The Non-Obviousness of Obviousness Determinations: Even In Simple Technologies, It Can Be Difficult to Draw a Line in Obviousness Determinations

Stephen Parker | January 9, 2013

C.W. Zumbiel Company, Inc. v. Kappos and Graphic Packaging International, Inc.

December 27, 2012

Panel: Prost, Moore, and Wallach.  Opinion by Wallach.  Dissent byProst.


This appeal arises out of an Inter Partes Reexamination before the Board of Patent Appeals and Interferences, the decision.   Both the patentee and the third-party requester appealed the Board’s decision, which indicated that certain claims were obvious and certain claims were nonobvious.   In this case, the Federal Circuit affirmed the Board’s entire decision.  The technology at issue involved a carton for a pack of cans (such as, e.g., soda cans) having a perforated flap portion that is torn and folded down to dispensing the cans.  This case highlights that even in non-complex technologies, it can be difficult to draw a line in obviousness determinations, and how when there are little possible variations in structure, if such variations lead to predictable results obviousness may be found (such as here in, e.g., claim 1), but that when there are little possible variations in structure, if other factors such as teaching away in the art, lack of incentive for such a modification exist, nonobviousness may be found (such as here in, e.g., claim 2).


This appeal arises out of an Inter Partes Reexamination before the Board of Patent Appeals and Interferences (as of September 16, 2012, known as the Patent Trial and Appeal Board under the America Invents Act) of U.S. Patent No. 6,715,639 (“the ’639 patent”), assigned to Graphic Packaging International, Inc., (“Graphic”), and challenged by third-party requester C.W. Zumbiel Co., Inc. (“Zumbiel”).  Both the patentee, Graphic, and the third-party requester, Zumbiel, appealed the Board’s decision, which indicated that certain claims were obvious and certain claims were nonobvious.   Here, the C.A.F.C. affirmed the Board’s decisions.

The ‘639 patent is directed to a carton that holds containers such as, e.g., cans as shown in the representative figures inserted below for reference.   As shown, the carton has a tear-open dispenser-piece that can be folded down or removed completely for dispensing.  The dispenser piece has a finger-flap on the top for pulling and tearing the dispenser-piece with respect to the carton.   In one embodiment, the finger-flap is located between the first and second containers in the top row of the carton.

The ‘639 Patent:















Claims of the ‘639 Patent:

By way of example, the following claim was indicated as obvious by the Board:

1.         An enclosed carton for carrying a plurality of containers in two rows, with a top row and a bottom row, said containers each having a diameter, the carton comprising:

a. a top panel, side panels, a bottom panel, and closed ends, at least one of which is an exiting end;

b. a dispenser which is detachable from the carton to form an opening at an exiting end through which the containers may be removed;

c. the dispenser being a unitary structure comprising a portion of the top panel, portions of the side panels, and a portion of the exiting end, said portions being defined by a tear line extending across the top panel, side panels, and exiting end;

d. means for preventing the end container in the bottom row from accidentally rolling out of the carton after the dispenser has been opened, the height of the means above the bottom panel being less than the diameter of said end container; and

e. a finger flap located along the portion of the tear line extending across the top panel for pulling the dispenser open along the tear line,

f. whereby when the dispenser is opened it may optionally remain attached to the carton at the exiting end to form a basket at the exiting end of the carton.

By way of example, the following claim was indicated as non-obvious by the Board:

2.         The carton of claim 1, in which the finger flap is located between the first and second containers in the top row.

The Prior Art:

1.   Ellis:  United States Patent No. 3,178,242 (“Ellis”) discloses a carton for holding cans with a detachable dispenser piece which is completely detached from the carton along a tear-line as shown below.  In use, a user opens the carton by inserting a finger into the side holes 30, pulling up on tab 29 and tearing around the entire carton to detach the end piece.








2. German:  German No. G8514718.4 (“German”) discloses a carton for containers with a dispenser piece opened by a finger flap as shown below.









3. Palmer:  U.S. Patent No. 2,718,301 (“Palmer”) discloses a package without tear-lines for canned goods which may be carried using one hand using a slot located in between adjacent cans.









In this case, the C.A.F.C. reviewed the Board’s holding that claim 1 (as well as other claims) was obvious over Ellis in view of German, and that claim 2 (as well as other claims) was nonobvious over the references.

In this regard, 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 pertinent art. 35 U.S.C. § 103(a).  The C.A.F.C. reviews the Board’s determination of obviousness de novo and the Board’s underlying factual findings for substantial evidence.  Obviousness is a question of law, KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), based on four factual inquiries: (1) the scope and content of the prior art, (2) the differences between the prior art and the claimed invention, (3) the level of ordinary skill in the field of the invention, and (4) any relevant objective considerations.

A.    The Patentee’s, Graphic’s, appeal regarding the obviousness of claim 1 (as well as other claims).

Finger Flap:  Graphic argues that German does not teach that a finger flap should be provided in the top wall of the Ellis carton.  However, the Board found and the C.A.F.C. affirmed that “providing the finger opening on the top wall of the carton would be a predictable variation that enhances user convenience, as evidenced by German, and is within the skill of a person of ordinary skill in the art.”

Fold Line:  Graphic argues that Ellis merely is concerned with removal of cans and not replacement of empty cans as in the German reference, such that there is no reason to apply a fold line to allow the dispensing part to be closed after opening.  However, the Board found and the C.A.F.C. affirmed that Graphic’s suggested interpretation of the prior art is too narrow and stated that “[r]egardless of German’s disclosure pertaining to the opening allowing for simultaneous removal and replacement of containers, … ‘the broader teaching of German [is] that a fold line can be used so that the cover part can be folded back up again for any desired reason.”

Basket:   Graphic argues that Ellis and German do not teach a dispenser piece that functions as a basket as claimed.  However, the C.A.F.C. expressed that “because the feature of can catching is met when the tear-line of Ellis is partially opened, e.g. along three sides, and folded like claim 1’s tear-line, Ellis meets the functional language of claim 1.”

B.     The 3rd Party Requester’s, Zumbiel’s, appeal regarding the nonobviousness of claim 2 (as well as other claims).

Finger FlapZumbiel argues that the location of the finger flap as recited in claim 2 as being “between the first and second containers in the top row” is obvious.  First, Zumbiel argues that the “obvious combination would be rendered inoperable if the finger flap was located so that its use as a finger flap is precluded due to interference from a can inside the carton.”  Second, Zumbiel argues that Zumbiel argues that Palmer more broadly teaches locating of finger holes “between adjacent cans in the carton . . . so that the user may have access for inserting his or her fingers into the carton without interference from the cans.”  However, the Board held and the C.A.F.C. affirmed that the teaching of Palmer is not as broad as suggested and noted that the “finger flap of Palmer on which [Zumbiel] relies for this limitation pertains to providing a grip for transporting a carton, and does not pertain to any dispensing feature of the carton of Palmer.”  In addition, the Board held and the C.A.F.C. affirmed that Ellis expressly teaches away from the claimed location of the tear line by specifically stating that the tear line is “a distance more than one-half diameter and less than one diameter of one can, preferably about three-fourths of a diameter,” and that ‘there was little incentive to relocate Ellis’s finger flap to a position between cans in order to provide space for the fingers” because “the finger flap in Ellis provides a similar amount of finger space as a finger flap placed across the top panel.”

Note:  While the recitations in claim 2 that the “located between the first and second  containers” may sound different from Ellis’ teaching that the location is “a distance more than one-half diameter and less than one diameter of one can, preferably about three-fourths of a diameter,” it appears that these locations may be more similar than the court indicates.  Because there is no space between two adjacent cans, the language in claim 2 likely means some dimension of overlap — especially, as the flap shown overlaps an area.







PreambleZumbiel argues that the recitations in the preamble related to the arrangement of containers within the carton should not have been construed as part of the claim construction.  However, the C.A.F.C. explained that “[a] claim’s preamble may limit the claim when the claim drafter uses the preamble to define the subject matter of the claim,” noting that the preamble is construed as limiting when it is “necessary to give life, meaning and vitality to the claim based on the facts of the case at hand and in view of the claim as a whole” and where a claim depends on the preamble for antecedent basis – as here with respect to the terms “container” and “row.”

The Dissent (Against the Nonobviousness Claim 2)Judge Prost expresses that the majority failed to apply KSR to the facts of this case in concluding that the invention of claim 2 was nonobvious, stating that “a common sense application of the obviousness doctrine should filter out low quality patents such as this one” and that an “overemphasis on the importance of teachings of prior art has insulated the Board’s analysis from pragmatic and common sense considerations that are so essential to the obviousness inquiry.”  Judge Prost explained that there are only a few (four) alternative locations to place the tear lines and that “the patentee’s choice of tear-line-placement involves no more than the exercise of common sense in selecting one out of a finite – indeed very small – number of options,” and noting that “there are no unexpected results.”  Judge Prost also argues that Ellis does not teach away from such a placement because a) one of ordinary skill in the art would not take Ellis’s recommendation for placement literally to be applied in all contexts and arrangements of cans and b) Ellis actually hints that the placement of the tear lines with respect to the cans matters such that one should “make sure there is room for a finger to pass through.”


  1. This case helps highlight the importance of drafting dependent claims that further define inventive features.  For example, the structure and/or function of the “basket” as recited in claim 1 could have been further defined in one or more dependent claims in a manner to more readily distinguish over the cited references.  Notably, none of the references suggest that a basket would be configured to support a container therein.
  2. This case also highlights how obviousness arguments can be crafted, such as, e.g., emphasizing broader teachings within a prior art references when obviousness is desired or emphasizing narrower teachings within a prior art reference when nonobviousness is desired, such as identifying ways in which a prior art reference teaches away from a modification (e.g., such as taking an apparently conflicting position regarding placement of tear lines), which may be, e.g., based on a alleged narrower teachings in the prior art.
  3. This case also highlights that under KSR, obviousness analyses involve a broader view than that which is contained within the cited references, but involves, e.g., common sense application of the obviousness doctrine.

Full Opinion

Patent At Issue


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