Campbell’s Imaginary-Tiny-Cans Fail to Invalidate

by Dennis Crouch

Campbell Soup Co. v. Gamon Plus, Inc. (Fed. Cir. 2019) (Campbell Soup II) (non-precedential).

This is the second appellate decision this month involving these two parties and Gamon’s  patented rack for displaying and dispensing cans. As in Campbell Soup I, this decision stems from an IPR challenge filed by Campbell Soup against a Gamon patent. The difference – while Campbell Soup I involved design patents; Campbell Soup II focuses on the related utility patent.

These patents are all part of a big patent family that started with a 2002 provisional application followed by a non-provisional in 2003, then the utility patent at issue here (US Patent 8,827,111), followed later by the design patents at issue in Campbell Soup I. The design patents do not appear to claim priority to the provisional (since that is not allowed under the law).

In the utility case, the PTAB partially instituted Campbell’s requested IPR but declined to institute as to some of the claims and some of the grounds.  Under SAS, that partial institution was improper and thus the case is remanded “to address the non-instituted claims and grounds in Campbell’s petition.”  SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348 (2018) (all claims challenged) as expanded by Adidas AG v. Nike, Inc., 894 F.3d 1256 (Fed. Cir. 2018) (all grounds challenged).  As discussed below, the court also addressed the PTAB’s holding in favor of the patentee as to the instituted claims (particularly claim 27).

The claimed dispenser has a few interesting features — the most important is that its design that allows a customer to replace a can that had been removed. The basic approach is to have two chutes of cans that snake their way down the structure.  At the bottom, the lower chute and upper chute each have a flange to stop cans from rolling off, with the upper stopper offset rearwardly to leave a space for replacing a can. “This feature allows the customer to replace a product that they decide not to purchase.”  The prior art had two-chutes with an offset upper chute, but apparently was not offset enough to create a stable pocket for replacement.  (Prior art shown in drawing below)

 

Campbell noted that the replacement feature would work if someone used smaller cans — noting the prior art statement that “[o]bviously, the device may be made … in any desired size to accommodate varying sizes of cans to facilitate the dispensing thereof.”  Note Campbell’s argument:

The dispenser claimed in Weichselbaum—without any modification to the structure of the device—is capable of the functionality described in limitation [9] when Weichselbaum is used with cans smaller than those shown for illustrative purposes in its figures.

Appellants’ Br. 31 (emphasis in original). In other words, Campbell argues that the stopper location of the prior art works by changing the size of the cans relative to the dispenser (or by increasing the dispenser size relative to the cans).

On appeal, the Federal Circuit sided with the patentee — holding that the cans are part of the prior art design.  Thus, “changing the [relative] size of the cans . . . is a modification” of the prior art reference. In referencing the “obviously” quote from the patent (recited above), the Federal Circuit held that the statement could be interpreted as indicating a change in can size could be accommodated by a change in dispenser size.   Thus, “substantial evidence” supported the PTAB’s findings regarding the differences between the prior art and the claimed invention that served as a foundational fact for the PTAB’s obviousness conclusion.

As a separate reason for affirmance, the Federal Circuit concluded that the patentee’s objective indicia of nonobviousness are “sufficient to affirm” the not-proven-invalid conclusion.  The Federal Circuit did not review these findings in particular, but the PTAB held particularly:

  1. Commercial Success: Patent Owner has established that an appreciable amount of Campbell’s increased commercial success of soup during the relevant time period is attributable to the display rack covered by claim 27 of the ’111 patent.  (Query how this relates to the parallel patents that are all part of the same family.)
  2. Copying: Patent Owner has established that Petitioner copied Patent Owner’s
    display racks.

Note here that the commercial success element is a bit interesting and unusual.  The “success” identified by the PTAB is not that the patented device is a huge commercial success, but instead that it led to more sales of cans — i.e., it worked well for its purpose.

Design Patent Obviousness: How to Pick a Primary Reference

50 thoughts on “Campbell’s Imaginary-Tiny-Cans Fail to Invalidate

  1. 9

    Why is it that certain people want to use “common sense” to remove the capability of patent protection and the same people want to use the opposite of “common sense” to also remove the capability of patent protection?

  2. 8

    Seems legit. Campbells can afford it.

    Even if the thing did say you can use smaller cans they didn’t get into just how smaller, and getting too smaller of cans would make it absurd to use the chute.

    1. 8.1

      Even if the thing did say you can use smaller cans they didn’t get into just how smaller, and getting too smaller of cans would make it absurd to use the chute.

      We’re talking about changing the relationship between the prior art device and the diameter of the cans by a matter of no more than an inch or two. It’s literally the difference between dispensing soup and dispensing red bull. I don’t know what kind of dimensions you’re thinking about but the difference can’t possibly rise to the level of “absurd to use the chute.”

      1. 8.1.1

        With Random, there is NO such thing as “ the difference can’t possibly rise to the level of “absurd” — as ALL of his ‘logic’ runs to the absurd without batting an eye.

      2. 8.1.2

        “It’s literally the difference between dispensing soup and dispensing red bull.”

        Yeah and dispensing red bull from a soup dispenser in the supermarket is a big meh on the obviousness. They’re not going to fit right, two or more may jam up the chute as they try to fit into the wrong shaped chute as they are dispensed throughout the day, the customer will likely be put off, etc. etc. At the very least I would require a showing of some of this happening irl embs as exhibits to show just how well it worked out.

  3. 7

    Mixed emotions on the general “fit for purpose” theme that seems to be lurking in the background here, as I recall an oil can spout/popcorn delivery case that eliminated the “work product” that traveled through the respective devices.

  4. 6

    Newman in Campbell Soup 1: You can’t read a can into a prior art can dispenser.

    Newman in Campbell Soup 2: You must read the dimensions of a can into a prior art can dispenser.

    1. 6.1

      Ben,

      Are you mixing apples and oranges (design and utility patents)…?

  5. 5

    This is an interesting case which highlights both sides of A&P Tea Co. On the one hand, the claim is nothing more than elongating the lower rack, and generally modifying a dimension by elongating is not inventive:

    “Since the courts below perceived invention only in an extension of the counter, we must first determine whether they were right in so doing. We think not. [W]ere we to treat the extension as adequately disclosed, it would not amount to an invention. We need not go so far as to say that invention never can reside in mere change of dimensions of an old device, but certainly it cannot be found in mere elongation of a merchant’s counter—a contrivance which, time out of mind, has been of whatever length suited the merchant’s needs.”

    Conversely, the argument would be that this is the non-negative Lincoln Engineering situation discussed in that case:

    “The negative rule accrued from many litigations was condensed about as precisely as the subject permits in Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U. S. 545, 549: “The mere aggregation of a number of old parts or elements which, in the aggregation, perform or produce no new or different function or operation than that theretofore performed or produced by them, is not patentable invention.” To the same end is Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U. S. 350, and Cuno Engineering Corp. v. Automatic Devices Corp., 314 U. S. 84. The conjunction or concert of known elements must contribute something; only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable. Elements may, of course, especially in chemistry or electronics, take on some new quality or function from being brought into concert, but this is not a usual result of uniting elements old in mechanics. This case is wanting in any unusual or surprising consequences from the unification of the elements here concerned, and there is nothing to indicate that the lower courts scrutinized the claims in the light of this rather severe test.”

    The argument being that this is a “new function.” Though I doubt that is really what the court meant by new function, as the idea that something round will roll if you don’t hold it in place is hardly any kind of new functionality.

    I personally would have found it obvious and it’s borderline reversible error. While I do think the prior art only anticipates varying the holder in proportion to the can size (i.e. the federal circuit is correct in its reading of the prior art), the question is not what the prior art *does* but what it *renders obvious*. The invention is nothing more than the prior art, with smaller cans substituted for cans of the size depicted. Can sizes are known to be fungible. Simple substitution is obvious. In other words, one of skill, or even a lay person who simply possessed the prior art, who had cans of a smaller size, would find it obvious to use the smaller size cans in the dispenser. The use of those smaller cans would effectuate the functionality claimed, and the claim is obvious. It strains credulity to think that if you had a fixed size dispenser (as you clearly do once you make/buy one), and multiple size cans (as even a lay person will tell you commonly exist), it would not be obvious to try dispensing all of the different size cans with your one dispenser. In short – while I agree the prior art doesn’t explicitly tell you to use smaller cans in the same size dispenser, anyone would find it obvious to use smaller cans in the same size dispenser, which makes the claims to “the same dispenser, with smaller cans” (all that is needed to achieve the functionality) obvious.

    1. 5.1

      But all *soup* cans were the same size before this invention made it possible to display and deliver a different sized can. Right?

      Also it’s not clear AT ALL that the prior art contemplated cans with low salt soup. Or cans with lottery numbers printed on them. Or labels indicating that the cans are gluten-free.

      Johnny needs a patent. Let’s not take his freedom away. I hear that the Ukraine is handing out a lot of strong patents these days. It’s a happening place.

    2. 5.2

      Indeed an interesting case, for one accustomed to doing obviousness the EPO way. The patent specification is short and sweet, in the section between the title and the intro to the drawings. It tells of two problems with the prior art. First, loading from the back of the rack is tedious and wasteful of space. Second, customers can’t pull out a can, admire it, then put it back on the rack. The claimed subject matter solves these problems, that’s clear.

      These are genuine problems, it seems not solved by the prior art. The prior art lacks any hint or suggestion to use the claimed combination of technical features to solve the technical problems (how to front load, how to let the customer inspect and return). Ergo, the claimed feature combination (which includes the full size cans) was not obvious.

      Random, your assertion that it was obvious to load a large can dispenser with smaller diameter cans strikes me as questionable. A dispenser is not like a set of shelves or a shopping basket. Rather, it is subsidiary to the product and takes its design from the product it is required to display and push. The product has to look good. Putting mini cans on a rack intended for display of full size cans is hardly going to be effective to sell more cans, is it? Why would anybody do that, unless they had already come to the inventive insight that customers need to be able to pull out a can, inspect it, then return it to the rack?

      Which all goes to show how hard it is, to decide what was obvious.

      1. 5.2.1

        Here’s a rule of thumb I think is obvious, Max. If its hard to show its obvious, its not obvious.

        1. 5.2.1.1

          Tosh, Les. Take blue and green. It is “hard” to show whether any given colour field is “blue” or “green”. That of itself doesn’t make all such colour fields by default blue.

          Some questions are inherently “hard” to resolve. The patent statute imposes on courts the burden of deciding whether any given subject matter is or is not “obvious”. That’s inherently hard. That doesn’t mean that, in all cases where there is some sort of non-obviousness argument, this suffices to render the subject matter non-obvious in law.

      2. 5.2.2

        The prior art lacks any hint or suggestion to use the claimed combination of technical features to solve the technical problems (how to front load, how to let the customer inspect and return). Ergo, the claimed feature combination (which includes the full size cans) was not obvious.

        You misapply the obviousness analysis. It wasn’t *the patentee* who invented the customer inspecting and returning, instead inspecting and returning is admitted prior art about the behavior of customers. Far from being a reason for patentability, it is a fact tending to show obviousness.

        The prior art device is prior art. The normal use of the prior art device would result in cans of all types being placed into the prior art device (even though the prior art spec may only anticipate cans of a certain size). The statement that customers like to inspect and return (which is easily provable even absent the admission) is a motivation for the method of “inspect and return” being obvious. But that last sentence is unnecessary, as the claim is not to the method of inspect and return, but only to a device that is capable of accepting a returned can. It should be unsurprising that many devices are capable of being all sorts of things when you don’t define or limit the size of the widget that interacts with them, or when you do (barely) limit the widget, but that limited widgets was a known substitute in the prior art.

        Random, your assertion that it was obvious to load a large can dispenser with smaller diameter cans strikes me as questionable. A dispenser is not like a set of shelves or a shopping basket. Rather, it is subsidiary to the product and takes its design from the product it is required to display and push. The product has to look good. Putting mini cans on a rack intended for display of full size cans is hardly going to be effective to sell more cans, is it?

        The claim doesn’t require selling of cans, so your argument that there may be a teaching-away of a sub-set of the claim scope is legally incorrect (i.e. something that “teaches away” from less than all of the scope is no evidence toward the obviousness of the rest of the scope and therefore is irrelevant, the case was covered by patently-0, although the name escapes me atm). It is irrelevant what “looks good” or is “effective to sell cans.”

        The only question is if it is obvious to partner the prior art device with smaller cans than were explicitly stated in the prior art. That question also has a legal statement associated with it, and it is simple substitution. The rule, stated in US v Adams and again in KSR is “When a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” Because cans are substitutes for each other for a device that dispenses cans (your unclaimed “looks good” limitation notwithstanding) it is obvious to create a prior-art-device-with-smaller-cans system. The fact that such a device inherently allows for the return of cans is sufficient to defeat a claim to the device, as the claim only requires a device made in such proportions as to allow for something to occur. Since it is not a method claim, it is not dependent upon the occurrence occurring.

        Why would anybody do that, unless they had already come to the inventive insight that customers need to be able to pull out a can, inspect it, then return it to the rack?

        Just to boil this down for you – An obvious solution to an unknown problem is only patentable when *the applicant* discovers the previously-unknown problem. When, as here, the ubiquitous, notorious action of a third party is described, it is a statement of admitted prior art motivation, not a statement of an undiscovered problem. You can never get a patent for an obvious solution based on what third-parties are known to be doing.

        In other words, a legally-plausible-if-factually-untrue invention might be “Hey I picked up a can of soup and I decided I didn’t want it, so I went to put it back. I’m the first person to ever do that, and I anticipate other people will have the same problem in the future, so here is an obvious solution to how to put it back.” But an invention can NEVER be “Hey we all know that other people pick up cans of soup and decide they don’t want it, and I anticipate others will have the same problem in the future, so here is an obvious solution to how to put it back.” The former is the “obvious solution to an unknown problem” scenario, the latter is just commonplace obviousness with a prior art admission thrown in.

        Which all goes to show how hard it is, to decide what was obvious.

        I think you’re largely confusing the obviousness of an unclaimed method with the obviousness of the claimed device.

        1. 5.2.2.1

          I am working from what the patent says of the prior art, that customers do take the can from the bottom of the stack and then, sometimes, put it down and don’t buy it. And that store operators have to put the discarded cans back in the dispenser. But dispensers are conventionally re-stocked from the top of the stack, not the bottom. Where is the hint or suggestion in the prior art for anybody, whether customer or shelf-stacker, to push up a stack of heavy soup cans, to re-insert the unwanted can below the lowermost can in the stack? As far as I can see, you are reading more into the prior art than is actually there. in obviousness, at least in the courts of England, what is decisive is the common general knowledge of the PHOSITA. Do we know what that was, here, in this case?

          Yes, I agree with you that there is a difference in patentability between claims directed to i) dispenser per se, ii) combination of dispenser and cans of the intended size, and iii) method of dispensing cans to fickle, fussy or bored customers. Nevertheless, I am still not convinced that the inventive concept we are discussing here, accurately claimed, is unpatentably obvious, relative to the totality of the state of the art, fairly assessed.

          1. 5.2.2.1.1

            Conventional loaders may also dissuade from any such “front loading” by way not only of gravity feeds, but also mechanically assisted feeds (such as by way of spring force).

            Additionally, with some goods, “front loading” is expressly NOT desired (think of things with expiration dates — front loading in such situations would increase spoilage because the near term dates would be the items continuously pushed to the back with loading of newer, fresher goods.

            But leave it to the typical anti-patent minded folks here such as Random to cry out “no patent for you” in their hurry to show how “well” they understand innovation protection.

          2. 5.2.2.1.2

            Where is the hint or suggestion in the prior art for anybody, whether customer or shelf-stacker, to push up a stack of heavy soup cans, to re-insert the unwanted can below the lowermost can in the stack?

            Neither the claims nor the court opinion mentions this, so it is unsurprising that there is no record evidence of it. Generally we only search claims. So yeah I agree with you of all the possible inventions we’ve discussed it seems like the most non-obvious, but everything seems non-obvious until you gather information about what was known in the prior art.

            As far as I can see, you are reading more into the prior art than is actually there. in obviousness, at least in the courts of England, what is decisive is the common general knowledge of the PHOSITA. Do we know what that was, here, in this case?

            Let me be clear about what I am talking about – I’m talking about (9) in the claim, which the PTAB found non-obvious and which the federal circuit said is supported by substantial evidence. See the prior art figure with the blue and yellow cans above? The alleged invention is extending the lower shelf 14 further left by a matter of inches. For example, one embodiment would extend 14 the length of another can so that two cans are “exposed”. Then, when a consumer takes the first can, the second can rolls to where the first was, a third rolls to where the second was, and a customer who decides not to buy the first can place the first can on top of (pyramid-style) the second and third can. There is no mention of “pushing up a stack of heavy soup cans.” Nor is there even claim to the *method* of putting the first can on top of the second and third (pyramid stacking circular objects is clearly known to the prior art, as anyone who has seen barrels or casks stored knows). Instead the claim is to extending 14 out the length of an extra can *in one embodiment.* The question for this embodiment is: “Is it obvious to modify a dispenser that allows for one can to be exposed to be dispensed to allow for two cans to be exposed to be dispensed?” Anyone could come up with a plethora of motivations for such an extension, not the least of which is that human beings have two hands, so exposing two cans allows for double dispensation at once.

            In an even more obvious embodiment, 14 is only extended out half the length of a can. This would allow a replaced yellow can (see figure) to sit above and to the right of the blue can. This would let it rest between the blue can and the stop-wall of the upper rack. The modification here is even more minute than the modification above, and almost reaches the level of fabrication error in making the prior art.

            In an even more obvious embodiment, we take the exact same dispenser lengths as shown in the figure, but instead *draw cans that are only 3/4th the diameter.* This has the effect of the previous embodiment – now there is enough room to place the yellow can between the blue can and the wall. If we were to redraw the cans to be only half the diameter, we would have the first embodiment above – allowing a first can to sit pyramid style on the second and third cans.

            As you can see, when you make no reference to *can size* the prior art figure is certainly capable of performing the functionality claimed. So the dispenser *by itself* could not possibly be non-obvious. Instead a system claim that relates the dispenser to can size is used. But this system is also obvious if the prior art 1) had cans 3/4th the diameter of soup cans and 2) had a motivation to use those cans in the dispenser. Both conditionals exist. For example (as I say above) a red bull can preexisted, and there is a motivation to use the red bull can in the dispenser, because the dispenser provides the same dispensing benefit to red bull cans that it does to soup cans. i.e. Cans are simple substitute for each other, and one of skill is motivated to use simple substitutes.

            Of course, all of this analysis is somewhat moot, as A&P Tea Co seems to pretty much control this issue – Extending the length of something is simply not an inventive act. In other words, even if we pretended that pyramid-stacking cylinders was entirely unknown to the art, or that all previous cans were the same diameter, or that people don’t ever pick up two things at once, a device that differs from a prior art device merely by elongating a ramp may, under the law, simply be per se obvious. After all, the holding in A&P Tea was that elongating a counter, which allowed for extremely more efficient grocery bagging, was obvious regardless of all the evidence that showed that it was a commercial success and the subject of copying. There was certainly more evidence of non-obviousness in A&P Tea than here, and that case got reversed on *legal* grounds.

            The claim is not to the method of actually performing the stacking, or what the device *allows one to do,* the claim is to *the device* and even if extending the length of a ramp allows for a novel and wonderous thing to happen, it may be the law that the only protection one can garner is in a method for the novel functional result, and NOT in a machine with a ramp extended for another few inches.

            Nevertheless, I am still not convinced that the inventive concept we are discussing here, accurately claimed, is unpatentably obvious, relative to the totality of the state of the art, fairly assessed.

            Again, part of the issue seems to be that we are not clearly agreeing on what the inventive concept is, since I have not read anything about “shoving cans” prior to your statement here. The claim talks about front-loading, but not front loading from the bottom (i.e. “shoving cans” to replace the dispensed one exactly back where it was). The claim discusses a C-shaped device (see above figure) that allows the plate 70 to be lifted up to feed cans in from the front – it front-loads from the top. That’s not asserted to be inventive and isn’t plausibly inventive, since the prior art just had the same kind of feed in the back. The allegedly inventive part is how far the lower rack extends outward past the upper rack. Regardless, since the claim isn’t a method claim, I am sure there was no search of the can-shove method you suggest, so any discussion about the obvious or non-obviousness of the method is not based on fact at all.

            With respect to the can restock method that clearly was contemplated (where a customer returns a dispensed can by placing it back on top of a can-to-be-next-dispensed), that method is 1) obvious because the patentee admits that customers seek to return cans they don’t wish to purchase to where they got it from, and 2) a pointless invention anyway, as it makes the customer, rather than the store or the product seller the infringer. You don’t need to find any more art than is already cited, but I’m sure more art could be found were that method actually claimed. It’s common lay experience that people generally try and replace objects they pick up and decide not to buy. I will admit that your can-shoving method certainly sounds the most likely non-obvious claim (though that is a low bar given the obviousness of the device and can-replacement-method) but the reason you have no prior art is because it isn’t in the claim. If you only take the patentee’s self-serving spec statement as your only evidence, everything would be patentable.

            1. 5.2.2.1.2.1

              Thanks for all that analysis and comment. Clearly, you have spent more time on this than me. My problem is that I don’t care for the A&P decision. For me, a small change in one dimension of an old machine might or might not be inventive. To dismiss all such changes as per se obvious is, for me, a disappointment.

              1. 5.2.2.1.2.1.1

                Random’s “Gist” is that nonobviousness comes in two flavors: Flash of Genius and Serendipity.

                1. Random’s “Gist” is that nonobviousness comes in two flavors: Flash of Genius and Serendipity.

                  My non-obviousness comes in the variety that the Supreme Court says – teaching the art something it didn’t know. Consequently, when we’re talking about computers and mechanics, two subjects that are exceedingly well-explored and predictable, its very hard to be non-obvious. I know less about bio and chem, and I know that bio and chem is less predictable than my subjects, so the art that is most likely to be non-obvious is rarely commented on by me. Unlike some people I don’t like to talk when I don’t know what I’m talking about.

                  At the end of the day, this art knew it could make the dispensing ramp any length it wanted, and nobody appears to dispute the clear obviousness of, e.g. exposing multiple cans so multiple cans can be dispensed at once. Consequently, when the change over the prior art is elongating the ramp, that elongation is obvious. The PTAB found other reasons that the claim as a whole is non-obvious, which I don’t discuss or debate, I simply take issue with the idea that elongating a ramp is non-obvious. That’s not a radical position to take.

                2. In reply to Random’s most recent comment there are loads of things I would wish to debate with him. I’m a materials scientist so have to argue patentability in both the “predictable” arts (engineering) and those that are not (chemistry). The distinction gets less and less real.

                  At the EPO there is a line of obviousness case law we call the “One Way Street” that Random would approve. Even when the claim delivers a new and useful technical effect, its subject matter is still obvious if the PHOSITA was on the one way street and would have assembled the claimed combination anyway, in the course of routine technical development (Obvious is Latin for lying in the road).

                  The thing is though, of the multitude of claims that get attacked on this logic, few actually get struck down as obvious.

                  That said, this case on cans remains a nice 50:50 case for debating how to reason obviousness.

                3. Unlike some people I don’t like to talk when I don’t know what I’m talking about.

                  WAY WAY WAY too late for that.

                  Here, you want to take some OVER-simplified aspect of “I simply take issue with the idea that elongating a ramp is non-obvious. That’s not a radical position to take.” when doing such is eminently IMPROPER, as you divorce yourself from any notion of the Graham Factors and take a single piece part of an element and make grandiose claims concerning such — and then you have the gall to state “That’s not a radical position to take“.

                  It’s both radical and plain wrong.

                  What the “F” are you doing being an examiner?

  6. 4

    I think that Feature (1) of the claim is key. It recites the presence of a plurality of identical cylindrical product items.

    At first I thought that the claim was to a dispenser per se, and so did not understand the court’s reasoning in relation to such subject matter.

    Can anybody tell me: do cans of soup arrive at the point of sale already in their dispenser? If so, is the dispenser discarded when it is empty or is it returned to Campbells for re-filling? Or do shelf-stackers re-fill a stationary dispenser repeatedly, with new batches of soup cans arriving at the point of sale in big cardboard boxes? Does the patent owner not lose useful scope when claiming the soup + dispenser combination (as opposed to the dispenser on its own)?

    1. 4.1

      Does the patent owner not lose useful scope when claiming the soup + dispenser combination (as opposed to the dispenser on its own)?

      The dispenser on its own would unquestionably be obvious over the prior art, so there is no useful scope lost.

      1. 4.1.1

        But see MaxDrei’s comment above which refuted your assertion here.

        1. 4.1.1.1

          Good point, anon. Perhaps there was room, after all, to claim the dispenser on its own, without including in the claim a plurality of cylindrical cans. How about adding to the claim something about the dispenser being re-stockable only from the front and not from the back? That would round off nicely the story in the patent application as filed, of unappreciated problem addressed and non-obvious solution found.

          1. 4.1.1.1.1

            MaxDrei,

            I believe that the contraption is specifically built for “multi-mode “loading.

            Typically, loading by the store owner is intended to be as quick and as high volume as possible. In that mode, cans (shipped separately in their own boxes) are typically to be engaged with rear-loading “mass-dumping” if possible.

            This loading is quite distinct from the front-loading aspect.

            The front loading aspect is geared to a completely different person and circumstance. The front loader is for a much slower, “one-off” purchaser (NOT store employee) who may select an item, review the information content on the label of the item (generally NOT possible while the can is in the delivery mechanism), and upon choosing not to purchase the item, may “re-load” singularly from the front.

            Conventionally, the load aspect has been only from the store’s perspective (rear, mass loading) and oft times a purchaser has no means to reload the item back into a ‘proper’ slot, and will merely leave the originally-selected, but non-chosen item anywhere in the general vicinity. This is disorderly for canned goods, but may induce even more disarray and possible damage to refrigerated goods.

            Be aware of (and beware of) a lurking notion here of “well that’s just mechanical so it does not deserve a patent”. That notion sounds in the unstated “Flash of Genius” or “desired synergy” views that can be read into some of the comments here.

            The animus to NOT give patents is very real.

            1. 4.1.1.1.1.1

              Yes, the A&P Tea case is also interesting from an EPO obviousness standpoint. I think the US court of appeal reasoning, why that claim was obvious, is wrong-headed. More recently, there was a Fed Ct case about a surfboard that I think also has disappointing reasoning. It is all too easy to blow away mech claims using hindsight. The EPO’s methodology squeezes impermissible hindsight out of the equation.

              Not that EPO-PSA gives all claims an easy ride. Far from it. The truly obvious stuff it sweeps away easily.

          2. 4.1.1.1.2

            How about adding to the claim something about the dispenser being re-stockable only from the front and not from the back? That would round off nicely the story in the patent application as filed, of unappreciated problem addressed and non-obvious solution found.

            But the prior art WAS restockable from the front UNLESS you limit it to cans of a certain size, since smaller cans would be restockable from the front. The *device* (absent a mention of cans) is obvious. What you’re talking about would not be the static *structural capability* (an inherent quality of the prior art device) but instead would be an active *method* of restocking from the front (i.e. the proper “box” to place this invention in is “a new use of an old device”). That is *possibly* non-obvious, although the only reason you think so is because you take the spec’s self-serving statement that the problem was not recognized in the art as gospel, which I agree is fair to do in the immediate instance absent any evidentiary search.

            I don’t like to wade into this, as its not my forte, but I would assume that the proper patent would suffer from the value-problem that the infringers are the small customers performing the method, and not the large corporations selling or (conventionally) stocking the device. You’ll notice why a patent examiner is attuned to the difference between between what you want to claim and what you actually deserve.

            1. 4.1.1.1.2.1

              The parent post was made before I realized you are differentiating “front loading” with “inspect and return” and is in reference to “inspect and return.”

              I’m not aware of anything about front loading in the claims, but it’s possible front loading may have some structural thing that matters. The court didn’t appear to think so. Regardless, the above is confined to “inspect and return”

              1. 4.1.1.1.2.1.1

                As to “front loading” perhaps it differs from product to product. Consider cigarette packet dispensing machines. To re-stock them, one feeds fresh packets to the top of the stack. The stack only ever moves in one direction, downwards. then consider a dispenser of bullets, a “clip” of ammunition. Its stack of bullets moves during re-stacking, in a direction opposite to the one in which it moves when the bullets are being fired. How is it, conventionally, with cans of soup?

                Perhaps like with office stapling machines, that is to say, both modes are possible. But a long stack of soup cans is heavy, which suggests that re-stocking from the base of the stack is too much like hard work and therefore NOT obvious.

            2. 4.1.1.1.2.2

              But the prior art WAS restockable from the front UNLESS you limit it to cans of a certain size”

              Translation: but I CAN hammer in those screws…..

  7. 3

    If you have to modify the prior art reference to force fit it onto the claims you are trying to invalidate, then you are most likely engaging in impermissible hindsight reconstruction of the prior art. This is what the PTAB found (slip op. at 7) which the Fed. Cir. affirmed.

    1. 3.1

      If you have to modify the prior art reference to force fit it onto the claims you are trying to invalidate, then you are most likely engaging in impermissible hindsight reconstruction of the prior art.

      Is it forcing it to consider using different size cans with the dispenser you have? If you have a water bottle do you need to be explicitly told that it can hold other liquids too, or is that something that can be figured out without hindsight bias?

      1. 3.1.1

        Depends on who owns the liquid, or if it was purchased using a contract with auto-fillable forms.

        Or maybe the color of the liquid is easier to see under nightclub lighting.

        Gotta let Johnny play the patent game, after all. And Johnny ain’t that bright, really.

        1. 3.1.1.1

          Even though you attempt a joke with color of liquid under night club lighting, I am reminded of the discussion point wherein color very much has a patentable weight due to its functional attribute (the blue racquetball discussion).

          1. 3.1.1.1.1

            It is not just the blue ball example. Consider a yellow and black striped tape. It is much more effective than tapes of other colours, for fencing cattle in. Ask Temple Grandin. Cows, you see, think that the tape must be a snake, and take evasive action. Is that “technical”? I think it is.

        2. 3.1.1.2

          MM – legitimate request to help understand your perspective:

          Could you provide one US patent number (in any art unit) that has issued in the past decade that you would stand by and defend?

          1. 3.1.1.2.1

            You are not the first to ask – nor the first to be ignored when asking that question.

            1. 3.1.1.2.1.1

              @anon: If your statement is true (that MM has come across a Patent that she believes is valid) – why in the world is she wasting her time on this forum?

              Seems like a lot of hot air is being blown when the only statement from her should be, “The US Patent System should be dismantled”.

              At least that would be a straight forward position.

              1. 3.1.1.2.1.1.1

                MM is Malcolm Mooney (purportedly a “he”) and has been posting his blight and nonsense on these boards for more than 14 and a half years.

                You should not expect anything near a straightforward answer from Malcolm.

                By the way, welcome to the blog and I hope that you engage (and figure out who will engage back with you)

      2. 3.1.2

        Is it forcing it to consider using different size cans with the dispenser you have?

        But I have a hammer, and I can hammer those screws into place…

        1. 3.1.2.1

          Hahaha…. So many Office Actions I receive are basically this.

          1. 3.1.2.1.1

            This is because examiners (in the Royal “You” sense) are not taught how to examine, but rather, they are taught how to reject.

            Look above at the level of effort that Random puts into rejecting — even changing the size of the cans (with ZERO cognition that the device is parametric TO the size of the cans, and can-size changes have effects across the board and NOT just to his hind-sight driven “no patent for you.”

            His “litany” of “motivations” is absurd, and drives to his past predilections that patents fall only into two categories: Flash of Genius and Serendipity. Of course, this was the view of the pre-1952 Supreme Court and of course this was expressly refuted by Congress in the Act of 1952.

            The bigger problem with the “gist” of “Flash of Genius” or “Serendipity” is that both of those instances do not support having a patent system by which the promotion (and the use of that word includes the advertising sense of ‘display of information’) provides the shoulders upon which the next generation may stand. To Random, ANY such ‘standing on shoulders’ is simply not enough to warrant a patent.

            On top of that misapprehension, he actually believes that anyone else looking at this and seeing invention must be the ones misapprehending how to apply 35 USC 103.

            1. 3.1.2.1.1.1

              Look above at the level of effort that Random puts into rejecting — even changing the size of the cans (with ZERO cognition that the device is parametric TO the size of the cans, and can-size changes have effects across the board and NOT just to his hind-sight driven “no patent for you.”

              Of course, the question isn’t whether the original inventor custom-tailored the device to a particular can size – that’s just a statement of what was anticipated. The question is whether a hypothetical person who knows everything in the art would be motivated to use the dispenser with other cans. I simply note that grocery stores stock different size cans. There’s no “effort” involved. You would have to *ignore the law* of US v. Adams in order to disagree with me – when two things are general substitutes of each other, it is obvious to try the substitute in place of the prior art element. The most likely consumer of the prior art dispenser device (a grocery store owner) has, in his possession, two things which are general substitutes for each other and a machine that improves the usage of one of those things. *Of course* one would try using the dispenser with the other can size.

              “Effects across the board” are irrelevant – a smaller diameter can would *work.* Assuming (and it’s truly an assumption since a 3/4th diameter can wouldn’t have this problem) that the dispenser worked less efficiently with a not-perfectly-suited can, that doesn’t make it suddenly “not prior art” or “not obvious.” If we only required things to work perfectly, no claim would ever survive and no patent would issue.

              As I say above – if you have a vessel that carries water, it is obvious to try and use it to carry other liquids, even without being told to use it for any particular liquid. To think otherwise frightens the word “obvious” out of all meaning.

              Your problem, in thinking that I apply “flash of genius” or “serendipity” is that you ignore that the person who we consider is not a human being with some knowledge, but a hypothetical person of skill in the art who knows everything the art knows. Once you know of the can dispenser, and know of smaller diameter cans, you are motivated to used the dispenser to do what it always does – dispense cans. And when it dispenses these particular smaller diameter cans, it reads on the claim feature at issue. If you want to limit yourself to only using a device explicitly as its inventor told you to, you should just admit that you don’t believe section 103 should exist and we should allow or reject solely upon section 102.

              1. 3.1.2.1.1.1.1

                would be motivated to use the dispenser with other cans

                Wrong.

                It’s a nice strawman though.

              2. 3.1.2.1.1.1.2

                Your problem, in thinking that I apply “flash of genius” or “serendipity” is that you ignore

                Absolutely wrong – you do not have a grasp of the issue, nor of the points that I have presented.

                My point has NOTHING to do with your attempted confusion of somehow turning 103 into 102.

              3. 3.1.2.1.1.1.3

                Then again, if you have a clip for ammunition of a specific calibre, do you re-load it with ammo of a different smaller diameter? There is a spectrum between a bucket half full of water and a clip into which you try to stack under-sized bullets.

                Where is the beverage can dispenser along that spectrum. Closer to the clip than the bucket, i would suggest.

  8. 2

    The fact that claims 1-12 were abandoned, yet several other claims survived the IPR here, demonstrates the importance of having substantial numbers of claims, of different scope, in an issued patent of commercial importance. [Which typical corporate fixed price patent preparation and prosecution outsourcing typically does not get.]

  9. 1

    Gee — what a surprise. Campbell’s doesn’t want to have to pay for that which they’ve stolen.

    Can. You. Dig. It.

Leave a Reply

Your email address will not be published. Required fields are marked *

You can click here to Subscribe without commenting

Add a picture