November 23, 2014

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November 21, 2014

Positioning a Finger Flap Between Cans in a Carton Is Non-Obvious

Addressing obviousness in the context of inter partes reexamination, the U.S. Court of Appeals for the Federal Circuit affirmed a decision by the U.S. Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board), finding that while positioning of finger flaps on a box that holds can at the top of the box was predictable, putting the flaps between cans was not.  C. W. Zumbiel v. Kappos, Case No. 11-1332 (Fed. Cir., Dec. 27, 2012) (Wallach, J.) (Prost, J., dissenting-in-part).

This case arises out of an inter partes reexamination of a patent assigned to Graphic Packaging International.  The validity of the patent was challenged by third-party requester, The C.W. Zumbiel Company, based on prior art including U.S. patents to Ellis and Palmer and a German publication, among others. 

The reexamined patent was directed to a carton or box that holds containers such as cans and bottles.  The claimed carton included a dispenser piece that has a finger flap on top for pulling the dispenser-piece either into an open position or pulling off of the carton.  In one embodiment, the finger flap is located between the first and second cans in the top of the carton.  Ellis discloses a carton for holding cans with a detachable dispenser piece which is detached from the carton along the tear line around a part of the carton.  The prior art German publication disclosed a carton for containers with a dispenser piece opened by a finger flap on the top.  Palmer disclosed a package for canned goods including a finger grip for transport purposes. 

During reexamination, the examiner rejected certain independent claims as being obvious over Ellis in view of the German publication and confirmed patentability of certain dependent claims over Ellis, Palmer and the German publication.  One of the allowed dependent claims recited that the finger flap is located between the first and second containers in the top of the carton.  Graphic appealed the examiner’s rejections, and Zumbiel appealed the examiner’s confirmation of patentability of the allowed dependent claim to the Board.  Zumbiel argued that the location of the finger flap between the first and second cans is obvious in view of the prior art.  Subsequently, the Board held that the certain independent claims were obvious over Ellis in view of the German publication, but determined that the dependent claim directed to the finger flip location was non-obvious over the prior art.  Both parties appealed.

On appeal, the Federal Circuit affirmed the Board’s determination that the prior art teaches the location of the finger flap on the top panel of a carton, finding the independent claims unpatentable.  The Federal Circuit also found that providing a finger opening on the top of a carton would be a predictable variation that enhances user convenience and was, thus, obvious over Ellis in view of the German publication.

Regarding the representative dependent claim, the Court also agreed with the Board that having the finger flap positioned between the first and second cans in the top of the carton is not obvious over the prior art because Ellis teaches away from the claimed location of the finger flap and because Palmer does not provide necessary teachings as to placement of the finger flap.  

Judge Prost dissented in part, contending the majority opinion affirming the Board’s decision of patentability of representative dependent claim would be contrary to teachings of KSR.  Judge Prost opined that an overemphasis on the importance of the prior art teachings has insulated the Board’s analysis from the “pragmatic and common sense considerations that are essential to the obviousness inquiry.”

© 2014 McDermott Will & Emery

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