Spartis, Elias et al.

Patent Trials and Appeals Board

Sep 24, 2019

14925019 - (D) (P.T.A.B. Sep. 24, 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.
14/925,019 10/28/2015 Elias Spartis R029 18130US.1 6107
26158 7590 09/24/2019
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
DEMEREE, CHRISTOPHER R
ART UNIT PAPER NUMBER
3734
NOTIFICATION DATE DELIVERY MODE
09/24/2019 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
following e-mail address(es):
BostonPatents@wbd-us.com
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ELIAS SPARTIS, JOHN MURDICK HOLLEY JR.,
AARON LEE BATES, and RAYMOND R. SPIVEY SR.
__________

Appeal 2019-001563
Application 14/925,019
Technology Center 3700
__________

Before MICHAEL J. FITZPATRICK, MICHELLE R. OSINSKI, and
JEREMY M. PLENZLER, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1, 4–13, 16–22, 35, and 36. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Graphic Packaging International, Inc. (“Appellant”) is the Applicant, as
provided for under 37 C.F.R. § 1.46, and Graphic Packaging International,
LLC is identified as the sole real party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE
The Specification
The Specification’s “disclosure relates to cartons having a handle
comprising a material that is different than the material of the carton.” Spec.
¶3.
The Rejected Claims
Claims 1, 4–13, 16–22, 35, and 36 are rejected. Final Act. 2.2 Claim
1 is illustrative and reproduced below.
1. A carton for containing at least one article, the
carton comprising:
a plurality of panels that extends at least partially around
an interior of the carton, the plurality of panels comprises a first
side panel, a second side panel, a top panel foldably connected
to each of the first side panel and the second side panel, and a
first bottom panel and a second bottom panel in at least partial
overlapping relation;
a plurality of end flaps for at least partially closing an end
of the carton;
a handle in the top panel, the handle comprises a handle
opening that has an edge entirely disposed in the top panel and
a handle strap that extends across the edge of the opening, the
handle strap attached to the top panel at attachment regions that
include portions of the handle strap in face-to-face contact with
the top panel and attached to the top panel by adhesive, the
handle strap comprises a different material than the top panel.
Appeal Br. 44.

2 Claims 23 and 26–34 have been withdrawn from consideration. Final
Act. 1. No other claims are pending. Id.
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The Examiner’s Rejection
The following rejection is before us for review: claims 1, 4–13, 16–
22, 35, and 36, under 35 U.S.C. § 103, as being unpatentable over Weiner3
and Bergstein.4 Final Act. 2.
DISCUSSION
Claims 1, 4–13, and 16–22
Appellant argues the patentability of claims 1, 4–13, and 16–22
together. Appeal Br. 40 (Section “I.C.”). Accordingly, we select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(iv). Separately, Appellant
argues a subset of these claims together, namely claims 1, 7–9, 13, and 19–
21. Appeal Br. 35 (Section “I.A.”). We consider all of Appellant’s
arguments in support of claim 1, wherever placed in the Appeal Brief.
The Examiner found that Weiner discloses all of the subject matter of
claim 1 except for a handle strap “attached to the top panel by adhesive.”
Final Act. 2–3 (citing Weiner 1:65–2:15 and Figs. 1–2 (refs. 8–14, 17, 22,
and 23)). The Examiner found that Bergstein teaches a box with carrying
handle in which “the handle strap [is] attached to the top panel at attachment
regions that include portions of the handle strap in face-to-face contact with
the top panel and attached to the top panel by adhesive.” Id. at 3 (citing
Bergstein 3:14–15 and Figs. 3 and 8 (refs. 2–5, 7, 9, 10, 12, 22, and 30)). In
addition, the Examiner found that Bergstein’s handle is comprised of a
different material than the box. Id. (citing Bergstein 3:5–40). More

3 US 2,760,716, issued Aug. 28, 1956 (“Weiner”).
4 US 2,645,407, issued July 14, 1953 (“Bergstein”).
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specifically, the box is described as “paperboard” (Bergstein 1:2), and the
handle may be an “elastic” or “stretchable” material. Id. at 3:6–9.
Appellant does not persuade us of error in any of the Examiner’s
findings regarding the teachings of Weiner and Bergstein. We acknowledge
that “Appellant does not necessarily agree with the characterization of
Bergstein relied upon in the Final Office Action, including the citation of
col. 3 lines 14-15 in Bergstein as support for the proposition that Bergstein
teaches a handle attached to a top panel by adhesive.” See Appeal Br. 36.
However, to the extent that this is an argument, it is not persuasive. See
Bergstein 3:14–15 (“I may attach [the handle element] to a wall of the box
by spaced areas of adhesive.”), Figs. 1, 3, and 7 (showing handle 30 attached
to top wall 1).
Returning to the Examiner’s rejection, we note that the Examiner
concluded that “[i]t would have been obvious to one of ordinary skill in the
art at the time of Applicant’s filing to adhere Weiner’s [existing] handle
strap to the top panel in order to secure the handle of different material, as
taught by Bergstein.” Final Act. 3. Additionally, the Examiner concluded
that “[i]t would have been obvious to one of ordinary skill in the art at the
time of Applicant’s filing to substitute Weiner’s handle with Bergstein’s
handle as a known substitute for an element that is not unitary with the
carton.” Id. at 4. Thus, the Examiner articulated two separate prior art
combinations: (1) retaining Weiner’s handle 16 but attaching it via adhesion
as taught by Bergstein (hereafter, “Modification 1”); and (2) incorporating
both Bergstein’s handle as well as its attachment means (adhesion)
(hereafter, “Modification 2”).
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This is significant because Appellant argues against only
Modification 1. See, e.g., Appeal Br. 37 (arguing that “adhesion of the
handle 16 of Weiner to the top panel 8” would result in “shearing action or
failure of the handle 16” and that “the proposed modification to Weiner to
adhere the handle 16 to the top panel 8 would change the principle of
operation” (emphasis added)).
Appellant does not argue against Modification 2. In fact, Appellant
explicitly concedes that it presents no such arguments, stating:
The Examiner now appears to be asserting that it would have
been obvious to entirely replace the handle 16 of Weiner with the
handle element 30 of Bergstein, as opposed to modifying the
handle 16 of Weiner as asserted in the Final Office Action. Since
the former proposed modification was not previously introduced
in any rejection, Appellant’s remarks herein address the
proposed modification of the handle 16 of Weiner that was put
forth in the Final Rejection.
Reply Br. 2 (footnote omitted).
Appellant is mistaken that Modification 2 was not previously
introduced. See Final Act. 4 (“It would have been obvious to one of
ordinary skill in the art at the time of Applicant’s filing to substitute
Weiner’s handle with Bergstein’s handle as a known substitute for an
element that is not unitary with the carton.”); see also Ans. 5 (“It would have
been obvious to use Bergstein’s handle in place of the handle taught by
Weiner as there is a reasonable expectation of success because the elastic
material of Bergstein’s handle, which bows and flexes in use, remains
adhered as it is lifted.”). Appellant has not apprised us of error with respect
to Modification 2.
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Accordingly, we affirm the rejection of claim 1 as unpatentable over
Weiner and Bergstein, as well as that of claims 4–13, and 16–22, which fall
therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
Claims 35 and 36
Appellant argues the patentability of claims 35 and 36 separately from
the patentability of the claims already addressed above. See Appeal Br. 38
(Section “I.B.”). However, Appellant’s arguments regarding claims 35 and
36 are not persuasive because they too address only Modification 1. See
Appeal Br. 39 (discussing alleged problems with using/modifying Weiner’s
handle 16 and not discussing Bergstein’s handle). Appellant has not
apprised us of error with respect to Modification 2 in regards to claims 35
and 36.
Accordingly, we affirm the rejection of claims 35 and 36 as
unpatentable over Weiner and Bergstein.
Claim 11
Appellant argues the patentability of claim 11 separately from the
patentability of the claims already addressed above. See Appeal Br. 40
(Section “II.”). Claim 11 depends from claim 1 and recites that “the top
panel is adjacent a respective side of at least one beverage container.”
Figure 1 of Weiner shows a carton containing at least three beer
cans 15. Weiner 2:21–25, 2:69, and Fig. 1 (ref. 15). In the Final Action, the
Examiner construed the word “adjacent” as used in claim 11 such that
everything inside the carton is considered adjacent to the top panel. Final
Act. 5 (“Given the broadest reasonable interpretation of ‘adjacent’,
Examiner considers any and all parts of the articles to be adjacent to all parts
of the carton insofar as said articles are confined within the boundaries of
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each of the carton panels.”). In contrast, Appellant advocates—at least
implicitly—for a much narrower construction that would require the cans to
be oriented such that their longitudinal axis is oriented parallel to the plane
of the carton’s top panel. See Appeal Br. 40 (“Appellant notes that Weiner
appears to disclose cans 15, but that these cans 15 are oriented with their
tops adjacent the top wall/top panel 8.”).
We adopt neither the Examiner’s explicit construction nor Appellant’s
implicit construction. The Examiner’s construction is overly broad because
it would render the entire limitation, “the top panel is adjacent a respective
side of at least one beverage container,” superfluous. And Appellant’s
construction is wholly unsupported by the language of claim 11, which
speaks in terms of proximity, “adjacent,” not in terms of orientation (e.g.,
“perpendicular” or “parallel”). Appellant emphasizes the orientation of cans
shown in its Figure 2. See Reply Br. 7 (citing Spec. ¶ 26, which discusses
Fig. 2). That argument is not persuasive, as we will not import limitations
from Appellant’s Specification into its claims. See, e.g., Sjolund v. Musland,
847 F.2d 1573, 1582 (Fed. Cir. 1988) (“[T]he claims define the invention.
. . . [L]imitations from the specification are not to be read into the claims.”).
We construe the limitation, “the top panel is adjacent a respective side
of at least one beverage container,” as requiring the top panel to be in close
proximity with a side of a beverage container. It does not require any
particular orientation of the beverage container. The Examiner adequately
shows that Weiner discloses “the top panel is adjacent a respective side of at
least one beverage container.” See Ans. 8 (annotated Weiner Fig. 1).
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Appellant has not apprised us of error with respect to the rejection of
claim 11 over Weiner and Bergstein. Accordingly, we affirm the rejection
of claim 11.
SUMMARY
The Examiner’s rejection of claims 1, 4–13, 16–22, 35, and 36 under
35 U.S.C. § 103 is affirmed.
TIME PERIOD
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).

AFFIRMED