Appeal No. 2005-1180
Application No. 09/791,298
combination of Peiker, Pickard, Sorensen and Cramer. See Answer, pp. 10-11.
Claim 37 depends from claim 36. The rejection of claim 36 under 35 U.S.C. § 103 as
being unpatentable over the combination of Peiker, Pickard, Sorensen and Cramer has been
reversed. See section “M.,” supra. Therefore, the rejection of claim 37 under 35 U.S.C. § 103
as being unpatentable over the combination of Peiker, Pickard, Sorensen and Cramer is also
reversed. See 37 CFR § 1.75(c) (2003) (“Claims in dependent form shall be construed to
include all the limitations of the claim incorporated by reference into the dependent claim.”).
Other issues
The rejection of claim 31 under 35 U.S.C. § 103 as being unpatentable over the
combination of Peiker, Pickard and Sorensen has been reversed. However, we note that claims
20 and 31 appear to be inconsistent. Specifically, claim 20 recites a carton comprising a first
compartment having a first top wall AND a first flap. Claim 31, on the other hand, depends
from claim 20 and requires the first flap to INCLUDE the first top wall of the first
compartment.
Upon return of this application to the jurisdiction of the examiner, we urge the examiner
to consider whether one of ordinary skill in the art would have understood the scope of claim
31. Any consideration of this issue should also include claims 32-37 which ultimately depend
from claim 31. It is important that the examiner recognize that the reversal of the rejections of
claims 31-35 and claims 36 and 37 under 35 U.S.C. § 103(a) does not preclude the examiner
from exploring this newly raised issue, and, if appropriate, rejecting claims 31-37 under 35
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