Ex Parte Romero

Patent Trial and Appeal Board

Sep 16, 2013

10641971 (P.T.A.B. Sep. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JEROME ROMERO
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Appeal 2011-011330
Application 10/641,971
Technology Center 3700
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Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
JOHN W. MORRISON, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 3-8 and 11. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.

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Application 10/641,971

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Claimed Subject Matter
Claims 3, 4, 7, and 11 are the independent claims on appeal. Claim 3,
reproduced below with emphasis added, is illustrative of the subject matter
on appeal.
3. A beverage container opening and covering device,
comprising:
a decorative housing provided in the form of
miniaturized three-dimensional sports headgear including at
least one of a football helmet, a baseball cap, and a cowboy hat,
and further comprising a bottom, top, front, back, and sides,
said decorative housing including an opening formed in its
bottom and including a retention mechanism formed on an
inner surface within said decorative housing, said retention
mechanism adapted for retaining a twist-off bottle cap remover
and bottle opening cover therein;
a twist-off bottle cap remover retained by the retention
mechanism within the opening formed in the bottom of the
decorative housing and adapted to accept and firmly grip twist
off bottle caps during their removal from a beverage container;
a rubber retaining device integrated within said
decorative housing with said twist-off bottle cap remover, said
rubber retaining device adapted to enable said decorative
housing to operate as a bottle opening cover, said bottle
opening cover provided in the form of a rubber retaining device
adapted for selectively securing the decorative cover to a bottle
neck; and
a can tab opener formed on the bottom of said decorative
housing.
Independent claims 4 and 7 are substantially similar to independent
claim 3 as they are directed to “[a] beverage container opening and covering
device” and recites “a retention mechanism formed on an inner surface
within said decorative housing . . . adapted for retaining a combined twist-
off bottle cap remover” and a “rubber retaining device.” App. Br., Clms.
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App’x. (emphasis added). Independent 11 is substantially similar to
independent claim 3 as it is directed to “[a] beverage container opener and
cover” and recites “a retention mechanism formed on an inner surface of
said decorative housing adapted for retaining a combined twist-off bottle cap
remover” and a “bottle opening cover provided in the form of a rubber
retaining device.” Id. (emphasis added).
Rejections
The following Examiner’s rejections are before us for review:
I. claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Waite (US 3,604,290, issued Sep. 14, 1971) and Koefelda (US
Des. 399,108, issued Oct. 6, 1998);
II. claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Waite, Koefelda, and Perkins (US 1,916,115, issued Jun. 27,
1933); and
III. claims 4, 6-8, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Waite, Perkins, and Koefelda.1

OPINION
Rejections I and II: claim 3 as unpatentable over Waite and Koefelda, and
claim 5 as unpatentable over Waite, Koefelda, and Perkins
Claim 3 recites, inter alia, “a retention mechanism formed on an inner
surface within said decorative housing, said retention mechanism adapted
for retaining a twist-off bottle cap remover and bottle opening cover therein”
and “a rubber retaining device integrated within said decorative housing

1 We have consolidated the Examiner’s rejections of claims 4 and 6 (Ans. 5-
7) and claims 7, 8, and 11 (Ans. 7-9) since both rejections are based on the
combination of Waite, Perkins, and Koefelda.
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with said twist-off bottle cap remover, said rubber retaining device adapted
to enable said decorative housing to operate as a bottle opening cover, said
bottle opening cover provided in the form of a rubber retaining device
adapted for selectively securing the decorative cover to a bottle neck.” App.
Br., Clms. App’x (emphasis added).
The Appellant construes claim 3 such that the retention mechanism
and the rubber retaining device are completely different elements. App. Br.
13. The Examiner disagrees with that construction and construes claim 3
such that the retention mechanism is not a completely different element from
the rubber retaining device. Ans. 9. We agree with the Appellant.
At the outset, we note that claim 3 lists the “retention mechanism”
separately from the “rubber retaining device.” Additionally, although the
“retention mechanism [is] formed on an inner surface within said decorative
housing” and the “rubber retaining device [is] integrated within said
decorative housing with said twist-off bottle cap remover” claim 3 does not
suggest that the “rubber retaining device” is a portion of the “retention
mechanism” or that the “retention mechanism” is a portion of the “rubber
retaining device.” See also Gaus v. Conair Corp., 363 F.3d 1284, 1288
(Fed. Cir. 2004) (“The claim lists the ‘electrical operating unit’ separately
from the ‘pair of spaced-apart electrically exposed conductive probe
networks,’ and does not suggest that the ‘pair of ... probe networks’ consists
in part of a portion of the ‘electrical operating unit.’ Rather, the clear
implication of the claim language is that the pair of probe networks is a
distinct component, separate from the electrical operating unit of the claimed
invention.”).
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The Specification confirms this interpretation since it discloses
completely different structures for the “retention mechanism” and the
“rubber retaining device.” The Specification states that “the twist off cap
remover 429 . . . is locked or snapped into place within the housing 401 and
permanently retained by the retention mechanism 929” and that a flexible
ring 909 (rubber retaining device) “can securely hold the beverage container
opening and covering device 400 onto the bottleneck 407.” Spec. 15, ll. 3,
5-7, 10-14. The Specification does not disclose or suggest that the retention
mechanism 929 and the ring 909 are the same structure. Additionally,
Drawing Figure 9A depicts the retention mechanism as element number 929
and the rubber retaining device as element number 909.
Although the Appellant indicates in the Summary of Claimed Subject
Matter of the Appeal Brief that the “retention mechanism” and the “rubber
retaining device” pertain to the same element number, i.e., bottle retainer
510 (App. Br. 4), element number 510 cannot be representative of both
claimed structures. See Spec. 12, l. 24 – 13, l. 27. More specifically,
element number 510 does not appear to be able to function as a “retention
mechanism” as required by claim 3, i.e., “adapted for retaining a twist-off
bottle cap remover.” Drawing Figures 5 and 6 depict space 513 as
separating the twist-off bottle cap remover 4292 from the bottle retainer 510
and one of ordinary skill in the art would not agree that the bottle retainer

2 The Specification refers to the twist-off bottle cap remover as 409 (see e.g.,
Spec. 13, l. 17), which appears to be a typographical error, because the
Figures do not depict that element 409 is a twist-off bottle cap remover. The
Specification also states that the twist-off cap remover is element number
429 (Spec. 15, ll. 5, 10, 11, and 16) and element number 429 is depicted as a
twist-off bottle cap remover in Figures 4C, 5, 6, 9A, and 9B.
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510 is able to retain the twist-off bottle cap remover 429 via the empty space
5133 in-between the structures. See id.
Turning to the Examiner’s findings, the Examiner relies on Waite to
disclose both the retention mechanism and the rubber retaining device.4
Ans. 4. More specifically, the Examiner finds that Waite discloses “a
retention mechanism 25 formed on an inner surface of the device and a
twist-off bottle cap remover alternating with the rubber retaining device
(grooves 29) integrated within the decorative housing.” Id. (citing Waite,
col. 3, ll. 8-17). The Appellant contends that the “cited art does not teach
both a retention mechanism and a rubber retaining device.” Reply Br. 5.
The Appellant’s contention is persuasive.
Although it is notable the Examiner suggests that Waite’s retention
mechanism (sleeve) 25 and the rubber retaining device (grooves 29) are
“separate elements” (Ans. 4), we disagree. Waite discloses that “[t]he inner
surface 28 of the sleeve 25 has a series of longitudinal substantially parallel
grooves 29.” Waite, col. 3, ll. 17-19 (emphasis omitted). As such, grooves
29 are a portion of sleeve 25. Accordingly, as discussed supra, the broadest
reasonable interpretation of claim 3 in light of the Specification as
interpreted by one of ordinary skill in the art does not include a construction
where the “retention mechanism” and the “rubber retaining device” can be
the same structure. Since the Examiner relies on a finding where the same
structure, i.e., sleeve 25 and a portion of sleeve 25 (grooves 29), corresponds

3 Space 513 is sized to be able to “hold a cap after its removal from a
bottle.” Spec. 13, l. 23.
4 The Examiner relies on Koefelda to disclose “a decorative housing in the
form of a baseball cap with a can tab opener formed on the bottom of the
housing.” Ans. 4.
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to both the retention mechanism and the rubber retaining device, the
Examiner’s finding is incorrect.
Thus, the rejection of claim 3 as unpatentable over Waite and
Koefelda is not sustained.
Claim 5 depends from claim 3 and the Examiner’s rejection of claim 5
as unpatentable over Waite, Koefelda, and Perkins relies on the same
erroneous finding as discussed above. Further, the Examiner’s finding with
regard to Perkins does not cure the deficiency of the Examiner’s rejection of
independent claim 3. See Ans. 5. As such, we cannot sustain the rejection
of claim 5 under 35 U.S.C. § 103(a) as unpatentable over Waite, Koefelda,
and Perkins.

Rejection III: claims 4, 6-8, and 11 as unpatentable over
Waite, Perkins, and Koefelda
For this ground of rejection, the Examiner relies on the finding that
Waite discloses that the same structure, i.e., sleeve 25 and a portion of sleeve
25 (grooves 29), corresponds to both the retention mechanism and the rubber
retaining device. Ans. 5-9. As discussed supra, this finding is incorrect.
Accordingly, we cannot sustain the rejection of claims 4, 6-8, and 11 under
35 U.S.C. § 103(a) as unpatentable over Waite, Perkins, and Koefelda.

DECISION
We REVERSE the rejections of claims 3-8 and 11.

REVERSED

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