Ex Parte SpoonerDownload PDFPatent Trial and Appeal BoardMar 28, 201612437661 (P.T.A.B. Mar. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/437,661 05/08/2009 31953 7590 03/28/2016 James E. Spooner 4204 Skyview Crest Alburquerque, NM 87114 FIRST NAMED INVENTOR James E. Spooner UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 31956-1001-CIP 7982 EXAMINER ELOSHWAY, NIKI MARINA ART UNIT PAPER NUMBER 3728 MAILDATE DELIVERY MODE 03/28/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES E. SPOONER Appeal2014-002146 Application 12/437,661 1 Technology Center 3700 Before STEFAN STAICOVICI, LEE L. STEPINA, and FREDERICK C. LANEY, Administrative Patent Judges. ST AI CO VICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE James E. Spooner (Appellant) appeals under 35 U.S.C. § 134 from the Examiner's final decision rejecting under 35 U.S.C. § 103(a) claim 18 as being unpatentable over Meckler (US 4,182,458, iss. Jan. 8, 1980), Fragola (US 6,796,449 B2, iss. Sept. 28, 2004), and Yu (US 2004/0231465 Al, According to Appellants, the real party in interest is the inventor, Mr. James E. Spooner. Br. 2 (filed July 9, 2013). Appeal2014-002146 Application 12/437,661 iss. Nov. 25, 2004).2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). SUMMARY OF DECISION We REVERSE. INVENTION Appellant's invention relates to "closures for bottle openings." Spec. 1, 1. 16. Claim 18, the sole independent claim, is representative of the claimed invention and reads as follows: 18. In combination with a wine bottle, said bottle having an opening and an extractable closure for said opening, said closure comprising: a cylindrical body having an outer face and an inner face, said cylindrical body comprising a length of said closure from said outer face to said inner face and comprising a single compressible material and disposed in said bottle opening; and a corkscrew guide disposed in said outer face of said closure, said corkscrew guide comprising a shallow cylindrical recess substantially centered on the axis of said cylindrical body, said recess having a non-central perimeter wall to constrain a tip of said corkscrew at any point on said perimeter wall; wherein said recess is adapted to a helix of the corkscrew to promote a central position of the corkscrew during use and extraction of the closure. 2 Claims 1-3, 5, 11, 14, 16, and 17 have been allowed by the Examiner and claims 4, 6-10, 12, 13, and 15 have been canceled. Id.; see also Final Act. 3 (mailed Feb. 27, 2013). 2 Appeal2014-002146 Application 12/437,661 ANALYSIS The Examiner finds that Meckler discloses a wine bottle and an extractable closure (identified as "A" in the Figures of Meckler) of a compressible material, having a cylindrical body, an outer face, and an inner face, disposed in an opening of the wine bottle. See Final Act. 2. The Examiner further finds that although "Meckler teaches the claimed invention except for the cylindrical recess," nonetheless, Fragola discloses a wine bottle stopper having a recess 49 for receiving a corkscrew. See id. (citing Fragola, col. 5, 11. 5-9; col. 6, 11. 14--16; and Fig. 7). Thus, the Examiner concludes that it would have been obvious for a person of ordinary skill in the art to provide a corkscrew guide, as taught by Frago la, to Meckler' s closure A, "in order to receive a spiral wire shaped corkscrew, as taught by Yu." Id. Secondly, the Examiner finds Meckler discloses a cylindrical recess, as per Meckler' s Figures 1 and 10, and a recess with a sloped wall, as per Meckler' s Figure 4, whereas Frago la discloses the recess as being located in the cork. See Ans. 2. First, we do not agree with the Examiner's finding that Frago la discloses a "cylindrical recess," as called for by independent claim 18. See Final Act. 2. Rather, Frago la discloses a truncated cone shaped recess 49. See Frago la, Fig. 7. We thus, agree with Appellant that Frago la does not define the recess as cylindrical and "offers no other suggestions for sizing or shaping the recess." See Br. 4. Hence, in a first instance, the combined teachings of Meckler, Frago la, and Yu do not disclose a "cylindrical recess," as called for by independent claim 18. 3 Appeal2014-002146 Application 12/437,661 Secondly, as to the Examiner's alternate position that Meckler discloses a "cylindrical recess," we first note that such a position contradicts the Examiner's explicit finding that "Meckler teaches the claimed invention except for the cylindrical recess." Compare Final Act. 2 with Ans. 2 (emphasis added). However, even assuming arguendo that the Examiner is correct in finding that Meckler' s vent 11 constitutes the claimed "cylindrical recess" and Fragola discloses locating a recess in a cork (see Ans. 2), nonetheless, "a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In other words, the mere fact that elements can be combined is not, in itself, a reason to combine them. Rather, an obviousness rejection further must explain the reasoning by which those findings support the Examiner's conclusion of obviousness. Perfect Web Techs., Inc. v. Info USA, Inc., 587 F.3d 1324, 1328-30 (Fed. Cir. 2009). In this case, the Examiner's position is untenable because the Examiner fails to provide any reasoning with rational underpinnings why a person of ordinary skill in the art, in view of Fragola, would modify Meckler's cork portion A with vent 11 of Meckler's crown member B. See Meckler, Figs. 1, 10. As such, without an articulated reasoning based on rational underpinning for modifying the reference as proposed, the Examiner's rejection appears to be the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). In conclusion, for the foregoing reasons, we do not sustain the rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable over Meckler, Fragola, and Yu. 4 Appeal2014-002146 Application 12/437,661 SUMMARY The Examiner's decision to reject claim 18 under 35 U.S.C. § 103(a) as unpatentable over Meckler, Fragola, and Yu is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation