Ex Parte Focke et al

Patent Trial and Appeal Board

May 23, 2013

10550890 (P.T.A.B. May. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HEINZ FOCKE, DORIS FOCKE,
JURGEN FOCKE and GISBERT ENGEL
____________

Appeal 2011-005487
Application 10/550,890
Technology Center 3700
____________

Before MICHAEL L. HOELTER, RICHARD E. RICE and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Heinz Focke, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 12-15 and 18-20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2011-005487
Application 10/550,890

2
CLAIMED SUBJECT MATTER
The claimed subject matter “relates to a hinge-lid pack for cigarettes.”
Spec. 1, l. 1. Claims 18 and 19 are independent. Claim 18, reproduced
below with italics for emphasis, is illustrative of the claims on appeal:
18. Hinge-lid pack for cigarettes (10) comprising a
box part (11) with box front wall (14), a box rear wall (16), box
side walls (22) and a base wall (15), a lid (12) which is
pivotably attached to the box part (11) and which comprises a
lid front wall (19), a lid rear wall (17), lid side walls (23) and an
end wall (18), and a collar (13), made from a separate blank,
being positioned within an upper part of the box part (11),
characterized by the following features:
(a) the hinge-lid pack with box part (11) and lid (12) is
configured as having an octagonal cross-section across its entire
dimensions,
(b) a lateral region facing the box side walls (22) and lid
side walls (23) is configured as having a cross-section that is
trapezoid in shape, with converging material strips, namely legs
(28, 29; 30, 31), connected respectively to the box front wall
(14), box rear wall (16) and to the lid front wall (19) and lid
rear wall (17),
(c) the width of the legs (28, 29; 30, 31) is greater than
the diameter of one cigarette (10) yet less than the aggregate
diameter of two adjacent cigarettes (10),
(d) the legs (28, 29; 30, 31) are directed at an angle (39)
of approximately 30° to the box front wall (14) and box rear
wall (16), and to the lid front wall (19) and lid rear wall (17),
respectively, and are directed at an angle (40) of approximately
60° to the transverse box side wall (22) and lid side wall (23),
(e) a cigarette group (34), as the pack's contents,
comprises transverse rows of said cigarettes, namely transverse
rows (35) with two adjacent cigarettes (10) and transverse rows
(36) with three adjacent cigarettes (10),
(f) the cigarettes (10) of the adjacent transverse rows (35
and 36) are arranged in a saddle position, i.e. are offset to one
another,
Appeal 2011-005487
Application 10/550,890

3
(g) cigarettes (10) of a marginal transverse row (35) of
two adjacent cigarettes (10) are arranged in the region of
angulations (37) between a box side wall (22) and lid side wall
(23), on one hand, and box legs (28) and lid legs (30), on the
other hand,
(h) marginal cigarettes of an adjacent transverse row
(36) with three cigarettes (10) are arranged in the region of an
angulation (38) between the box legs (28) and lid legs (30), on
one hand, and box front wall (14), box rear wall (16), lid front
wall (19) and lid rear wall (17), on the other hand.

REFERENCES RELIED ON BY THE EXAMINER
Focke US 2002/0179464 A1 Dec. 5, 2002
Bohdan US 6,832,677 B2 Dec. 21, 2004

THE REJECTION
Claims 12-15 and 18-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Focke and Bohdan.

ANALYSIS
Claim 18
Claim 18 calls for a hinge-lid cigarette pack having beveled edges,
i.e., material strips or legs that are directed at an angle of approximately 30°
to the front and rear walls and at an angle of approximately 60° to the
transverse side walls. See claim 18 supra, clause (d). Claim 18 also calls
for the cigarettes nearest the beveled edges to be arranged in the regions of
angulation where the material strips or legs meet the front and rear walls (at
an angle of approximately 30°) and the transverse side walls (at an angle of
approximately 60°). See claim 18 supra, clauses (g) and (h).
Appeal 2011-005487
Application 10/550,890

4
Focke discloses a hinge-lid box for cigarettes with rounded or beveled
(oblique) edges and teaches that fitting the edges to the contour of a block of
cigarettes saves on material. Focke, paras. [0003] ‒ [0007] and [0032], fig.
5. Focke’s Figure 5 depicts a hinge-lid box with beveled or oblique (45°)
edges having an octagonal cross-section. Id. at para. [0032], fig. 5. Focke
teaches that the material strips or legs forming the beveled edges “run
obliquely (45°) . . . to be precise with adaptation to the dimensions of the
cigarettes.” Id. at para. [0032].
Bohdan discloses a channeling device for transferring and
compressing a bundle of cigarettes and delivering it to a container having a
non-rectangular cross-section, such as an octagonal or oval-shaped cross-
section. Bohdan, col. 1, ll. 40-58. Bohdan’s Figure 6 depicts a channeling
device containing a bundle of cigarettes “in a lengthwise 2-3-2-3-3-2-3-2
configuration ready for entry into an oval cigarette container.” Id. at col. 3,
ll. 48-52, fig. 6.
The Examiner finds that Focke discloses a hinge-lid box with an
octagonal cross-section having the features as claimed, except “material
strips or legs [that] are directed at an angle of approximately 30 degrees to
the box front wall and approximately 60 degrees to the transverse box side
wall.” Ans. 3-4. In this regard, the Examiner determines that:
[i]t would have been obvious to one having ordinary skill in the
art at the time the invention was made to construct the material
strips or legs to be directed at an angle of 30 degrees to the front
wall and 60 degrees to the side wall, since it has been held that
discovering an optimum value of a result effective variable
involves only routine skill in the art.
Id. at 4, 6 (referencing In re Boesch, 617 F.2d 272 (CCPA 1980)).
Appeal 2011-005487
Application 10/550,890

5
The Examiner further finds that Focke, as modified above, discloses
the limitations of claim 18 except for the recited cigarette configuration.
Ans. 4-5. For this limitation, the Examiner turns to Bohdan’s teaching of “a
cigarette channeling device wherein cigarettes are placed within a package
in a 2-3-2 configuration substantially similar to that of the instant
application.” Id. at 5. The Examiner concludes that “[i]t would have been
obvious to one of ordinary skill in the art at the time of applicant’s invention
to modify Focke’s cigarette configuration in order to maximize the packing
space within the package using Bohdan’s channeling device.” Id.
(referencing Bohdan, col. 2, ll. 3-12).
Appellants respond that the combination of Focke and Bohdan does
not disclose the limitations of clauses (g) and (h) of claim 18, which require
the cigarettes nearest the beveled edges to be arranged in the regions of
angulation where the material strips or legs meet the front and rear walls (at
an angle of approximately 30°) and the transverse side walls (at an angle of
approximately 60°). App. Br. 13-14; see also Spec., fig. 7 (regions of
angulation 37, 38). Appellants contend that, as described in the
Specification and recited in claim 18, “the respective marginal cigarettes lie
in the regions of the angulations 37, 38 in a stabilizing manner, thus
providing a positive-fitting support between the pack and the cigarettes;”
that “[t]he planar wall surfaces of the pack of Focke do not disclose or
suggest these features since the cigarettes abut the planar wall surfaces;” and
that “Bohdan does not cure the deficiencies of Focke . . . .” App. Br. 13.
While acknowledging that “Bohdan discloses a cigarette arrangement for
‘oval packs,’ i.e., for cigarette packs with fully rounded side walls,”
Appellants argue that “Bohdan provides no suggestion for adapting the same
Appeal 2011-005487
Application 10/550,890

6
cigarette formation to the pack dimensions of a hinge-lid pack having the
contour of the presently claimed exemplary embodiment.” Id.
Regardless of the Examiner’s other findings, the Examiner does not
address Appellants’ argument or make any explicit findings with respect to
the limitations of clauses (g) and (h) of claim 18. See Ans. 6-7; see also id.
at 3-5. While the Examiner determines that it would have been obvious both
to modify Focke’s material strips or legs to form angles of approximately
30° to the front wall and approximately 60° to the side wall (Ans. 4, 6) and
to modify Focke’s cigarette configuration so as to maximize the packing
space within the package using Bohdan’s channeling device (id. at 5), we
cannot find by a preponderance of the evidence that these modifications
would necessarily result in the cigarettes nearest the beveled edges of the
hinge-lid box being arranged in the regions of angulation as required by
clauses (g) and (h) of claim 18. As such, we determine that the Examiner’s
conclusion of obviousness is not supported by adequate articulated reasoning
with rational underpinning.1
Accordingly, we do not sustain the rejection of claim 18, and claims
12-15 and 20 dependent therefrom, under 35 U.S.C. § 103(a) as unpatentable
over Focke and Bohdan.

1 See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (“‘[R]ejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.’”) (quoting In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Appeal 2011-005487
Application 10/550,890

7
Claim 19
Claim 19 calls for a hinge-lid cigarette pack having beveled edges,
i.e., material strips or legs that are directed at an angle of approximately 30°
to the front and rear walls and at an angle of approximately 60° to the
transverse side walls, as discussed supra in connection with claim 18.
Unlike claim 18, however, claim 19 does not positively recite a cigarette
configuration or require that the cigarettes nearest the beveled edges of the
hinge-lid box be arranged in the regions of angulation.
As discussed supra in connection with claim 18, the Examiner’s
position is that it would have been obvious to modify Focke’s material strips
or legs to form angles of approximately 30° to the front wall and
approximately 60° to the side wall, “since it has been held that discovering
an optimum value of a result effective variable involves only routine skill in
the art.” Ans. 4, 6 (referencing Boesch, 617 F.2d 272).
Appellants argue that “[a]bsent impermissible use of hindsight . . . , it
would not have been obvious . . . to configure the contour of the pack in
such a manner that material strips are positioned at an angle of 30° or 60°,”
because “the cigarettes in the packs of Focke are arranged in the 7-6-7
formation common to standard hinge-lid packs” while “the cigarette pack of
the present exemplary embodiment is associated with a special cigarette
formation.” App. Br. 12 (referencing Spec., figs. 9 and 10); Reply Br. 5-6.
This argument is unpersuasive for several reasons. First, it does not address
the Examiner’s position that angles of approximately 30° and approximately
60° would have been obvious as optimum values of a result effective
variable. Second, it argues Focke individually rather than the combination
Appeal 2011-005487
Application 10/550,890

8
of Focke and Bohdan.2 Third, it does not recognize Focke’s teaching to save
on material by fitting the oblique edges of the pack to the contour of the
block of cigarettes thereby indicating that the edge angle is a recognized
result-effective variable ready for optimization as found by the Examiner.
See discussion of Focke supra; see also In re Antonie, 559 F.2d 618, 620
(CCPA 1977). As such, Appellants have not provided persuasive reasoning
or evidence that a person of ordinary skill in the art would not have
recognized the complementary leg angles as a result effective variable and
optimized the angles as claimed in order to fit the edges of the cigarette pack
to the contour of the special cigarette configuration taught by Bohdan.
Accordingly, we sustain the rejection of claim 19 under 35 U.S.C.
§ 103(a) as unpatentable over Focke and Bohdan.

DECISION
We affirm the rejection of claim 19.
We reverse the rejection of claims 12-15, 18 and 20.
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-IN-PART

2 See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references) (citing In re Keller, 642
F.2d 413, 425 (CCPA 1981)).
Appeal 2011-005487
Application 10/550,890

9
mls