Ex Parte Culpepper

Board of Patent Appeals and Interferences

Oct 10, 2008

10962382 (B.P.A.I. Oct. 10, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte
WILL L. CULPEPPER
__________

Appeal 2008-3830
Application 10/962,382
Technology Center 3700
__________

Decided: October 10, 2008
__________

Before DEMETRA J. MILLS, RICHARD M. LEBOVITZ, and JEFFREY
N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
composite carton for use in a packaging machine which the Examiner has
rejected as anticipated and obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

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Application 10/962,382

Background
“Substantially tubular-shaped cartons (also called sleeve-type cartons)
are often used for packaging multiples of articles such as beverage cans or
bottles” (Spec. 1). The Specification notes that “[s]uch cartons are often
packaged in a continuous-motion packaging machine wherein a continuous
stream of articles such as beverage cans is loaded into one or more ends of a
continuous stream of open-ended cartons” (Spec. 1).
Statement of the Case
The Claims
Claims 7-20 are on appeal. We will focus on claims 7 and 10, which
are representative and read as follows:
7. A composite carton for use in a packaging machine comprising flight
bars having a pitch, the composite carton comprising:
a first individual carton comprising an open end having a first width:
a second individual carton comprising an open end having a second
width,
wherein the first carton and the second carton are detachably affixed
to one another, so that the combined width of the first width of the open end
of the first carton and second width of the open end of the second carton is
equal to the pitch of flight bars and so that said detachably affixed first
carton and second carton are collapsible as if a single carton.

10. The composite carton of claim 7, wherein the first width of the open
end of the first carton is different from the second width of the open end of
the second carton.

The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Rockefeller US 3,252,646 May 24, 1966
Smith et al US 3,447,733 Jun. 3, 1969
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Gosling US 3,677,458 Jul. 18, 1972
Yamaguchi US 4,101,034 Jul. 18, 1978

The issues
The rejections as presented by the Examiner are as follows:
A. Claims 7-9, 14-16, and 18 stand rejected under 35 U.S.C. § 102(b), as
being anticipated by Gosling (Ans. 3).
B. Claims 7-9, 14-16, and 18 stand rejected under 35 U.S.C. § 102(b), as
being anticipated by Rockefeller (Ans. 3).
C. Claims 7-9, 11, and 14-18 stand rejected under 35 U.S.C. § 102(b), as
being anticipated by Smith (Ans. 3).
D. Claims 10, 12, 13, 19, and 20 stand rejected under 35 U.S.C. § 103(a),
as being obvious over Gosling, Rockefeller, Smith, and Yamaguchi (Ans. 4).
A. 35 U.S.C. § 102(b) rejection over Gosling
The Appellant argues that
Gosling does not disclose individual first and second cartons or
a plurality of individual cartons detachably affixed to one
another. Gosling discloses “a pair of article holding
compartments joined to a common panel” in contrast to
applicant's individual first and second cartons or plurality of
individual cartons detachably affixed to one another.

(App. Br. 9.) Appellant then contends that the “distinction between the
disclosure of Gosling and the claimed subject matter of the present invention
is further demonstrated by the fact that the carton of the present invention
provides the flexibility to package pre-existing, individual cartons of varying
sizes on a machine set to a predetermined pitch P” (App. Br. 9).
The Examiner responds that the “claiming of ‘individual’ cartons as
part of a composite carton does not limit the composite carton to initially
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being formed from two separate cartons” (Ans. 5). The Examiner argues
that the Gosling carton is an “‘individual’ carton[] insofar as . . . the
structure of a carton [is] individual to itself. Whether they are initially
separate or not is not considered to affect whether they are ‘individual’ or
not within the composite carton being claimed” (id. at 5).
In view of these conflicting positions, we frame the anticipation issue
before us as follows:
Does Gosling teach a composite carton with two cartons each having
an open end with a width which are detachably affixed to one another?
Findings of Fact (FF)
1. Gosling teaches a “twin carton which is adapted to be separated
into two cartons. Essentially the carton of the invention consists of a pair of
article holding compartments joined to a common panel” (Gosling, col. 1, ll.
39-42).
2. Gosling teaches that “the carton can be formed from a blank cut
from a foldable sheet material” (Gosling, col. 2, ll. 15-16). Gosling shows
the blank, in Figure 1, where the first and second carton are collapsed as if a
single carton (Gosling, Fig. 1). Figure 1 is reproduced below.
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“FIG. 1 is a plan view showing the inside face of a foldable blank from
which a twin carton is formed” (Gosling, col. 2, ll. 32-33).
3. Gosling discloses the cartons in Figure 2, reproduced below, which
show a first carton comprising an open end with a first width and a second
carton comprising an open end with a second width.

“FIG. 2 is a perspective view of the carton erected for loading bottles
through an open end thereof” (Gosling, col. 2, ll. 34-35).
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4. Gosling teaches that “[i]f the retailer has a demand only for half
a carton, he simply removes the tear-strip 28 by pulling the tab 29 leaving
two smaller cartons as shown in FIG. 4” (Gosling, col. 3, ll. 26-28).
5. Gosling teaches that the first and second carton are detachably
affixed to one another, where the “end flaps hold the two compartments
firmly together while they are still joined by the common panel, but each
flap will readily split along its line of weakness when the carton is being
split into two sections” (Gosling, col. 1, ll. 53-57).
A. Discussion of 35 U.S.C. § 102(b) over Gosling
Gosling teaches a composite carton with a first and second individual
carton which comprises open ends having widths (FF 1, 3). Gosling teaches
that the cartons are detachably affixed to one another (FF 4-5). Gosling
teaches that the cartons can be collapsed as if a single carton (FF 2).
In analyzing claim 7, our mandate is to give claims their broadest
reasonable interpretation. See, e.g., In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000) (“[D]uring examination proceedings, claims are given their
broadest reasonable interpretation consistent with the specification.”).
Appellant’s Specification does not define the term “detachably
affixed”. Therefore, we reasonably interpret the claim using the ordinary
meaning of the phrase “detachably affixed” as any attachment between the
two cartons which may be detached. We find that Gosling clearly teaches
two cartons which are “detachably affixed” to one another (FF 4-5).
We are not persuaded by Appellant’s argument that “the Gosling
invention discloses a different structure that does not provide the advantages
of the present invention” (App. Br. 9). However, the claims lack any
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particular structural elements which differentiate the cartons of Gosling from
those claimed. See In re Omeprazole Patent Litigation, 483 F.3d 1364, 1372
(Fed. Cir. 2007) (“Absent some clear intent to the contrary, this court does
not import examples from the specification into the claims.”)
We also do not find that Appellant’s argument differentiates Gosling
because “the carton of the present invention provides the flexibility to
package pre-existing, individual cartons of varying sizes on a machine set to
a predetermined pitch P” (App. Br. 9). This argument relies upon the
intended use of the carton “in a packaging machine comprising flight bars
having a pitch” (see Claim 7). In Sullivan, the “applicant conceded that his
composition was distinguished from the composition disclosed in a prior art
patent only by the statement of intended use. Our predecessor court held
that that intended use for the known composition could not render the claim
patentable”. In re Sullivan, 498 F.3d 1345, 1353 (Fed. Cir. 2007). Here, the
only difference between the carton of Gosling and that of claim 7 is the
intended use, which Sullivan states does not render the claim patentable.
Further, we agree with the Examiner that the Gosling carton “is clearly
capable of being used with flight bars in a packaging machine where the
flight bars are appropriately sized to the composite carton. The claims are
not limited to any particular size of flight bars and do not set forth any size
which would define over the size of the carton” (Ans. 5).
We affirm the rejection of claim 7 as anticipated by Gosling.
Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also affirm the rejections
of claims 8, 9, 14-16, and 18 as these claims were not argued separately.
B. 35 U.S.C. § 102(b) rejection over Rockefeller
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The Examiner argues that “Rockefeller disclose[s] a composite carton
formed by first and second individual cartons (see . . . figs. 4 and 5 in
Rockefeller). The cartons are detachably affixed to one another via the
perforations (. . . 50 in Rockefeller)” (Ans. 3). The Examiner further
contends that “[t]he cartons in . . . Rockefeller are ‘individual’ cartons
insofar as they each include all the structure of a carton individual to itself.
Whether they are initially separate or not is not considered to affect whether
they are ‘individual’ or not within the composite carton being claimed”
(Ans. 5).
Appellant argues that “Rockefeller discloses a body which is a shell
that receives sleeves that define rectangular unit cells. Rockefeller does not
disclose elements that are the equivalent of applicant's individual cartons
detachably affixed to one another” (App. Br. 10). Appellant further
contends that “Rockefeller teaches that each sleeve of that invention has its
outer side wall adhered to the side of the shell-like container body 30” (id.).
In view of these conflicting positions, we frame the anticipation issue
before us as follows:
Does Rockefeller teach a composite carton with two cartons each
having an open end with a width which are detachably affixed to one
another?
Findings of Fact
6. Rockefeller teaches “a novel shipping container assembly
having such internal structure . . . that it may be cut away for display of the
product, or it may be subdivided into individual units each capable of being
cut away for display of the product” (Rockefeller, col. 1, ll. 14-19).
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7. Rockefeller teaches that the container “is preferably fabricated
for flat-folded shipment in collapsed condition” (Rockefeller, col. 2, ll. 1-2).
8. Rockefeller teaches, regarding Fig. 6, that the “container
assembly 21 may be speedily subdivided into two complete container units
each closed and capable of retaining the boxes in place as for shelf storage
or further handling, by cutting through the vertical plane containing score
lines 50 and seams 48” (Rockefeller, col. 3, ll. 3-7).
9. Rockefeller discloses the cartons in Fig. 6 which is reproduced
below.

“FIGURE 6 is a substantially perspective view showing a subdivided
container assembly unit with the upper portion removed for display”
(Rockefeller, col. 1, ll. 52-54).
10. Rockefeller teaches that the “container assembly may be
speedily subdivided into two complete container units each closed and
capable of retaining the boxes in place as for shelf storage or further
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handling, by cutting throught the vertical plane containing score lines 50 and
seams 48” (Rockefeller, col. 3, ll. 3-7).
11. Rockefeller teaches a container with individual cartons having a
first and second width as shown in Fig. 8, reproduced below.

“FIGURE 8 is a generally perspective view showing the container
assembly of FIGURE 7 ready for filling and closing” (Rockefeller, col. 1, ll.
58-60).
B. Discussion of 35 U.S.C. § 102(b) over Rockefeller
Rockefeller teaches a carton with subdivisions which is collapsible as
if a single carton (FF 6-9). Rockefeller further teaches the “detachably
affixed” requirement by teaching that the “container assembly 21 may be
speedily subdivided into two complete container units each closed and
capable of retaining the boxes in place for shelf storage or further handling,
by cutting through the vertical plane containing score lines 50 and seams 48”
(Rockefeller, col. 3, ll. 3-7; FF 8). Rockefeller also teaches the open ends
with a first and second width (FF 11). We agree with the Examiner that
Rockefeller anticipates claim 7.
We are not persuaded by Appellant’s argument that “Rockefeller does
not disclose elements that are the equivalent of applicant's individual cartons
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detachably affixed to one another” (App. Br. 10). As we discussed supra,
Appellant’s Specification does not define “detachably affixed”. In our
opinion, the statement by Rockefeller that the “container assembly may be
speedily subdivided into two complete container units each closed and
capable of retaining the boxes in place as for shelf storage” (Rockefeller,
col. 3, ll. 3-5) is reasonably interpreted as satisfying the “detachably affixed”
requirement, since the two units in Fig. 5 are attached to one another by the
container and then capable of being separated as shown in Fig. 6 (FF 10).
See, e.g., In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000) (“During
examination proceedings, claims are given their broadest reasonable
interpretation consistent with the specification.”).
We also do not find persuasive Appellant’s argument that “the carton
of the present invention as claimed is distinct from Rockefeller for the
reasons discussed above and it is the structural distinction that enables it to
be used in machines with flight bars having a pitch P” (App. Br. 10). This
argument relies upon the intended use of the carton “in a packaging machine
comprising flight bars having a pitch” (see Claim 7). See In re Sullivan, 498
F.3d 1345, 1353 (Fed. Cir. 2007). Further, we agree with the Examiner that
the Rockefeller carton “is clearly capable of being used with flight bars in a
packaging machine where the flight bars are appropriately sized to the
composite carton. The claims are not limited to any particular size of flight
bars and do not set forth any size which would define over the size of the
carton” (Ans. 5).
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We affirm the rejection of claim 7 as anticipated by Rockefeller.
Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also affirm the rejections
of claims 8, 9, 14-16, and 18 as these claims were not argued separately.
C. 35 U.S.C. § 102(b) rejection over Smith
The Examiner contends that “Smith et al discloses a composite carton
formed by first and second individual cartons (see fig. 2) which are
detachably affixed to one another by the spots of adhesive 149. The
composite carton is capable of being collapsed by releasing the end flaps and
subsequently rotating the sleeve body panels” (Ans. 3-4). The Examiner
further argues that “the composite carton clearly has the capability of
collapsing in the manner as specified in the [Gosling] Grounds of Rejection
above. It is noted that the claims do not indicate any particular manner of
collapsibility” (id. at 5).
Appellant argues “Smith/Nelson1 does not disclose a key feature of
applicant's invention, namely, structure that makes possible the collapsibility
of the composite carton as if a single collapsible carton” (App. Br. 11).
Appellant further contends that “[w]hat is key is that Smith/Nelson teaches
the joining of individual structures 111, 113 wherein each module/container
section/modular container section is inherently incapable of being collapsed
by itself. In turn, the conjoined structure is inherently incapable of being
collapsed. Thus, Smith/Nelson does not in any way disclose a collapsible
composite carton” (App. Br. 11).

1 Appellant here is referring to the Smith patent, US 3,447,733, that is the
basis of the rejection.
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In view of these conflicting positions, we frame the anticipation issue
before us as follows:
Does Smith teach a composite carton where the first and second
cartons are collapsible as if a single carton?
Findings of Fact
12. Smith teaches “a pair of adhesively or otherwise removably
interconnected container sections each having a ripcord to permit opening of
the section when the sections have been separated from each other “(Smith,
col. 1, ll. 30-34).
13. Smith discloses both cartons comprising open ends with a first
and second width as shown in Fig. 2, reproduced below.

“FIG. 2 is a perspective view of a pair of shipping case modules
formed by the blank of FIG. 1” (Smith, col. 2, ll. 27-28).
14. Smith teaches the collapsed blank for forming the first and
second carton as shown in Fig. 1, reproduced below.
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“FIG. 1 is a perspective view of a blank for forming the shipping case
of this invention” (Smith, col. 2, ll. 25-26).
C. Discussion of 35 U.S.C. § 102(b) over Smith
Smith teaches a “detachably affixed” pair of cartons which have a first
and second width (FF 12-13). Smith further teaches that the cartons, prior to
assembly, are collapsible as if a single carton (FF 14).
We are not persuaded by Appellant’s argument that “Smith/Nelson
does not disclose a key feature of applicant's invention, namely, structure
that makes possible the collapsibility of the composite carton as if a single
collapsible carton” (App. Br. 11). In fact, as shown in Fig. 1 reproduced
above, the Smith carton begins as a collapsed single carton (FF 14). This
interpretation is consistent with Appellant’s Specification, which states “the
cartons are detachably affixed to one another in collapsed condition such
that the composite collapsed carton formed thereby has dimensions
substantially similar to a single carton loadable on the machine” (Spec. 3:15-
17). This quotation from Appellant’s Specification is reasonably interpreted
so that the term “collapsible as if a single carton” encompasses the cartons
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prior to assembly. Since Smith teaches that the cartons may be collapsed
together prior to assembly, we conclude that Smith teaches the limitation at
issue. See, e.g., In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)
(“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.”).
We affirm the rejection of claim 7 as anticipated by Smith. Pursuant
to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also affirm the rejections of claims
8, 9, 11, and 14-18, as these claims were not argued separately.
D. 35 U.S.C. § 103(a) rejection over Gosling, Rockefeller, Smith, and
Yamaguchi
Appellant argues regarding Gosling, Rockefeller, Smith that “[e]ach
of these references is inapplicable at least in part for the reasons discussed
above with reference to their ineffectiveness as the bases for a 102(b)
rejection” (App. Br. 13). Appellant further contends that the “Office
Actions do not point to portions of Gosling, Rockefeller or Smith et al and
Yamaguchi that would indicate that the combination of references would
provide a reasonable expectation of success in achieving the present
invention” (App. Br. 14). Appellant also argues that the teaching,
suggestion or motivation test (see App. Br. 14).
We have already determined that Gosling, Rockefeller, and Smith
anticipate claim 7 as analyzed supra and therefore teach the limitations of
claim 7. The obviousness case rests on whether a person of ordinary skill in
the art would have considered it obvious to modify the cartons of Gosling,
Rockefeller, and Smith to have cartons of different widths as taught by
Yamaguchi (“The packing box is formed as a single box provided with
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sectioned boxes of the same or different capacities” (Yamaguchi, col. 2, ll.
46-48)).
We conclude that the Examiner has set forth a prima facie case that
claim 10 would have been obvious to the ordinary artisan in view of
Gosling, Rockefeller, Smith, and Yamaguchi. In KSR, the Supreme Court
indicated that “[w]hen 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.” KSR Int’l v.
Teleflex Inc., 127 S. Ct. 1727, 1740 (2007). In the instant case, using boxes
of different sizes as taught by Yamaguchi would have been a predictable
variation of the boxes of Gosling, Rockefeller or Smith.
We disagree with Appellant’s argument regarding reasonable
expectation of success. Yamaguchi discloses cartons of different sizes
(Yamaguchi, col. 2, ll. 46-48) and Gosling, Rockefeller, and Smith all teach
cartons of the same size joined together. We conclude that the ordinary
artisan would have had a reasonable expectation of success. See In re
O’Farrell, 853 F.2d 894, 903-04, (Fed. Cir. 1988) (“Obviousness does not
require absolute predictability of success. . . . For obviousness under § 103,
all that is required is a reasonable expectation of success.”)
We affirm the rejection of claims 10 as obvious over Gosling,
Rockefeller, Smith, and Yamaguchi. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejections of claims 12, 13, 19,
and 20, as these claims were not argued separately.
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CONCLUSION
In summary, we affirm the rejection of claim 7 as anticipated by either
Gosling or Rockefeller. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we
also affirm the rejections of claims 8, 9, 14-16, and 18 as these claims were
not argued separately.
We affirm the rejection of claim 7 as anticipated by Smith. Pursuant
to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also affirm the rejections of claims
8, 9, 11, and 14-18, as these claims were not argued separately.
We affirm the rejection of claims 10 as obvious over Gosling,
Rockefeller, Smith, and Yamaguchi. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejections of claims 12, 13, 19,
and 20, as these claims were not argued separately.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).
AFFIRMED

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