Appeal No. 2005-1180
Application No. 09/791,298
inherently describes an insulating compartment.
For the reasons set forth above, the rejection of claim 6 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Peiker and Cramer is affirmed. Since claim 10
stands or falls with the patentability of claim 6, the rejection of claim 10 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Peiker and Cramer is also affirmed.
F. Rejection of claims 11-15
Claims 11-15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Peiker and Sorensen. See Answer, pp. 7-8.
Claim 11 is dependent on claim 1. Claims 1 and 11 read, in part, as follows:
1. A carton . . . comprising:
a closable and insulating first compartment,
said first compartment having a first top wall and a first flap covering a
first opening to said first compartment . . . .
11. A carton as claimed in claim 1 wherein:
said first flap includes said first top wall of said first compartment . . . .
Claims 1 and 11 are inconsistent where, on the one hand, claim 1 requires the first
compartment to have a first top wall AND a first flap, and on the other hand, claim 11 requires
the first flap to INCLUDE the first top wall of the first compartment. Before this panel can
decide whether to affirm or reverse the rejection of claims 11-15, the examiner and appellants
need to resolve this issue. See In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA
1962) (it is improper to rely on speculative assumptions regarding the meaning of a claim and
then base a rejection under 35 U.S.C. § 103 on these assumptions). Therefore, the rejection of
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