Raymond R. Spivey et al.

Patent Trials and Appeals Board

Nov 29, 2019

14718361 - (D) (P.T.A.B. Nov. 29, 2019)

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.
14/718,361 05/21/2015 Raymond R. Spivey SR. R029 17320US.CP1 1720
26158 7590 11/29/2019
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
PERREAULT, ANDREW D
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
11/29/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAYMOND R. SPIVEY SR. and O’NEAL ALEXANDER
____________

Appeal 2019-001505
Application 14/718,3611
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner’s decision rejecting claims 31–50 and 57–69. The Appellant
presents additional evidence, namely the Declaration under 37 C.F.R.
§ 1.132 by Raymond Rudolph Spivey Sr. (“Spivey Declaration”). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
“Graphic Packaging International, Inc., the assignee of record.” Appeal
Br. 1.
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CLAIMED SUBJECT MATTER
Claims 31 and 41 are the independent claims on appeal. Claim 31,
reproduced below, is illustrative of the claimed subject matter.
31. A carton containing a plurality of articles, the carton
comprising:
a plurality of panels that extends at least partially around
an interior of the carton, the plurality of panels comprising at
least a bottom panel, a top panel, and a side panel;
at least two end flaps respectively foldably attached to
respective panels of the plurality of panels, the at least two end
flaps being at least partially overlapped with respect to one
another and thereby at least partially form a closed end of the
carton, and the at least two end flaps comprising at least a
bottom end flap foldably connected to the bottom panel;
a handle extending in at least the bottom end flap;
wherein the plurality of articles is disposed in the interior
of the carton so that an interior space is formed between at least
one article of the plurality of articles and at least a portion of
the closed end of the carton, and the handle is at least partially
aligned with the interior space.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hasegawa US 4,318,474 Mar. 9, 1982
DeBusk et al. (“DeBusk”) US 2006/0231604 A1 Oct. 19, 2006
Brand et al. (“Brand”) US 2010/0044420 A1 Feb. 25, 2010
Meadwestvaco WO 2014/052514 A2 Apr. 3, 2014

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REJECTIONS2
Claims 31–50 and 57–69 are rejected under 35 U.S.C. § 103 as
unpatentable over Brand, Meadwestvaco, and DeBusk.
Claims 31–50 and 57–69 are rejected under 35 U.S.C. § 103 as
unpatentable over Brand, Meadwestvaco, and Hasegawa.
OPINION
Brand, Meadwestvaco, and DeBusk
The Appellant argues that the Examiner’s rejection under 35 U.S.C.
§ 103 as unpatentable over Brand, Meadwestvaco, and DeBusk is based on
impermissible hindsight. See Appeal Br. 17–19. More specifically, the
Appellant argues “it appears that the Examiner is using the advantages of the
claimed carton disclosed in the present application to provide the rationale
for combining DeBusk with Brand and MeadWestvaco.” Id. at 17–18. The
Appellant supports this argument by pointing to the rationale for the further
modification of Brand in view of the teachings of DeBusk and by citing to
the Specification. See id. at 17. The Appellant’s argument is not persuasive.
The Examiner finds that Brand discloses many aspects of the carton of
claim 31, but not all of the claimed subject matter. See Final Act. 6, 8–9, 10.
The Examiner supports this finding by relying on Brand’s carton, including
its plurality of panels, end flaps, and handle with handle openings for
containing multiple rows of articles. See Final Act. 6, 8–9 (citing Brand,
Figs. 1, 6–8). Brand’s carton 5 includes panels 10, 20, 30, 40, end flaps 12,
14, 22, 24, 32, 34, 42, 44, and handles 11, 111. Id. ¶¶ 19–21, Fig. 1. More

2 The Examiner has withdrawn the rejection of claims 31–50 and 57–69
under 35 U.S.C. § 103 as unpatentable over Brand and Meadwestvaco.
Ans. 11.
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specifically, Brand’s carton 5 includes bottom end flaps 32, 34 and handles
11, 111 orientated in top end flaps 12, 14. Id. ¶¶ 19, 21, 25–26, Fig. 1.
Figure 8 of Brand shows carton 5 containing plurality of articles C (e.g.,
glass beverage bottles) in multiple rows. Brand ¶¶ 18–19. To remedy the
deficiency of Brand’s disclosure with regards to the subject matter of
claim 31, the Examiner turns to the teachings of Meadwestvaco and DeBusk.
The Examiner relies on the teachings of Meadwestvaco for removing
some articles from inside the carton to create an interior space adjacent to
Brand’s handles by nesting articles. See Final Act. 6–7, 10 (citing
Meadwestvaco 17–18, Figs. 23, 24); Ans. 13. Additionally, the Examiner
finds that Meadwestvaco teaches a group of articles that provide void R
between the endmost articles in second and fourth columns 2, 4, allowing a
user to insert his or her fingers through an aperture in the sheet material so as
to grasp a portion thereof (i.e., handle structure H). See Final Act. 7;
Meadwestvaco 18:1–3, Fig. 24. Thereafter, the Examiner determines that it
would have been obvious to one of ordinary skill in the art at the time of the
invention to modify Brand’s carton in view of Meadwestvaco’s teachings
because the interior space (void) allows a user with larger hands to carry the
carton more easily. See Final Act. 6–7 (quoting Meadwestvaco 18:2–3,
“[the void] is useful since it allows a user to insert fingers through an
aperture in the sheet material so as to grasp a portion thereof.”).
The Examiner does not make a finding that the combined teachings of
Brand and Meadwestvaco teach “a handle extending in at least the bottom
end flap,” as recited in claim 31. To remedy the deficiency in the combined
teachings of Brand and Meadwestvaco –– i.e., “a handle extending in at least
the bottom end flap” –– the Examiner relies on DeBusk’s teachings. Id. at 9
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(citing DeBusk, Figs. 22–30). DeBusk describes handle apertures 518 that
may be included in bottom end flaps 512. DeBusk ¶ 93. The Examiner
determines that it would have been obvious to one of ordinary skill in the art
at the time of the invention to further modify Brand’s carton in view of the
teachings of DeBusk to allow the carton to be more easily carried by
providing a handle in the bottom end flaps by either moving the handle
lower on the carton or adding an additional handle in the bottom end flaps.
See Final Act. 9.
The Appellant’s argument of impermissible hindsight is supported by
an explanation of the invention in the Specification that concerns an interior
space of a carton –– between the wider base portion of bottles and the handle
–– so that a carrier may grab the handle oriented in a lower portion of a
carton to more easily grasp and carry the carton, and a suggestion that the
Examiner’s rejection relies on the advantages in the Specification in
reaching the conclusion of obviousness. See Appeal Br. 17–18 (citing Spec.
¶ 43); Reply Br. 3–4.
However, the teachings of Brand, Meadwestvaco, and DeBusk as set
forth in the Examiner’s rejection demonstrate that the disputed aspects of the
Appellant’s invention were known in the art, including: an interior space for
a user to grasp a handle at lower portion of a package for carrying bottles
with wider base potions (e.g., Meadwestvaco Figs. 22–24); and a handle
extending in at least a bottom end flap (e.g., DeBusk Figs. 28–30). The
combination of the teachings results in the subject matter of claim 31.
Moreover, the Examiner’s rejection includes articulated reasoning with some
rational underpinning to support the conclusion of obviousness. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
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grounds . . . [require] some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”) (Cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)); see
also KSR at 421 (A “person of ordinary skill is also a person of ordinary
creativity, not an automaton.”); In re Sovish, 769 F.2d 738, 743 (Fed. Cir.
1985) (one of ordinary skill in the art is presumed to have skills apart from
what the prior art references expressly disclose); In re Jacoby, 309 F.2d 513,
516 (CCPA 1962).
The Appellant points to the supporting case law proffered by the
Examiner in rejecting the appealed claims under this ground of rejection (see
Final Act. 7–9 (citing In re Harza, 274 F.2d 669 (CCPA 1960), In re
Japikse, 181 F.2d 1019 (CCPA 1950), etc.)), and argues that the Examiner
appears to apply the rationales from the case law as per se rules and does not
effectively apply the rationales to the facts of the case at hand. See Reply
Br. 4–7; Appeal Br. 20–23. The Appellant’s argument is persuasive.
Nonetheless, our decision does not rely on the Examiner’s references to per
se rules to support the conclusion of obviousness. Additionally, we note that
the Examiner’s rejection did not require the use of these rationales to support
the rejection. See Final Act. 7–9. The Examiner only referenced the case
law to support the rejection.
The Appellant argues that the Spivey Declaration “provides evidence
that should be weighed against the Examiner’s proposed modifications of
Brand.” Appeal Br. 13; see also Reply Br. 2. The Appellant points out that
“paragraph 6 of the Declaration of Spivey states that ‘modifying the location
of the handle in Brand to be in a bottom end flap would modify the operation
of the cited references.’” Appeal Br. 13. The Appellant supports this
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statement with a single example directed to the Examiner’s reliance on the
rationale particular to Japikse, which pertains to a modification by
rearranging parts. Id. at 13–14; see also Final Act. 9. However, as
discussed above, our decision does not rely on the Examiner’s references to
per se rules to support the conclusion of obviousness. Moreover, we note
that paragraph 6 of the Spivey Declaration asserts that after the modification
of Brand’s handle to be orientated in the bottom end flap, the handle would
be more difficult to grasp due to the wider bottoms of the containers. This
assertion is not persuasive as it does not account for the modification of the
articles of Brand’s container in view of Meadwestvaco’s teachings, which
results in an interior space (i.e., void) for a carrier’s fingers. See Final
Act. 6–7; Meadwestvaco 18:1–3, Fig. 24.
Additionally, the Appellant points out that “paragraph 7 of the
Declaration of Spivey provides several reasons why one skilled in the art
would not modify Brand to invert the carton as proposed by the Examiner.”
Appeal Br. 14; see also Final Act. 9. However, our decision does not rely on
the Examiner’s determination that inverting (i.e., flipping over) a carton with
a top end flap having a handle corresponds to a carton with a bottom end
flap having a handle. Therefore, the Appellant’s argument is moot.
We have considered the remaining arguments advanced by the
Appellant in the Appeal Brief at pages 20–24, and the Reply Brief at pages
4–8, and have determined that they are not persuasive of Examiner error.
Thus, we sustain the Examiner’s rejection of claim 31 as unpatentable
over Brand, Meadwestvaco, and DeBusk. Claims 32–50 and 57–69 fall with
claim 31. See 37 C.F.R. § 41.37(c)(1)(iv).

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Brand, Meadwestvaco, and Hasegawa
The Appellant argues that the Examiner’s rejection under 35 U.S.C.
§ 103 as unpatentable over Brand, Meadwestvaco, and Hasegawa is based
on impermissible hindsight. Appeal Br. 19–20. The Appellant supports this
argument by pointing to the rationale for the further modification of Brand
in view of the teachings of Hasegawa. See id. at 19 (citing Spivey
Decl. ¶ 8). The Appellant’s argument is not persuasive.
At the outset, we note that the Examiner’s reliance on Brand and
Meadwestvaco for this ground of rejection is the same as discussed above
with regard to the rejection based on Brand, Meadwestvaco, and DeBusk.
See Final Act. 10–14. The difference between the two grounds of rejection
is the reliance on Hasegawa’s teachings instead of DeBusk’s teachings. In
that regard, the Examiner finds Hasegawa discloses a handle on a bottom
end flap. Id. at 14 (citing Hasegawa, Figs. 1, 2, 5, 9). The Examiner
determines that it would have been obvious to one of ordinary skill in the art
at the time of the invention to further modify Brand’s carton in view of the
teachings of Hasegawa to permit a user to more easily carry the carton in
multiple positions by providing a handle in the bottom end flaps ––
particularly when the carton is filled with relatively heavy cans or bottles ––
by either moving the handle lower on the carton or adding an additional
handle in the bottom end flaps. See id.; Hasegawa, col. 1, ll. 5–6; col. 2,
ll. 39–44.
In view of the foregoing, we determine that the Examiner’s rejection
includes adequate reasoning with rational underpinning. For purposes of
clarity, similar to the ground of rejection based on Brand, Meadwestvaco,
and DeBusk, our decision does not rely on the Examiner’s references to per
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se rules to support the conclusion of obviousness under this ground of
rejection.
The Appellant points out that Hasegawa discloses a carton having
only one end with a handle; more specifically, “a racetrack style handle
where a user inserts a thumb through one of the holes 70, 72 and the fingers
of the same hand through the other hole to grasp the portion 73.” Appeal
Br. 19. The Appellant argues that when a user carries Hasegawa’s carton
with this handle, the handle is oriented at the top of the carton. Id. (citing
Spivey ¶ 8). The Appellant’s argument is not persuasive.
Even assuming we were to agree that Hasegawa’s handle was used in
the manner described by the Appellant, the Appellant fails to explain why
the handle must be used in that manner to the exclusion of other ways of
using the handle. Moreover, we determine that one of ordinary skill in the
art would understand that a carrier of the carton may use the handle in an
orientation where the lower hole associated with the handle is orientated at a
bottom end flap while inserting his or her fingers into the lower hole and not
inserting the thumb in the upper hole.
We have considered the remaining arguments advanced by the
Appellant in the Appeal Brief at pages 19–24, and the Reply Brief at
pages 4–8, and have determined that they are not persuasive of Examiner
error.
Thus, we sustain the Examiner’s rejection of claim 31 as unpatentable
over Brand, Meadwestvaco, and Hasegawa. Claims 32–50 and 57–69 fall
with claim 31. See 37 C.F.R. § 41.37(c)(1)(iv).

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
31–50, 57–
69
103 Brand, Meadwestvaco,
DeBusk
31–50, 57–
69

31–50, 57–
69
103 Brand, Meadwestvaco,
Hasegawa
31–50, 57–
69

Overall
Outcome
31–50, 57–
69

TIME PERIOD FOR RESPONSE
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).

AFFIRMED