724 F.2d 1567 (Fed. Cir. 1984), 83-902, Union Carbide Corp. v. American Can Co.

Docket Nº:Appeal No. 83-902.
Citation:724 F.2d 1567
Party Name:220 U.S.P.Q. 584 UNION CARBIDE CORPORATION, Appellant, v. AMERICAN CAN COMPANY, Appellee.
Case Date:January 04, 1984
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

Page 1567

724 F.2d 1567 (Fed. Cir. 1984)

220 U.S.P.Q. 584




Appeal No. 83-902.

United States Court of Appeals, Federal Circuit

January 4, 1984

Michael O. Warnecke, Chicago, Ill., for appellant. With him on brief were Sidney Neuman, William H. Frankel and James P. Naughton, Chicago, Ill.; Thomas I. O'Brien, Danbury, Conn., and John C. Le Fever, New York City, of counsel.

Douglas W. Wyatt, New York City, for appellee. With him on brief was Thomas

Page 1568

  1. O'Rourke, New York City; Stuart S. Bowie, Greenwich, Conn., of counsel.

Before FRIEDMAN, SMITH and NIES, Circuit Judges.

NIES, Circuit Judge.

This case is an appeal from the grant of summary judgment by the United States District Court for the Northern District of Illinois, Eastern Division (Marshall, J.), entered March 4, 1983, holding United States Patent Nos. 4,262,803 ('803) and 4,277,930 ('930) invalid for obviousness under 35 U.S.C. Sec. 103. Union Carbide appeals from that judgment, contesting the ruling of invalidity and asserting that material issues of fact remain to be tried in this case.

Our jurisdiction is found in 28 U.S.C. Sec. 1295(a)(1).

The principal issue in this appeal is whether a genuine issue of fact has been raised with respect to the scope and content of the prior art, and, specifically, whether certain patents, which were not cited by the examiner during prosecution, were properly considered by the trial judge in determining patentability of the claimed article and method under 35 U.S.C. Sec. 103.

We agree with the district court that appellant failed to raise a genuine issue of material fact. Further, we agree that upon consideration of the references each invention "would have been obvious at the time the invention was made to a person having ordinary skill in the art." 35 U.S.C. Sec. 103.

Accordingly, the decision of the trial court holding the '803 and '930 patents invalid must be affirmed.


The subject patents are concerned with the packaging of plastic bags customarily used in the meat packing industry. In the packaging of primal cuts of beef, individual bags must be available to workers to place around each meat cut. The inventions of the patents in suit involve holding a stack of bags held together by an elongate flexible binding, such as a plastic tube, which passes through holes in the bags to form a loop. By being secured to the bottom of the stack of bags, the loop serves as a handle for carrying the bags and, upon being severed, continues to hold the stack of bags together while allowing the bags to be easily removed, one at a time. The record indicates that in other dispensing arrangements actually used in the industry, bags were supplied either in a loose stack, or in a continuous roll with perforations between them, or taped together in shingle fashion, or in dispenser boxes.

Appellant asserts that its invention solved the various problems of carrying the stack of bags, keeping the bags neatly together at the work station, separating the bags easily one at a time, and allowing the bags to be dispensed without tearing, disadvantages associated with other dispensing systems.

The inventions of the patents in suit were developed for Union Carbide, which introduced the claimed wicketed bag package to the industry in 1974. The history of the prosecution by Union Carbide of U.S. Letters Patent 4,262,803 for "a packaged article" and 4,277,930 for "a method of packaging" is detailed in Judge Marshall's opinion. 1 Suffice it here to say that an application was filed in 1974 and after three continuation applications and a divisional application (separating the claimed apparatus and method into two applications), the subject patents issued to Union Carbide in 1981.

The primary obstacle encountered in the long prosecution was simply the obviousness of the inventions. Some of the patents cited by the examiner and/or brought to his attention by Union Carbide during prosecution include:

Blase -- bracket for wicket mounting

(U.S. Pat. No. 3,472,388) plastic bags.

Chamberlin -- flexible loop fastened through

(U.S. Pat. No. 3,261,006 desk note pads or other paper


Altman, Jr. -- plastic bags held together by

(U.S. Pat. No. 3,338,398) paper band and bent wire.

Davis, Jr., et al. -- assembly of bags held in place by

(U.S. Pat. No. 3,184,055) U-shaped wicket.

Million -- stacked bags held together by a

(U.S. Pat. No. 3,312,339) metal wicket.

Williamson et al. -- cardboard carton with tray for

(U.S. Pat. No. 2,925,175) dispensing plastic garment bags.

Tarnoff -- display rack with brackets

(U.S. Pat. No. 3,211,293) extending to support a stack

of articles for sale.

Dinges -- wall mounted bag holder/dispenser

(U.S. Pat. No. 3,454,166) with rigid wicket element

holding an array of bags.

Cwikla -- stack of flexible plastic packaging

(U.S. Pat. No. 3,738,482) bags held together in imbricated

fashion by stiff wire wicket.

Kupcikevicius -- rigid wicket on which bags are

(U.S. Pat. No. 3,770,134) mounted and held in a stacked


Stebbings (cited -- a "file-loop" for papers, i.e., an

only in '930 patent) openable resilient loop on which

(U.S. Pat. No. 858,115) papers may be placed and


Barnett -- wicket element holding stack of

(U.S. Pat. No. 3,406,818) bags in registered array.

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Rejections for obviousness were repeatedly given but eventually claims were allowed, the broadest of which in each patent is the following:

'803 Patent

  1. A package article comprising, in combination:

    a) a stack of flattened flexible packaging sheets, each sheet having two wicket holes therethrough, said wicket holes being in substantial registration with the wicket holes in respectively contiguous sheets in the stack;

    b) an elongate flexible binding member extending through the wicket holes in the stacked sheets to form a hand grippable loop between the wicket holes of the topmost sheet of the stack, said loop being severable, and, when severed, forming upwardly extending free-ended flexible wicket elements holding said sheets in readiness for one at a time removal, and a shank extending from each of the wicket holes in the bottommost sheet of the stack; and

    c) means on each said shank to retain the sheets on the binding member prior to the severing of said flexible binding member hand grippable loop. [Emphasis added.]

    '930 Patent

  2. In a continuous process for the successive packaging of individual articles in a series of articles delivered sequentially to a packaging station, the improvement comprising the steps of:

    a) providing a stack of flattened flexible packaging sheets held assembled on an elongate flexible binding member extending through registered wicket holes in said sheets, said member defining a hand grippable severable loop between the wicket holes of the topmost sheet of said stack and a shank extending from each wicket hole in the bottommost sheet of the stack;

    b) mounting the stack of sheets on a sheet dispensing wicket base means arranged and disposed to secure the shank portion of the flexible binding member;

    c) severing the flexible binding member at a point on the hand grippable loop and thereby forming upwardly extending free-ended flexible wicket elements holding said sheets in readiness for one at a time removal; and

    d) removing the packaging sheets from the stack over said severed ends of the severed loop of the flexible binding member without tearing said sheets. [Emphasis added.]

    After the underlined limitations were added, the examiner allowed the claims, stating that the claims were allowable "solely" based on that limitation. The patents issued in April and July of 1981.

    In August 1982 Union Carbide brought suit against American Can Company charging infringement by American Can's making and selling an infringing bag package article and contributing to the infringement...

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