placing an advertisement in an area that would otherwise
be blank would distinguish a claim from the prior art. An artisan would be
aware to place advertisements wherever desired, including both areas that
would have had other indicia as well as areas that would have otherwise had
no other indicia.
From all of the above, we are not convinced of any error on the part of
the Examiner in rejecting claim 11 under 35 U.S.C. § 103(a) as being
unpatentable over Kapp in view of Zimmerman.

CONCLUSION OF LAW
On the record before us, Appellant has failed to establish error on the
part of the Examiner in rejecting claims 1 and 11 under 35 U.S.C. § 103(a)
as being unpatentable over Ford in view of Zimmerman and Jenniches, and
has failed to show error on the part of the Examiner in rejecting claim 11
under 35 U.S.C. § 103(a) as being unpatentable over Kapp in view of
Zimmerman. The rejection of claim 1 and the rejections of claim 11 under
35 U.S.C. § 103(a) are sustained.

DECISION AND ORDER
The Examiner's decision to claims 1 and 11 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).

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AFFIRMED

vsh

WEINER & BURT, P.C.
P.O. BOX 186
HARRISVILLE MI 48740
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