The C.W. Zumbiel Company, Inc., v. Kappos and Graphic Packaging Intl. No. 11-1332 (Fed. Cir. Dec. 27, 2012).

In Zumbiel, a split panel of the Court of Appeals for the Federal Circuit recently held that certain claims in a U.S. patent were not obvious because the prior art taught away from the claimed combination. In finding the claims to be not obvious, the court also emphasized that the preambles of certain claims constitute limitations when the claims depend on the preambles for antecedent basis.

At issue in Zumbiel was U.S. Patent No. 6,715,639, which is directed to a carton that holds containers, such as beverage cans. Claim 1 of the ‘639 patent recites an enclosed carton for carrying a plurality of containers in two rows, and includes a dispenser and a finger flap for partially separating the dispenser from the carton. Claim 1 further recites that the finger flap is located along a portion of a tear line that runs across the top panel of the container. Dependent Claim 2 recites that the finger flap is located between the first and second containers in the top row.

The U.S. Patent and Trademark Office's (USPTO) Board of Patent Appeals and Interferences (BPAI) found Claim 1 to be obvious over two references, Ellis and German. Ellis discloses a container with a rectangular portion at one end that can be removed by inserting a finger into a hole located on the side of the container, pulling up on a tab, and continuing to pull the tab along a tear line to remove the end of the container. German discloses a container which stores bottles vertically. To access the bottles, a user inserts his or her finger into a finger flap and pulls, thus causing a wedge shaped section to partially separate from the container. The BPAI found that it would have been obvious to one of ordinary skill in the art to provide the finger flap of German along the top panel of Ellis.

The Federal Circuit agreed with the BPAI in rejecting the independent claim, stating that the patent owner’s arguments regarding patentability were speculative, and finding that providing a finger opening on the top wall of the container would have been a predictable variation. The Federal Circuit further agreed with the BPAI that dependent Claim 2, which claimed the location of the finger flap as being between the first and second containers in the top row, was patentable over the cited art. In reaching this conclusion, the Court rejected two main arguments presented by Zumbiel.

Zumbiel argued that the preamble of the independent claims (and therefore their corresponding dependent claims) should not be considered in determining the patentability of those claims relative to the prior art. Zumbiel reasoned that because the containers, i.e., the cans in the carton, "are recited in the preamble, but not in the body of the claim," they cannot be a claimed limitation of the invention. The court disagreed, pointing to several recitations in the body of Claim 1 where the containers were referenced. Citing precedent, the court noted that the preamble constitutes a limitation when the claims depend on it for antecedent basis, or when the preamble is essential to understand limitations or terms in the body of the claim. In this case, the court held that the recitation of containers in the claim body depends on the plurality of containers recited in the preamble for antecedent basis, and thus that the terms recited in the preamble are limitations.

The court also disagreed with Zumbiel’s argument that the prior art references in combination taught moving the tear line in Ellis to be between the first and second containers within the top row of the carton. The Court agreed with the BPAI that Ellis in fact taught away from the claimed location of the finger flap. Ellis describes placing its tear line a distance from the end of the carton equal to between one-half and one full diameter of one can. Such a description taught away from placing the tear line between the first and second cans.

In a dissenting opinion, Judge Prost disagreed with the majority’s conclusion with respect to the non-obviousness of Claim 2. In the dissent’s opinion, there were only a finite number of possible locations for the finger flap, and regardless of which location was chosen, the result would be predictable. The dissent argued that in KSR Int’l Co. v. Teleflex, Inc. the Supreme Court directed the lower courts to find claims to be obvious when the combination of elements does no more than yield a predictable result. In this case, the dissent viewed Claim 2 to do nothing more and urged using a common sense application of the obviousness doctrine to “filter out low quality patents such as this one.”