       NOTE: This disposition is nonprecedential.

  United States Court of Appeals
      for the Federal Circuit
              __________________________

     (Reexamination Nos. 95/000,066 & 95/000,069)
           C. BROWN LINGAMFELTER,
                   Appellant,

                           v.
       DAVID J. KAPPOS, DIRECTOR,
  UNITED STATES PATENT AND TRADEMARK
                 OFFICE,
                 Appellee,

                         AND

 MEADWESTVACO PACKAGING SYSTEMS, LLC,
               Appellee,

                         AND

 GRAPHIC PACKAGING INTERNATIONAL, INC.,
                Appellee.
              __________________________

                      2011-1449
              __________________________

    Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
               __________________________
LINGAMFELTER   v. KAPPOS                               2


                 Decided: August 9, 2012
               __________________________

    DENNIS W. BRASWELL, Braswell & Associates, P.C., of
Mobile, Alabama, argued for appellant. Of counsel on the
brief was DANIEL D. CHAPMAN, Jackson Walker LLP, of
San Antonio, Texas.

    THOMAS W. KRAUSE, Associate Solicitor, United States
Patent & Trademark Office, of Alexandria, Virginia,
argued for appellee United States Patent & Trademark
Office. With him on the brief were RAYMOND T. CHEN,
Solicitor, and BENJAMIN D.M. WOOD, Associate Solicitor.

    R. BRUCE BOWER, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, of Atlanta, Georgia, argued for
appellees MeadWestvaco Packaging Systems, LLC, and
Graphic Packaging International, Inc. With him on the
brief were ROGER D. TAYLOR and ROBERT C. STANLEY.

    JAMES F. VAUGHAN, Womble Carlyle Sandridge &
Rice, LLP, of Atlanta, Georgia, for appellee Graphic
Packaging International, Inc. With him on the brief was
IAN A. CALVERT.
              __________________________

 Before BRYSON, PROST, and O’MALLEY, Circuit Judges.
PROST, Circuit Judge.

    C. Brown Lingamfelter appeals the decision of the
Board of Patent Appeals and Interferences (“Board”),
determining that claims 1-29 of the U.S. Patent No.
6,789,673 (“’673 patent”) are invalid as anticipated or
obvious. Because the Board did not err in its obviousness
3                                   LINGAMFELTER   v. KAPPOS


determination, we affirm. We need not (and do not) reach
the anticipation issue.

                       BACKGROUND

    This appeal originates from two inter partes proceed-
ings for the reexamination of the ’673 patent that were
subsequently consolidated, one requested by MeadWest-
vaco Packaging Systems, LLC, and the other by Graphic
Packaging International, Inc. (collectively, “third party
requesters”). The ’673 patent is directed at a paper
container for dispensing canned beverages and methods of
dispensing the cans. The preferred embodiment of the
container holds twelve cans in a 4x3 column-row ar-
rangement, as it is depicted in Figure 1 of the ’673 patent,
reproduced below.




    The closed form of the preferred embodiment has a
scored or perforated line around the front top corner,
which consists of a diagonal line across the two sidewalls
connected with a line across the top and front walls. By
removing the top front corner along the perforated lines,
one gains access to the cans. The specification teaches
LINGAMFELTER   v. KAPPOS                                   4


that after removing the top front corner, the preferred
height of the remaining front wall is between 1.5 and 1.8
times the diameter of a can. This allows easy access to
cans and at the same time provides enough support to
prevent them from falling out. Out of the 29 claims at
issue in this appeal, claims 1, 6, 11, 15, 19, 25, and 28 are
independent. The claims vary in that some recite a
container, some recite methods of building a container,
and some recite methods of accessing cans in a container.
Moreover, some claims recite containers with the top-
front corner removed; others recite a closed container.
Some claims recite a top handle that is created using a
cut-out on the top wall of the container. Some claims
recite that the container includes twelve cans; others do
not. Finally, some claims specify that cans in the con-
tainer are organized in a row and column arrangement;
other claims define the length of the bottom and rear
walls of the container as a function of a can-diameter. For
example, claim 1 recites,

        1. A container for holding a multiplicity of
        cylindrical cans, each can having a can di-
        ameter and a can height, the container
        comprising:

        twelve cylindrical cans, each can compris-
        ing a can diameter and a can height, each
        can further comprising a longitudinal axis;

        a rear wall having a rear wall height of
        about a whole multiple of the can diame-
        ter;

        a front wall having a front wall height, the
        front wall height being less than the rear
        wall height by at least about 1.2 times the
5                                   LINGAMFELTER   v. KAPPOS


        can diameter, the front wall being sub-
        stantially parallel to the longitudinal axes;

        a bottom wall having a bottom wall length
        of about a whole multiple of the can di-
        ameter;

        a top wall having a top wall length less
        than the bottom wall length by at least
        about the can diameter;

        and two side walls, each of the side walls
        having a front edge running from the front
        wall to the top wall, wherein at least part
        of each edge is oblique with respect to the
        front wall and the top wall, the sidewalls
        separated by about the can height.

’673 patent col.4 ll.1-22.

     On reexamination, the examiner initially rejected
claims 1-18, 22, and 25-29 as anticipated or obvious over
various prior art but refused to reject remaining claims
19-21, 23, and 24. The Board affirmed the examiner’s
rejections, but it reversed the examiner’s refusal to reject
the remaining claims and entered new grounds of rejec-
tion under 37 C.F.R. § 41.77(b). Lingamfelter requested
that reexamination be opened as to the new grounds.
Reexamination was reopened, and this time, the examiner
maintained the rejections. The Board affirmed. Lingam-
felter appeals. We exercise jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
LINGAMFELTER   v. KAPPOS                                6


                   STANDARD OF REVIEW

     We review the Board’s ultimate obviousness decision
de novo but review the Board’s underlying factual find-
ings for substantial evidence. In re Klein, 647 F.3d 1343,
1347 (Fed. Cir. 2011). We also review the Board’s find-
ings that pertain to secondary considerations of obvious-
ness for substantial evidence. Finisar Corp. v. DirecTV
Grp., Inc., 523 F.3d 1323, 1339 (Fed. Cir. 2008). Substan-
tial evidence review is a deferential standard, Kappos v.
Hyatt, 132 S. Ct. 1690, 1695 (2012), “requiring a court to
ask whether a ‘reasonable mind might accept’ a particular
evidentiary record as ‘adequate to support a conclusion,’”
Dickinson v. Zurko, 527 U.S. 150, 162 (1999) (quoting
Consolidated Edison Co. v. NLRB, 305 U.S. 197, 229
(1938)).

                           DISCUSSION

                               I

    Lingamfelter first argues that the examiner and the
Board erred in accepting and considering evidence sub-
mitted by third party requesters during the inter partes
proceedings. The challenged evidence includes declara-
tions of six employees of third party requesters and their
customers, offered to counter Lingamfelter’s evidence of
secondary considerations of obviousness. Lingamfelter
argues that accepting (and relying on) this evidence
constituted an ultra vires act because 35 U.S.C. § 314,
which governs the conduct of inter partes reexamination
proceedings, only permits a third party requester to
submit “written comments” to the examiner. 1 That is,

   1   35 U.S.C. § 314(b)(2) provides,
7                                   LINGAMFELTER   v. KAPPOS


Lingamfelter argues that the declarations submitted by
third party requesters are not “written comments” under
§ 314(b)(2). Alternatively, Lingamfelter argues that by
permitting third party requesters to submit this type of
evidence, the inter partes proceedings and § 314 violate
the Due Process Clause because they do not give the
patentee an opportunity to conduct discovery and exam-
ine third party requesters’ evidence.

     We need not address the merit of Lingamfelter’s ar-
guments, however, because in our view, he has waived
them. To begin with, Lingamfelter was too late in chal-
lenging the introduction of the evidence into the record.
He did not object when third party requesters’ evidence
was submitted to the examiner at the early stages of the
inter partes proceedings (in July 2005), or when the first
appeal from the examiner’s decision was presented to the
Board (in December 2006). It was not until he elected to
reopen the case before the examiner (in February 2010
and more than four years after the proceedings had
begun) that he contended the examiner lacked authority
to receive the contested evidence from third party re-
questers. Even at that late stage, however, Lingamfelter
still did not sufficiently brief the issues that he raises in
this appeal. It is true that he argued that the examiner
did not have authority to accept the contested evidence.


      Each time that the patent owner files a re-
      sponse to an action on the merits from the
      Patent and Trademark Office, the third-
      party requester shall have one opportunity to
      file written comments addressing issues
      raised by the action of the Office or the pat-
      ent owner’s response thereto, if those written
      comments are received by the Office within
      30 days after the date of service of the patent
      owner’s response.
LINGAMFELTER   v. KAPPOS                                  8


But he never cited § 314(b)(2), either to the examiner or to
the Board, and thus he never put the examiner and the
Board on notice that the meaning and scope of “written
comments” were at issue. 2 Thus, he waived his challenge
to third party requesters’ evidence. 3

                             II

    We next turn to Lingamfelter’s challenge to the
Board’s claim construction. Lingamfelter first argues
that the Board erred in construing “a rear wall height of
about a whole multiple of the can diameter.” This limita-
tion appears in those claims that do not expressly require
a row and column arrangement. Lingamfelter and the
Board do not dispute that a row and column arrangement
and a staggered arrangement are mutually exclusive. We
accept that proposition for the purpose of this appeal.
The issue is, however, whether the claims that recite the
“about a whole multiple of can diameters” exclude a

    2   Lingamfelter did raise a Due Process argument
before the examiner but his argument was not related to
the scope of “written comments” under 35 U.S.C.
§ 314(b)(2). We may not address the constitutionality of
§ 314(b)(2), however, without first deciding whether it
permits third party requesters to submit evidence of the
type at issue here.
   3    The government contends that at any rate, the
Board would not have had the authority to consider
Lingamfelter’s arguments, and that he should have rather
raised them in a petition to the Director of the Patent and
Trademark Office pursuant to 37 C.F.R. § 1.181. Because
we hold that Lingamfelter did not sufficiently raise his
arguments before the Board, we need not address the
government’s alternative waiver position. Even if Lin-
gamfelter’s argument could have been raised before the
Board and subsequently appealed to this court, it has
been waived.
9                                   LINGAMFELTER   v. KAPPOS


staggered can arrangement. Lingamfelter argues that the
“about a whole multiple” language limits the claims to a
row and column arrangement because in a container with
a staggered can arrangement, the height of the rear wall
is not a whole multiple of can diameters. We disagree.
The claims only require that the rear-wall height be
“about” a whole multiple of a can diameter, not that it be
exactly a whole multiple. Nor is there anything in the
specification of the ’673 patent that compels one to read
the word “about” differently. The examiner found that
the height of the rear wall in U.S. Patent No. 3,178,242
(“Ellis”), which discloses a container with a staggered can
arrangement, is 1.93 multiple of can diameter. As we see
it, under the broadest reasonable interpretation of the
limitation at issue, a 1.93 multiple is “about a whole
multiple.” Our conclusion is buttressed by the fact that
the claims that define the rear-wall height as a function of
can diameter do not recite a row and column arrange-
ment; whereas the rest of the claims expressly require a
row and column arrangement. Construing the “about a
whole multiple” as narrowly as Lingamfelter urges would
impermissibly write the row and column limitation into
those claims that do not require it. Thus, we hold that
the Board did not err in construing “about a whole multi-
ple.”

    Lingamfelter also takes issue with the Board’s conclu-
sion that those claims that recite that the container
comprises twelve cans (such as claim 1, recited above)
may include more than twelve cans. Again, we disagree.
Because the preamble of the claims at issue uses the term
comprising, one may add to the elements of the claims
without exceeding their scope. Of course, the use of
“comprising” is not without limitation: One may not add
an element to a comprising claim if the addition wipes out
an express claim limitation. But that is not a concern
LINGAMFELTER   v. KAPPOS                                 10


here because under the broadest reasonable interpreta-
tion, the claims at issue require twelve cans, not only
twelve cans. A container that contains thirteen cans also
contains twelve cans. That is, adding the thirteenth can
does not wipe out the twelve can requirement. Thus, the
Board did not err in finding that the broadest reasonable
construction of the twelve can limitation may read on a
thirteen can container.

                            III

    We next address the Board’s determination that
claims 1-29 of the ’673 patent are prima facie obvious.
For the purpose of our analysis, the claims can be divided
into four groups. The first group contains claims 1, 2, 4-7,
9-11, 13-16, 18, 28, and 29. These claims recite either
open or closed can containers, some of which specifically
recite that the container comprises twelve cans. The
second group consists of claims 19, 21, and 23-24. These
claims are drawn to a container with the removable
portion comprising only the top and front walls (they do
not recite side wall openings). Claims 25-27 are in the
third group, and they recite methods of manufacturing a
container by folding a paper sheet around a plurality of
cans. The fourth group encompasses claims 3, 8, 12, 17,
and 22. These claims depend from the claims in the other
three groups and recite a limitation for a handle that is
formed by a cut-out in the top-wall of the container.

    Before addressing the merit of Lingamfelter’s argu-
ments, we note that the parties’ dispute with respect to
the prima facie case of obviousness is narrow. Apart from
the claim construction arguments already addressed,
there is no dispute that the claimed limitations in every
group of claims already existed in the combination of prior
art that the Board relied on to invalidate the claims.
11                                 LINGAMFELTER   v. KAPPOS


Lingamfelter only challenges the Board’s determination
that one of ordinary skill in the art would have been
motivated to combine prior art and arrive at the claimed
invention. Because the prior art undisputedly includes all
of the claimed limitations, we need not set out each prior
art in detail. Rather, we only reference those features
that are pertinent to our analysis of the motivation to
combine. We address the Board’s decision with respect to
each group in turn below. The reference to “claims” or
“claims at issue” in each subsection below is directed at
the claims in the very group that is being discussed.

                            A

    The Board determined that claims 1, 2, 4-7, 9-11, 13-
16, 18, 28, and 29 are prima facie obvious over Laid Open
Japanese Application No. 7-9721 (“Imazato”) in view of
U.S. Patent No. 3,265,283 (“Farquhar”) and Ellis. It
noted that Imazato discloses all of the limitations of the
claims except side wall openings. It also noted that Ellis
and Farquhar provide the missing link by teaching side
wall openings: Ellis discloses side wall openings. Farqu-
har discloses oblique side wall front score lines and also
teaches that removing a portion of the side walls exposes
the ends of the cans and makes it easier to take them out
of the container. Accordingly, the Board determined that
one of ordinary skill in the art would have been able to
combine the teachings of Imazato with those of Ellis and
Farquhar to arrive at the invention in the claims at issue.

    As noted, Lingamfelter does not dispute that Imazato,
Ellis, and Farquhar contain all of the pertinent claim
limitations. Rather, he argues that Imazato teaches away
from having side wall openings because without complete
side walls, the container would not have sufficient
strength to guide cans into a vending machine. This
LINGAMFELTER   v. KAPPOS                                12


argument is unpersuasive. The Board found that Imazato
does not state that side wall openings must be avoided to
ensure that the container has sufficient stability. That
determination is supported by substantial evidence.
There is nothing in Imazato that expressly suggests side
wall openings must be avoided. Imazato in fact teaches
that oblique cut-ins on the front wall do not undermine
the strength of the carton:

       [S]ince the cut off guides 35 are formed by
       oblique cut-ins along fold lines 26 and 29
       formed in the source of the lid flaps 27 and
       30, there is no loss of the strength caused
       by the cut off guides 35.

J.A. 183. The Board could have reasonably taken from
this passage that Imazato does not teach away from side
wall openings. And in any event, as the Board also noted,
the use of side wall openings in Ellis and Farquhar is
objective evidence that side-wall openings do not neces-
sarily undermine the integrity of the container. Thus, the
Board’s determination that claims 1, 2, 4-7, 9, 10, 15, 16,
28, and 29 are prima facie obvious is not erroneous.

                            B

    The Board determined that claims 19, 21, and 23-24
would have been obvious over the combination of Ellis,
Imazato, and either UK Application No. GB 2 186 550 A
(“Wonnacott”) or U.S. Patent No. 6,105,854 (“Spivey”).
The claims at issue specifically recite a row and column
arrangement, which according to the Board’s claim con-
struction (which Lingamfelter does not dispute) excludes
a staggered can arrangement. Ellis, on the other hand,
discloses a staggered can arrangement. According to
Lingamfelter, the staggered can arrangement in Ellis is
13                                  LINGAMFELTER   v. KAPPOS


specifically intended to enable dispensing cans in a prede-
termined order. Because a row and column arrangement
would defeat that purpose, Lingamfelter argues that Ellis
teaches away from being combined with Imazato (which
teaches a row and column arrangement).

    This argument is unpersuasive. The claims at issue
do not aim to dispense cans in a predetermined order. It
only follows that whatever Ellis does to dispense cans in a
predetermined order cannot teach away from the claims
at issue: A traffic sign that signals the direction to Times
Square should not affect a driver who is not going to New
York. There is ample evidence in the record suggesting
that one of ordinary skill in the art would have had rea-
son to change Ellis’s staggered configuration into rows
and columns. As the Board noted, for example, common
sense counsels that a carton that stores cans in rows and
columns requires less paperboard compared to one with a
staggered can arrangement. And, Lingamfelter’s own
expert explained that due to inefficient use of paperboard
and being vulnerable to storage stresses, a staggered
arrangement is not as commercially viable as one with
rows and columns. Thus, substantial evidence supports
the Board’s determination that one of ordinary skill in the
art, especially one who is not interested in dispensing
cans in a predetermined order, would do away with the
staggered arrangement. In any event, as the Board
noted, a predetermined order is not the sole purpose of
Ellis’s container. Ellis also teaches that its container can
be used as a “self-dispensing” carton, placed in a refrig-
erator. The Board’s conclusion that “the suggested moti-
vation of Ellis does not render the carton of Ellis
‘inoperative’ for the broader purpose of containing and
dispensing cans from the carton” is therefore supported
by substantial evidence. In sum, the Board did not err in
determining that claims 19-21, 23, and 24 are prima facie
LINGAMFELTER   v. KAPPOS                                  14


obvious.

                             C

    The Board determined that claims 25-27 are prima
facie obvious over Ellis in view of Wonnacott. Lingamfel-
ter argues that Ellis does not disclose a rear height wall of
“about a whole multiple of can diameters.” This argu-
ment assumes that the Board’s construction of “about” is
erroneous. As we already noted, however, the Board’s
claim construction was not unreasonably broad. Thus,
Lingamfelter’s argument fails. Lingamfelter also argues
that it is improper to modify the staggered arrangement
of Ellis into a row and column arrangement. Again, this
argument is duplicative of one we have already rejected.
See supra Part III.B. Therefore, the Board’s determina-
tion that claims 25-27 are prima facie obvious is not
erroneous.

                             D

    The Board also determined that dependent claims 3,
8, 12, 17, and 22 are prima facie obvious over the prior art
applied to their corresponding independent claims further
in view of either admitted prior art or U.S. Patent No.
2,718,301 (“Palmer”). The claims in this group recite “a
handle defined at least partially by a cut-out in the tope
wall.” Lingamfelter argues that it would not have been
obvious to provide a cut-out handle because one would
normally expect that the handle weakens the wall. Yet,
as the Board pointed out, the specification of the ’673
patent itself admits that

        [t]he typical twelve pack beverage con-
        tainer . . . sometimes includes a handle
        . . . thereon, the handle typically being
15                                   LINGAMFELTER   v. KAPPOS


         walls defining a cut out in the top wall for
         the receipt of a hand thereinto.

’673 patent col.2 l.65-col.3 l.3. Similarly, Palmer discloses
a cut-out handle in the top wall of a can-containing car-
ton. Lingamfelter’s argument that using a top cut-out
handle would not have been obvious lacks merit.

                             IV

    Finally, the Board determined that secondary consid-
erations of obviousness did not rebut the prima facie case
of obviousness. Lingamfelter objects, largely relying on
the economic success of Coca Cola’s “Fridge Pack,” which
according to Lingamfelter infringes the ’673 patent. 4 He
also points out that Ellis, the closest prior art to the ’673
patent, is decades-old and did not achieve notable eco-
nomic success. According to Lingamfelter, the economic
success of the Fridge Pack--and that it took so long for one
to think of it--shows that the ’673 patent claims would not
have been obvious. We disagree. The Board determined
that Lingamfelter failed to sufficiently establish a nexus
between the economic success and those features of the
Fridge Pack that are claimed in the ’673 patent. For
example, it noted that the main success of the Fridge
Pack was attributable to its slim 2x6 design, which is
suitable for storing drinks in a home refrigerator. Indeed,
the Board observed that a similar 3x4 container was not
quite as successful before being substituted with the
Fridge Pack. The Board also pointed to evidence showing
that the success of the Fridge Pack depended in large part
on large-scale advertising by Coca Cola. Lingamfelter
takes issue with the Board’s analysis, but his arguments
     4  For the purpose of our discussion, we assume—
but do not decide—that the Fridge Pack infringes the ’673
patent.
LINGAMFELTER   v. KAPPOS                               16


effectively invite us to re-weigh the evidence and decide
the case based on our own independent view of the record.
For example, he argues that the Board did not sufficiently
credit Lingamfelter’s expert witness, put too much em-
phasis on evidence that favored invalidity, and did not
properly weigh the evidence. We must review the Board’s
decision deferentially for substantial evidence, however,
and as we noted, the record contains ample evidence to
support the conclusion that the Board has drawn from it.

                       CONCLUSION

    We affirm the Board’s determination that claims 1-29
of the ’673 patent would have been obvious and are thus
invalid.

                       AFFIRMED
