Ex Parte Bonin

Patent Trial and Appeal Board

Dec 21, 2017

12941041 (P.T.A.B. Dec. 21, 2017)

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.
12/941,041 11/06/2010 Roger Bonin 8813
7590
Roger Bonin
3591, Gouin E. #106
MONTREAL, QC H1H 5V7
CANADA
EXAMINER
ALLEN, JEFFREY R
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
12/21/2017 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 ROGER BONIN
Appeal 2016-004657
Application 12/941,041
Technology Center 3700
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Roger Bonin (“Appellant”)1 appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision in the Final Action (dated Sept. 26, 2012, hereinafter “Final
Act.”) rejecting claims 1 and 18—29.2 We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
1 Appellant’s Appeal Brief (filed Feb. 1, 2013, hereinafter “Br.”) identifies
the inventor, Roger Bonin, as the real party in interest. Br. 2.
2 Claims 2—17 are cancelled. Br. 2.
Appeal 2016-004657
Application 12/941,041
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellant’s invention relates to “a lip protector for use on canned
beverages”. Spec. para. 1.
Claims 1 and 22 are independent. Claim 1 is illustrative of the claimed
invention and reads, with formatting added for clarity, as follows:
1. A lip protector for a beverage can, said lip protector comprising
a cover member formed in the shape of a section of the top of
an ordinary beverage can to therefore be adapted to removably and
securely fit upon the external top of said can;
said cover member being adapted to extend around only a
section of the circumference of said external top of said can, wherein
said section is less than the entire circumference of said top of said
can;
said cover member including a drinking opening adapted to
correspond to a drinking opening of said can;
a tab pivotally connected to said cover member having a shape
adapted to snugly and removably fit within said drinking opening of
said cover;
an apron extending downwardly from said cover and adapted to
cover an upper side portion of said can; and
a panel extending downwardly from said apron adapted to
cover a middle side portion of said can;
said apron and said panel both having rounded edges adapted to
grip said upper and middle side portions of said can to thereby
removably hold said lip protector securely upon said can and used to
safely drink from said can without a person’s lips or hands touching
an external surface of said can;
wherein said lip protector can be easily removably placed upon
a beverage can and used to safely drink from said can without a
person’s lips touching an external surface of said can; and
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Application 12/941,041
wherein said drinking opening of said cover member includes at
least one integral frictional member adapted to removably and
securely attach to said drinking opening of said beverage can.
REJECTIONS
I. The Examiner rejected claims 1,18, 20-23, and 25—29 under
35 U.S.C. § 103(a) as being unpatentable over Maccarone et al. (US
4,679,702, issued July 14, 1987, hereinafter “Maccarone”) and Barous
(US 6,073,797, issued June 13, 2000).
II. The Examiner rejected claims 19 and 24 under 35 U.S.C. § 103(a) as
being unpatentable over Maccarone, Barous, and Pladsbjerg (US
2003/0222083 Al, published Dec. 4, 2003).
ANALYSIS
Rejection I
The Examiner finds that Maccarone discloses a lip protector 1 for a beverage
can including, inter alia, a cover member having a drinking opening 7 that
corresponds to a drinking opening 8 of the beverage can, a tab 28, an apron 4, a
panel 9, and a frictional member 13. Final Act. 4—5 (citing Maccarone, col. 2,11.
23—27, Figs. 1, 3, 5). However, the Examiner finds that Maccarone fails to
disclose “said apron [4] and said panel [9] both having rounded edges adapted to
grip said upper and middle side portions of said can to thereby removably hold said
lip protector [1] securely upon said can.” Id. at 5. Nonetheless, the Examiner
further finds that Barous discloses a lip protector 10 for a beverage can including,
inter alia, a first apron 32, a second apron 44, and a panel (“portion of protector
adjacent 46”), such that the first apron 32 and the panel have rounded edges, as
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Application 12/941,041
called for by each of independent claims 1 and 22. Id. (citing Barous, Figs. 1, 6).
The Examiner concludes that it would have been obvious for a person of ordinary
skill in the art “to have manufactured the lip protector of Maccarone with the
aprons and panel taught by Barous, in order to better secure the lip protector on a
can.” Id. The Examiner further states that “such a modification would be the use
of a known technique on a known device to obtain a predictable result.” Id.
Appellant argues that the edges or portions of the lip protectors of
Maccarone and Barous “are adapted to grip the ‘upper lip’ of a can and would not
be able to grip the side portions of a can, nor prevent a person’s hand from
touching a middle side portion thereof.” Br. 5. Thus, according to Appellant, “the
resulting combination/configuration of Maccarone ... in view of Barous would
NOT result in an apron and/or panel having rounded edges adapted to grin said
upper and middle side portions of said can, nor at the same time as gripping upper
(lip) side portions.” Id.
In response, the Examiner takes the position that Barous discloses a
beverage can 12 including an upper side portion, a lower side portion, and a middle
portion located between the upper and lower side portions. Examiner’s Answer 6
(dated Dec. 11, 2013, hereinafter “Ans.”). According to the Examiner, because
“[t]he middle portion is not described in [AJppellant’s disclosure,” and an ordinary
and customary meaning of the term “middle” is “a state or place between two
things or people,” “the lip protector [10 of Barous] grips the upper side portion and
the middle side portion [of can 12].” Id.
The disclosure of Barous does not support the Examiner’s findings.
Although we appreciate the Examiner’s interpretation of Barous in that beverage
can 12 has an upper portion, a middle portion, and a lower portion, such an
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Application 12/941,041
interpretation is contrary to the explicit teachings of Barous and the language of
independent claims 1 and 22. Specifically, Barous discloses a can 12 having a rim
16 (external top)3, a cylindrical body 18 (middle side portion), and an upper
portion that transits from rim 16 to cylindrical body 18. Compare Appellant’s
Figure 1, with Barous’s Figure 1. Barous further discloses a lip protector 10
(sanitary lid), including, inter alia, a top portion 30, a side portion 32, and a
projecting lip 44.
In contrast to independent claims 1 and 22, Barous’s side portion 32 of
sanitary lid 10, which the Examiner determines to be a first apron (see Final Act.
5), is adapted to engage (grip) rim 16 (external top) of beverage can 12, but not an
upper side portion of the beverage can. See Barous, col. 2,11. 62—65, Figs. 5, 6.
With respect to projecting lip 44, which the Examiner considers a second apron
(see Final Act. 5), Barous discloses that “lip 44 extends a small distance away from
the body 18 of the can 12.” Barous, col. 3,11. 62—63, Fig. 6 (emphasis omitted).
As such, because lip 44 of Barous extends away from cylindrical body 18 (middle
side portion), lip 44 is not adapted to engage (grip) either upper or middle side
portions of beverage can 12, as the claims require. In other words, Barous’s side
portion 32 (first apron) is adapted to engage (grip) only rim 16 (external top) of
beverage can 12, and projecting lip 44 (second apron) is not adapted to engage
(grip) either upper or middle side portions of beverage can 12. Hence, we agree
with Appellant that Barous fails to disclose an apron, as called for by each of
independent claims 1 and 22. See Br. 5.
Furthermore, with respect to the portion of lip protector 10 of Barous that is
adjacent reference number 46 in Barous’s Figure 6, which the Examiner considers
3 Parentheticals refer to the language of independent claims 1 and 22.
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Application 12/941,041
to be the claimed panel (see Final Act. 5), we note that this portion is merely
another region of side portion 32 of sanitary lid 10. As noted above, side portion
32 of sanitary lid 10 is adapted to engage (grip) rim 16 (external top) of beverage
can 12, but not cylindrical body 18 (middle side portion). As such, we agree with
Appellant that Barous fails to disclose a panel that is adapted to grip a middle side
portion of a beverage can, as called for by claims 1 and 22. See Br. 5.
Thus, for the foregoing reasons, the Examiner has not made sufficiently
supported initial factual findings to support a conclusion of obviousness. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). Accordingly, we do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 1, 18, 20—23, and 25—29 as
unpatentable over Maccarone and Barous.
Rejection II
The Examiner’s use of the disclosure of Pladsbjerg does not remedy the
deficiency of Barous discussed supra. See Final Act. 6—7.
Accordingly, for the same reasons as discussed above, we also do not sustain
the rejection of claims 19 and 24 over the combined teachings of Maccarone,
Barous, and Pladsbjerg.
SUMMARY
The Examiner’s decision to reject claims 1 and 18—29 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
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