Ex Parte Romero

Patent Trial and Appeal Board

Feb 23, 2018

11881545 (P.T.A.B. Feb. 23, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/881,545 07/27/2007 Jerome Romero 1000-1254B 1228
64064 7590
Ortiz & Lopez, PLLC
P.O. BOX 4484
ALBUQUERQUE, NM 87196-4484
EXAMINER
GRANO, ERNESTO ARTURIO
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
02/27/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @ olpatentlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEROME ROMERO
Appeal 2016-008554
Application 11/881,545
Technology Center 3700
Before KEN B. BARRETT, GEORGE R. HOSKINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jerome Romero (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1,3, 5, 8, 10, 17, and 18.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Roadrunner
Promotions, LLC. Appeal Br. 2.
Appeal 2016-008554
Application 11/881,545
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A beverage container opening device, comprising:
a decorative housing provided in the form of miniaturized
three-dimensional headgear representative of headgear that can
be worn by humans including a bottom, top, front, back, and
sides, said decorative housing having an opening formed in its
bottom and including a retention mechanism integrated within
said decorative housing for retaining a bottle cap remover
module; and
a bottle cap remover module further comprising:
(a) a generally circular housing including a circular
bottle cap receiver and guide having an inner surface;
(b) teeth in the form of of [sic] ribs, flutes or ridges
formed on the inner surface, wherein during use of the
beverage container opening device, the guide and teeth are
received over the cap of a beverage container whereon the
teeth lay substantially complimentary to ridge shaped
surfaces also formed on beverage container caps;
(c) a rubber bottle resealer and retaining device
further comprising at least one flange, said rubber bottle
opening resealer and retaining device integrated within
said bottle cap remover module, wherein said rubber bottle
resealer and retaining device enables said decorative
housing to operate in sealing and covering a bottle opening
when said at least one flange is placed over a bottle
opening and engages with a glass flange formed on the
bottle; and
a pop-off bottle cap remover formed on said decorative
housing.
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Appeal 2016-008554
Application 11/881,545
REJECTION
Claims 1, 3, 5, 8, 10, 17, and 18 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Koefelda (US Des. 429,452, issued Aug. 15, 2000) and
Huff (US 3,736,817, issued June 5, 1973).
DISCUSSION
The Examiner finds that Koefelda discloses the subject matter of
independent claims 1, 10, and 17 except for the “rubber bottle resealer” as
recited in the claims. Final Act. 2—3. The Examiner finds that Huff
discloses the “rubber bottle resealer” as recited. Id. at 3 (citing Huff, 7:3—
26). The Examiner concludes that it would have been obvious to modify
Koefelda to include “the rubber bottle resealer and [bottle] retaining device
as taught by Huff in order to provide seal [to] the bottle after the cap has
been removed.” Id. at 3^4.
Appellant contends that “Koefelda is deficient as a reference because
it does not teach or suggest the claimed features of... a ‘bottle cap remover
module’ that can be retained within a three-dimensional ‘decorative housing’
by a ‘retention mechanism.’” Appeal Br. 8. The Examiner responds by
asserting “the Appellant is arguing that the bottle cap remover module is
removable from the decorative housing. The Examiner disagrees because
the claim does not require the decorative housing, the retention mechanism
and the bottle cap remover module to be individual pieces attached to each
other.” Ans. 6. The Examiner also submits annotated versions of
Koefelda’s Figures 1 and 7 where the Examiner identifies the elements of
Koefelda that the Examiner finds corresponds to various limitations in
Appellant’s claims. Id. at 5. In the Reply Brief, Appellant notes that
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Appeal 2016-008554
Application 11/881,545
“Koefelda is a design patent without. . . accompanying description in the
entire text supplied by Koefelda that supports the existence of a ‘retention
mechanism.’” Reply Br. 3. For the following reasons, we do not sustain the
rejection.
Koefelda is a design patent directed to “[t]he ornamental design for
[a] baseball helmet-shaped bottle opener.” Koefelda, Claim. There is no
detailed description of the construction of the device or how the various
elements interact with each other. The Examiner finds that a strip located
above the teeth of Koefelda’s bottle opener corresponds to the “retention
mechanism” recited in claims 1,10, and 17. Ans. 5. We appreciate the
Examiner’s statement that the claims do not require the “individual pieces to
be attached to each other.” Id. at 6. Figure 1 of Koefelda, however, does not
appear to definitively illustrate any interaction between the strip and the
element that the Examiner identifies as the remover module. See id.
Further, the Examiner does not provide an adequate technical explanation of
how one of ordinary skill in the art would discern from Figure 1 or other
disclosures of Koefelda that the strip, identified by the Examiner as the
retention mechanism, “retain[s] a bottle cap remover module” within the
decorative housing as recited in claim 1. In the absence of disclosure of the
details of Koefelda’s construction, the Examiner’s finding is based on
speculation. As the rejection is based on an erroneous factual finding, the
conclusion of obviousness cannot stand. See In re Warner, 379 F.2d 1011,
1017 (CCPA 1967) (holding that “[t]he legal conclusion of obviousness
must be supported by facts. Where the legal conclusion is not supported by
facts it cannot stand.” (footnote omitted)). We, therefore, do not sustain the
rejection of claims 1,10, and 17. Claims 3, 5, and 8 depend from claim 1
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Appeal 2016-008554
Application 11/881,545
and claim 18 depends from claim 17. We do not sustain the rejection of
these claims for the same reasons.
DECISION
The Examiner’s decision rejecting claims 1, 3, 5, 8, 10, 17, and 18 is
reversed.
REVERSED
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