  United States Court of Appeals
      for the Federal Circuit
              __________________________

       THE C.W. ZUMBIEL COMPANY, INC.,
                   Appellant,
                          v.
        DAVID J. KAPPOS, DIRECTOR,
  UNITED STATES PATENT AND TRADEMARK
                  OFFICE,
                  Appellee,
                         AND

 GRAPHIC PACKAGING INTERNATIONAL, INC.,
             Cross-Appellant.
              __________________________

                   2011-1332, -1333
            (Reexamination No. 95/000,077)
              __________________________

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

              Decided: December 27, 2012
              __________________________

    GREGORY F. AHRENS, Wood, Herron & Evans, L.L.P. of
Cincinnati, Ohio, argued for appellant. With him on the
brief was KEITH R. HAUPT.
CW ZUMBIEL   v. KAPPOS                                   2


    JOSEPH G. PICCOLO, Associate Solicitor, Office of the
Solicitor, United States Patent and Trademark Office, of
Alexandria, Virginia, argued for the appellee. With him
on the brief were RAYMOND T. CHEN, Solicitor, and MARY
L. KELLY, Associate Solicitor.

    JAMES F. VAUGHAN, Womble Carlyle Sandridge &
Rice, LLP, of Atlanta, Georgia, argued for cross appellant.
With him on the brief was IAN A. CALVERT.
               __________________________

  Before PROST, MOORE, and WALLACH, Circuit Judges.
  Opinion for the court filed by Circuit Judge WALLACH.
 Opinion dissenting-in-part filed by Circuit Judge PROST.
WALLACH, Circuit Judge.
     This appeal arises out of the United States Patent and
Trademark Office’s (“PTO”) inter partes reexamination of
United States 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”). Because the Board of
Patent Appeals and Interferences’s (“Board”)1 obviousness
and nonobviousness determinations were correct, they are
affirmed.
                         BACKGROUND
   A. Claimed Invention
    The ’639 patent is directed to a carton or box which
holds containers such as cans and bottles. ’639 patent col.
   1    Pursuant to the Leahy-Smith America Invents Act
amendments to Title 35, the Board officially changed its
name from the Board of Patent Appeals and Interferences
to the Patent Trial and Appeal Board on September 16,
2012. Leahy-Smith America Invents Act, Pub. L. No. 112-
29, 125 Stat. 284 (2011).
3                                     CW ZUMBIEL   v. KAPPOS


3 ll. 6-26. The following are illustrative of the invention
at issue:
CW ZUMBIEL   v. KAPPOS   4
5                                       CW ZUMBIEL   v. KAPPOS


     The claimed carton has a dispenser-piece 79 which
has a finger-flap on top for pulling the dispenser-piece
either into an open position or fully off of the carton. Id.
col. 4 ll. 14-31; see also figure 3 (dispenser-piece connected
to the carton); figure 4 (dispenser-piece disconnected from
the carton). In one embodiment, the finger-flap is located
between the first and second containers in the top row of
the carton. Id. col. 5 ll. 42-45.
    Claims 1, 2, and 13 are representative.          Claim 1
reads:


         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 diame-
    ter, the carton comprising:
        a. a top panel, side panels, a bottom panel,
        and closed ends, at least one of which is an ex-
        iting end;
        b. a dispenser which is detachable from the
        carton to form an opening at an exiting end
        through which the containers may be re-
        moved;
        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 bot-
CW ZUMBIEL   v. KAPPOS                                      6


        tom 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 exit-
        ing end of the carton.
Id. col. 5 l. 56-col. 6 l. 13 (emphasis added).
    Representative dependent claim 2 reads:
        2. The carton of claim 1, in which the finger
    flap is located between the first and second con-
    tainers in the top row.
Id. col. 6 ll. 14-15 (emphasis added).


    Representative claim 13 reads:
        13. A blank for forming an enclosed carton for
    carrying a plurality of containers arranged in
    rows, with a top row and a bottom row, the blank
    comprising:
        a. a sheet of foldable material having first,
        second, third and fourth parallel fold lines
        therein, defining areas of the sheet corre-
        sponding to a top, two sides and a bottom of
        the carton;
        b. at one end of the parallel fold lines, a fold
        line transverse to the parallel fold lines, and a
        side end flap connected by the transverse fold
        line to each of the areas corresponding to the
        two sides;
7                                        CW ZUMBIEL   v. KAPPOS


        c. a tear line extending across the areas corre-
        sponding to the top and two sides to the
        transverse fold line, and then from the trans-
        verse fold line across each of the side end flaps
        to their free ends;
        d. a finger flap in the area corresponding to
        the top, adjacent the portion of the tear line
        extending across said area; and
        e. the tear line defining a unitary container
        dispenser when the enclosed carton is formed
        from the blank, with the portions of the tear
        line adjacent the free ends of the side end
        flaps being so located that a single tear line
        will be formed across the side end flaps, top
        and two sides of the carton.
Id. col. 6 l. 65-col. 7 l. 22 (emphasis added).
    B. Prior Art: Ellis
    United States Patent No. 3,178,242 (“Ellis”) discloses
a carton for holding cans with a detachable dispenser
piece which is detached from the carton along the tear
line. The following are illustrative of Ellis:
CW ZUMBIEL   v. KAPPOS                                      8




Ellis describes carton 1, bottom wall 2, left side wall 3, top
wall 4, right side wall 5 and cans C. Ellis col. 1 ll. 62-69.
Items 21, 25, 26 and 27 form the tear-line around the part
of the carton R which are opened to dispense cans. Id. col.
2 ll. 30-49. A user opens the carton by inserting a finger
into hole 30, pulling up on tab 29 and tearing items 21,
9                                       CW ZUMBIEL   v. KAPPOS


26, and 27. Id. col. 3 ll. 26-31. According to Ellis, from the
front portion, 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.” Id. col. 2 ll.
31-33.
    C. Prior Art: German ’718
    German Gebrauchsmuster No. G85 14718.4 (“German
’718”) discloses a carton for containers with a dispenser
piece opened by a finger flap. The following are illustra-
tive of German ’718:
CW ZUMBIEL   v. KAPPOS                                  10




German ’718 describes a carton having side walls 1, end
walls 2, top side 3, cover parts 4, tear-lines 5 and 6, and
finger hole 9 on top used to tear open cover part 4.
   D. Prior Art: Edgerton
    United States Patent No. 5,372,299 (“Edgerton”) de-
scribes a box made from flat cardboard having perforated
lines. The following is illustrative of Edgerton:
11                                     CW ZUMBIEL   v. KAPPOS




Edgerton discloses a panel having fold lines 14”, 16”, 18”
and 20”. Edgerton col. 3 ll. 5-17. The specification dis-
closes that the “fold lines . . . could, if desired be perfo-
rated or scored.” Id. col. 4 ll. 19-24.
     E. Prior Art: Palmer
    United States Patent No. 2,718,301 (“Palmer”) dis-
closes a package for canned goods which may be carried
using one hand. The following is illustrative of Palmer:
CW ZUMBIEL   v. KAPPOS                                  12




Palmer describes carton 1 with a finger grip for carrying
the carton. Palmer col. 2 ll. 10-12.
   F. Board Decision
    In 2004, the ’639 patent issued to Graphic. Zumbiel
requested inter partes reexamination of the ’639 patent.
During reexamination, the Examiner rejected claims 1, 3-
8, 10-14, 19-21, and 32-41 as unpatentable for obvious-
ness and confirmed the patentability of claims 2, 9, 15-18,
22-31. Graphic appealed the Examiner’s rejections to the
Board, and Zumbiel appealed the Examiner’s confirma-
tion of patentability. The Board held that claims 1, 3-8,
10-13, and 19-21 were obvious and unpatentable over
Ellis in view of German ’718.2 The Board also held that

   2    The Board noted that because the patent owner
did not provide separate arguments for claims 3-7, 10-12,
and 19-21, those claims fall with their corresponding
independent claims. The Board also found claims 40 and
41 obvious. Graphic argues claims 1 and 8 together and
then makes the same arguments as to claims 40 and 41.
Graphic’s Br. 35 (“In assessing the question of obvious-
13                                    CW ZUMBIEL   v. KAPPOS


claims 1, 3-8, and 10-12 were unpatentable over Ellis in
view of German ’718 and Edgerton. The Board held,
however, that claims 2, 9, 14, and 32-39 were not obvious
and therefore patentable.
    Zumbiel timely appealed to this court, and Graphic
cross-appealed. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(4)(A).
                       DISCUSSION
    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 ultimate
determination of whether an invention would have been
obvious is a legal conclusion based on underlying findings
of fact. In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir.
2000).     Accordingly, we review the Board’s ultimate
determination of obviousness de novo and the Board’s
underlying factual findings for substantial evidence. Id.
    Obviousness is a question of law, KSR International
Co. v. Teleflex Inc., 550 U.S. 398 (2007), based on four
factual inquiries: the scope and content of the prior art,
the differences between the prior art and the claimed
invention, the level of ordinary skill in the field of the
invention, and any relevant objective considerations. Id.
at 406 (citing Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966)).




ness of [claim 40 and 41], essentially the same issues are
involved as with regard to claims 1 and 8 . . . .”). There-
fore, Graphic’s case rises or falls based on representative
independent claims 1 and 13.
CW ZUMBIEL   v. KAPPOS                                        14


    I.   Graphic’s Cross Appeal
    We begin with Graphic’s cross appeal which concerns
representative independent claims 1 and 13. Graphic
argues that these claims are patentable and that the
Board erred in affirming the Examiner’s rejection of these
claims as unpatentable over Ellis in view of German ’718.
Graphic’s Br. 18, 27.
         A. “Finger-Flap” Limitation
      Representative claim 1 of the ’639 patent recites “a
finger flap located along the portion of the tear line ex-
tending across the top panel for pulling the dispenser
open along the tear line,” and that “when the dispenser is
opened it may optionally remain attached to the carton at
the exiting end to form a basket.” ’639 patent col. 6 ll. 8-
13. The Examiner concluded, and the Board affirmed,
that “it would have been obvious in view of German ’718
to provide a finger flap on the top panel of the Ellis carton
. . . ‘in order to provide a manner of pulling the dispenser
of Ellis open.’” J.A.20. The dispute lies in whether Ellis in
view of German ’718 teaches the location of the finger flap
on the top panel of a carton.
    Graphic argues that German ’718 does not teach that
a finger flap should be provided in the top wall of the Ellis
carton, because the Ellis carton and the German ’718
carton are “opened in different ways,” where Ellis is laid
on its side in order to open and to have “access to the back
stand,” and German ’718 “is opened from the top.”
Graphic’s Br. 19, 21.
     The Board found that Graphic’s “assertion that Ellis
describes an opening operation in which the carton is
initially laid on its side to allow access to the bottom . . . is
largely speculative.” J.A.21. Substantial evidence sup-
ports this finding. Ellis does not provide an opening
15                                      CW ZUMBIEL   v. KAPPOS


operation in which the carton is necessarily initially laid
on its side or teach that it is necessary to simultaneously
open the carton and have access to the back stand. In-
deed, Ellis states that, although the carton is “trans-
ported resting on a side wall 3 or 5 with the cans in a
vertical position, and it is also stored in this position,” the
“user can carry the carton by the handle 43,” which is
located at the end of the container—nothing in Ellis
indicates that the container must then be laid down in a
certain position to then “open the carton” by inserting “a
finger partially into the hole 30 and pull[ing] up on the
side tab 29.” Ellis col. 3 ll. 21-27. The Board found, and
we agree, 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 ’718,
and is within the skill of a person of ordinary skill in the
art.” J.A.22.
        B. “Fold-Line” Limitation
    Graphic also argues that it would not have been obvi-
ous to one of ordinary skill to use the German ’718 fold
line to form the dispenser in Ellis. Graphic’s Br. 22-24.
Graphic avers German ’718 is directed to a carrying
package that has an opening that allows simultaneous
removal of containers and replacement of empty bottles,
an opening formed by either a perforated line or a fold
line. Id. at 22. According to Graphic, because the Ellis
carton’s purpose is “to insure that full cans are removed
in a predetermined order,” German ’718’s teachings in
this regard are inapplicable because the fold line in Ger-
man ’718 is used to leave the cover attached to the carton
“so that empty bottles can be transported in the carton
without falling out.” Id. at 22-23.
    Substantial evidence supports the Board’s finding
that Graphic’s suggested interpretation of the prior art is
CW ZUMBIEL   v. KAPPOS                                      16


too narrow. Regardless of German ’718’s disclosure
pertaining to the opening allowing for simultaneous
removal and replacement of containers, the Board found:
“the broader teaching of German ’718 [is] that a fold line
can be used so that the cover part can be folded back up
again for any desired reason,” J.A.26, noting that Graphic
incorrectly “presupposes that all of the teachings of Ger-
man ‘718 . . . must be incorporated into Ellis,” J.A.25.
Graphic’s own patent claims “tear lines” for tearing or
folding. ’639 patent col. 6 ll. 1-2, 11-12. Similarly, Ger-
man ’718 teaches that a tear-line may be replaced by a
fold-line. J.A.596. Thus, there is substantial evidence
indicating Ellis in view of German ’718 teaches a perfo-
rated line for both tearing and folding. We conclude that
the invention disclosed in claim 1 would have been obvi-
ous to one of skill in the art in light of the prior art refer-
ences.3


    3   Graphic further argues that claim 1 is not met in
that the dispenser-piece of Ellis does not function as a
basket, even though Graphic appears to concede a basket
may be physically formed. Graphic’s Br. 25-26 (“Ellis’
removable section R does not form a basket because it is
not intended to hold anything.” Id. at 26). The Board
found that the Examiner correctly determined that “the
recited basket results when the carton of Ellis is modified
so that section R is attached by a fold line so as to remain
attached to define a reclosable closure.” J.A.27. The
removable section on Ellis and the cover part on German
‘718 show that the structure is in the prior art to meet
claim 1’s functional language concerning basket. See In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (acknowl-
edging how prior art may perform and thereby meet
claimed functional language). Accordingly, 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.
17                                      CW ZUMBIEL   v. KAPPOS


         C. “Free-Ends” and “Single Tear-Line” Limita-
     tions
    Graphic argues, with regard to representative claim
13, that the Board erred in affirming the Examiner’s
rejection of this claim as unpatentable.4 Claim 13 recites
“a tear line extending . . . from the transverse fold line
across each of the side end flaps to their free ends” and “a
single tear line [to] be formed across the side end flaps,
top and two sides of the carton.” ’639 patent col. 7 ll. 9-12,
19-21 (emphases added).
    Graphic first argues that this court, upon de novo re-
view of the Board’s claim construction of “free ends,”
should find that the Board’s construction was not rea-
sonably consistent with the written description of the ’639
patent in that Ellis provides “tear line 21 [that] only
extends part way across the side end flaps 16, 18 and then
is interrupted by cut-out portion 20,” unlike the ’639
patent. Graphic’s Br. 29-30. Graphic argues that “one of
ordinary skill would construe the term ‘free ends’ . . . as
meaning the distal ends of the side end flaps, rather than
a point spaced from the distal ends.” Id. at 30. Graphic
concludes that claim 13 “does not read on the combination
of Ellis and German ’718, and the Board’s affirmation of
the rejection based thereon should be reversed.” Id.
Similarly, Graphic argues that with regard to the “single
tear-line” limitation of claim 13, this limitation is not met

     4   Additionally, Graphic presents the same argu-
ments with regard to claim 13 as it did with regard to
claim 1, asserting that it would not have been obvious to
provide a finger flap in the area corresponding to the top
of the carton. Graphic’s Br. 27. We have already ad-
dressed these arguments. See supra 14-15. Because we
affirm the Board with regard to the determinations chal-
lenged above, the same reasoning applies to the Exam-
iner’s rejection of similar claims.
CW ZUMBIEL   v. KAPPOS                                     18


because Ellis discloses a tear line around the container
that is interrupted by the cut-out portion that forms the
hand hold. Graphic’s Reply Br. 7-8.
     “Although the PTO gives claims the broadest reason-
able interpretation consistent with the written description
. . . claim construction by the PTO is a question of law
that we review de novo . . . just as we review claim con-
struction by a district court.” In re Baker Hughes, Inc.,
215 F.3d 1297, 1301 (Fed. Cir. 2000) (internal citations
omitted). In this case, the Board’s construction of “free
ends” is legally correct and was met by the prior art, as
was the “single tear-line” limitation.
    As the PTO noted “[t]he ‘end’ of a flap is defined by
the edge thereof, which includes the edge that defines the
cut-out portion 20. We observe that this edge is ‘free’ in
that it is not attached to any other structure.” J.A.54.
Graphic’s argument that “free ends” are the “distal ends
of the side end flaps” is unsupported by the plain meaning
of the term; the specification does not define “free ends”
much less define it in the specific way described by
Graphic. Additionally, the “free-end” limitation is met by
Ellis; in Ellis, tear line 21 does extend to the free ends of
the flaps 16 and 18 irrespective of whether cut-out portion
20 is provided to help define the free end of those side end
flaps.
     Additionally, Ellis’s figures 1 and 2 show items 21, 25,
26, and 27, which form a single tear-line through the part
of the carton R that is opened for dispensing cans. Ellis
col. 2 ll. 22-49. Ellis expressly recites:
    To open the carton, a person simply inserts a fin-
    ger partially into the hole 30 and pulls up on the
    side tab 29 and rips the scores 26, 27, and 26 in
    the side and top walls 3, 4, 5. The scores 21 in the
19                                      CW ZUMBIEL   v. KAPPOS


     side front flaps 16 and 18 are then severed to re-
     move the entire removable section R as a unit.
Id. col. 3 ll. 26-31.




    Because removable section R is severed and then re-
moved “as a unit,” Ellis’s tear-line goes around the carton,
and was therefore a single tear-line. As the Board noted,
“the recited single tear line [in claim 13] is formed by a
compilation of various tear line segments that are formed
across various panels of the carton (i.e., side end flaps, top
and sides).” J.A.28-29.
CW ZUMBIEL   v. KAPPOS                                    20


    II. Zumbiel’s Appeal
    We turn to Zumbiel’s appeal which concerns represen-
tative dependent claim 2. Zumbiel argues that this claim
is obvious and that the Board erred in affirming the
Examiner’s finding of patentability. Zumbiel also argues
the Board erred in considering preamble claim language.
        A. “Finger-Flap” Limitation
     Zumbiel disputes the Board’s determination that rep-
resentative claim 2 is nonobvious based on Ellis in view of
German ’718 and further in view of Palmer. Dependent
claim 2 is representative of the three dependent claims at
issue.5 In particular, it recites the carton disclosed in
claim 1 “in which the finger flap is located between the
first and second containers in the top row.” ’639 patent
col. 6 ll. 14-15. The dispute lies in whether the location of
the finger flap between the first and second cans is obvi-
ous in light of the prior art.
     Zumbiel argues that the Examiner and Board, by
finding independent claims 1, 8, and 13 obvious but not
dependent claims 2, 9, and 14, “def[y] both logic and
common sense.” Zumbiel’s Br. 26. Specifically, Zumbiel
contends that Ellis in combination with German ’718
render the carton and associated dispenser and finger flap
of claims 1, 8, and 13 obvious but “[t]hat obvious combina-
tion 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.” Id.
    Zumbiel’s contention hinges particularly on the Exam-
iner’s determination (affirmed by the Board) that “the

    5   Zumbiel notes that “[t]he sole feature of depend-
ent claims 2, 9, and 14, the subject of the present appeal,
is the particular location of the finger flap recited in
[independent] claims 1, 8, and 13.” Zumbiel’s Br. 6.
21                                    CW ZUMBIEL   v. KAPPOS


Palmer reference only suggests where to provide a handle
on a carton, not where to initiate a container opening.”
J.A.318. Zumbiel asserts that both Palmer and the ’639
patent provide a way for the user to insert their fingers
into the carton and whether this occurs “for the purpose of
carrying the carton or for opening the carton” is “of no
moment.” Zumbiel’s Br. 18. Zumbiel argues that “[o]ne of
ordinary skill in the art would recognize the advantage” of
locating the finger flap of either the ’639 patent or Palmer
“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.” Id. at 20
(emphasis removed).
    The Board found that “the record is insufficient to
support the conclusion that Palmer provides the teaching
for moving the tear line of Ellis with a finger flap to be
between [the] first and second container as specifically
recited in claims 2 and 9.” J.A.43 (emphasis in original).
The Board stated 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.” J.A.42-43.
Indeed, Palmer has no dispenser. Substantial evidence
supports the Board’s finding that Palmer provides little
information on where to place the finger flaps recited in
claim 2. Palmer concerns a carton with a finger flap, the
purpose of which is to provide a grip for transporting the
carton, a separate feature found in the ’639 patent unre-
lated to the finger-flap located between the first and
second containers used to initiate tearing.
    Substantial evidence also supports the Board’s finding
that the location of Ellis’s tear line would not place the
finger flap near the location between the first and second
containers on the top row as recited in claim 2. In fact,
Ellis teaches away from having the tear line between the
CW ZUMBIEL   v. KAPPOS                                      22


first and second containers. Ellis specifically states 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.” Ellis col. 2 ll. 31-33. Ellis’s
expressly recited range for the placement of the tear-line
(i.e., for the bottom row, going leftward one-half a can to
one can) lies outside the scope of claim 2.
    Zumbiel argues that placing a finger flap over the
score line 27 of Ellis would place it in an “inoperable
position,” since its use as a finger flap would be “pre-
cluded due to interference from a can inside the carton.”
Zumbiel’s Br. 24. However, as pointed out by Graphic,
there was little incentive to relocate Ellis’s finger flap to a
position between cans in order to provide space for the
fingers. This is because the finger flap in Ellis provides a
similar amount of finger space as a finger flap placed
across the top panel and over score line 27, as pictured.
23                                    CW ZUMBIEL   v. KAPPOS




    In its response and reply brief, Zumbiel also makes
the following multistep argument. First, Zumbiel argues
that Ellis explicitly discloses a tear line that “may be
positioned over a range of locations resulting in placement
between the first two cans.” Zumbiel’s Res. Br. 9. Zumbiel
then argues at length that a modified version of Ellis
where the cans are stacked instead of staggered is admit-
tedly obvious, citing to admissions made by Graphic in
another proceeding to the District Court of the Northern
District of Georgia. Zumbiel then combines the two
arguments, the modified version of Ellis with stacked
cans with the range of locations where the tear line can be
found, to result in the following modified prior art:




Id. at 14. Zumbiel then argues that the modified Ellis in
conjunction with Palmer, which Zumbiel argues discloses
“positioning a finger flap between cans for easy access
CW ZUMBIEL   v. KAPPOS                                     24


into the carton,” id. at 16, or German ’718, which Zumbiel
argues discloses “a finger flap 9 located both in the top
panel and along a dispenser tear line,” illustrates that
placement of the finger-flap between first and second cans
is obvious, id. at 20.
    Because substantial evidence supports the Board’s de-
terminations that Palmer does not provide the necessary
teaching for moving the tear line of Ellis and that Ellis in
fact teaches away from locating the finger flap between
the first and second containers, we are not persuaded by
Zumbiel’s arguments as to the multiple steps necessary to
find claim 2 obvious. We conclude that representative
claim 2 is nonobvious over Ellis in view of German ’718
and Palmer.
        B. Preamble Claim Language
    Second, according to Zumbiel, the preamble of claims
1, 8, and 13 (and therefore their corresponding dependent
claims 2, 9, and 14) “inherently, should not be considered
when determining the patentability of those claims rela-
tive to the prior art,” and the Board erred in so doing.
Zumbiel’s Br. 37. Zumbiel asserts that because “contain-
ers” (i.e., the cans within the carton) are recited in the
preamble but not in the body of the claim, “containers”
cannot be a claimed limitation of the invention. Id. at 38-
39.
    Claim construction is a matter of law we review de
novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
1455-56 (Fed. Cir. 1998) (en banc). “A claim’s preamble
may limit the claim when the claim drafter uses the
preamble to define the subject matter of the claim.”
August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1284
(Fed. Cir. 2011). We construe the preamble 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
25                                      CW ZUMBIEL   v. KAPPOS


view of the claim as a whole. Allen Eng’g Corp. v. Bartell
Indus., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (quoting Krop
v. Robie, 187 F.2d 150, 152 (C.C.P.A. 1951)).
    The preamble of representative claim 1 reads: “An en-
closed 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 . . . .” ’639
patent col. 5 ll. 56-58. These containers and rows are
then referred to in the bodies of the claims as follows:
        (1) “. . . an opening . . . through which the con-
        tainers may be removed;” (claims 1 and 8);
        (2) “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 bot-
        tom panel being less than the diameter of said
        end container;” (claim 1);
        (3) “the height above the bottom panel of the
        portion of the tear line extending across the
        exiting end being less than the diameter of the
        end container in the bottom row, but sufficient
        to prevent said container from accidentally
        rolling out of the carton after the dispenser
        has been opened;” (claim 8);
        (4) “. . . the finger flap is located between the
        first and second containers in the top row.”
        (claims 2 and 9).
Id. col. 5 ll. 63-64, col. 6 ll. 3-7, 14-15, 42-47, 54-55 (em-
phasis added).
    In Catalina Marketing International, Inc. v. Coolsav-
ings.com, Inc., we stated that the preamble constitutes a
limitation when the claim(s) depend on it for antecedent
basis, or when it “is essential to understand limitations or
CW ZUMBIEL   v. KAPPOS                                 26


terms in the claim body.” 289 F.3d 801, 808 (Fed. Cir.
2002). Here, “containers” as recited in the claim body
depend on “a plurality of containers” in the preamble as
an antecedent basis. Therefore, these terms recited in the
preamble are limitations as the Board concluded.
                         CONCLUSION
    The Board’s factual determinations are supported by
substantial evidence, and as a result, we hold, independ-
ent representative claims 1, 8, and 13 invalid as obvious
and dependent representative claims 2, 9, and 14 not
obvious. We affirm.
                         AFFIRMED.
No costs.
  United States Court of Appeals
      for the Federal Circuit
               __________________________

        THE C.W. ZUMBIEL COMPANY, INC.,
                    Appellant,

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

                           AND

 GRAPHIC PACKAGING INTERNATIONAL, INC.,
             Cross Appellant.
               __________________________

                    2011-1332, -1333
             (Reexamination No. 95/000,077)
               __________________________

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

PROST, Circuit Judge, dissenting-in-part.

    Failing to apply KSR to the facts of this case, the
Board has concluded that the invention recited in claim 2
is non-obvious. Because I believe that a common sense
application of the obviousness doctrine should filter out
low quality patents such as this one, I cannot join the
CW ZUMBIEL   v. KAPPOS                                     2


majority in endorsing the Board’s incorrect approach on
this question. Thus, with respect, I dissent.
    This case is about a paper carton. Claim 2 recites a
carton for storing beverage cans, much like the twelve-
pack container found all over the country. The patentee
nonetheless claims that something about the way his box
opens is special, in that it allows consumers to get to the
cans quickly without ripping the box open and making a
mess. Here is how it works: There is a finger flap (a
removable area the size of a finger tip) on the top surface
of the box. The finger-flap is centered on a tear-line,
which marks the edge of the removable corner of the box.
When the consumer wants to open the box, she inserts
her finger through the flap and uses it as a grip to tear off
the removable corner.
    So far, so good. Except that somebody else beat the
patentee to his idea by almost fifty years. United States
Patent No. 3,178,242 (filed May 13, 1963) (“Ellis”) dis-
closes a beverage carton with a removable corner and a
finger opening:




               FIG. 3, reproduced from Ellis

    The only difference between Ellis and claim 2 lies—
not in the opening mechanism—but in the can arrange-
ment. The cans are staggered in Ellis, but stacked in
3                                       CW ZUMBIEL   v. KAPPOS


claim 2.1 Note, however, that the patentee did not invent
the stacked arrangement; that is old too. Nor did he lack
motivation to combine: There is no dispute that box-
makers were familiar with advantages of cartons with a
stacked can arrangement, including durability and effi-
cient use of space, compared to those with a staggered
arrangement.
    So let’s be clear what claim 2 is about. The claimed
invention takes the opening from Ellis, takes the stacked
can configuration from another box, and puts them to-
gether. The result is—as one would expect—a box that
has the known benefits of Ellis’s opening and the known
benefits of a stacked can configuration.
    Why is this assembly non-obvious? Because, the
Board explains, the patentee has solved a difficult imple-
mentation problem, the solution to which was supposedly
not obvious to box makers who lacked extraordinary skill.
The secret lies in the proper positioning of the tear line.
That is, according to the Board, ordinary box makers
would not have put the tear line between the first two
cans in the top row.
    Where else could have they put it? There are just four
other options: (1) above the first can, (2) above the second
can, (3) in front of the first can, (4) behind the second can.
The first two alternatives are just offensive to common
sense: With the cans right below, there would be no room
to push the flap through (the flap is positioned at the
center of the tear line). The third and fourth options are
not quite as illogical, but even without expertise in box
making, one may intuit that they make awkward designs


        1  The finger hole in Ellis is on the side of the
box, not on top. The Board has already determined,
however, that placing the finger flap on the top surface
would have been obvious in view of another piece of prior
art (German ’718). J.A.20.
CW ZUMBIEL   v. KAPPOS                                      4


(the third opens too little, the fourth too much).
     More importantly, however, whether some of the
alternatives would work just as well or not, 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 there are no
unexpected results: The opening works the same way
that it did in Ellis, and the stacked can arrangement is
the same as it was before. The patentee put the tear-line
behind the first can; the opening exposed the first can.
Had he put it behind the second can, two cans would have
been exposed. That’s just obvious. See KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The combination
of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable
results.”). Given twelve cans, some cardboard, a pair of
scissors, and some time for trial and error, one of ordinary
skill in box-making should be able to rearrange the cans
in Ellis.

     But it is not that simple, objects the Board, because
Ellis teaches away from putting the tear-line between the
first two cans in the top row. Ellis recommends putting
the tear-line at some specific distance behind the first can
in the bottom row. Because that recommendation is not
necessarily suitable for a stacked can configuration, the
Board concludes that claim 2 is non-obvious.
     Of course Ellis teaches away from placing the tear-
line between the two cans at some level; after all, Ellis is
a patent for a carton with staggered cans. But one of
ordinary skill in the art will not take Ellis’s recommenda-
tion (for placing the tear-line at a specific distance) liter-
ally, especially where that recommendation also hints:
“The placement of the tear-line matters”; “Place the tear-
line so that it helps expose a can”; and “Make sure there
is room for a finger to pass through.” At any rate, even if
5                                     CW ZUMBIEL   v. KAPPOS


one of ordinary skill takes Ellis’s recommendation liter-
ally at the outset, as I already explained, it should not
take long to fix the problem.
    The point here is not that the Board got the facts
wrong. The point is that contrary to the Supreme Court’s
instructions, 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. KSR, 550
U.S. at 419. The Board’s approach relegates one of ordi-
nary skill to an automaton. Should this approach become
commonplace, it would lower the obviousness bar and
hence hinder competition and innovation. That is why,
unlike the majority, I do not see any room for deference to
the Board’s determination in this case.
    I respectfully dissent.
