Ex Parte Spooner

Board of Patent Appeals and Interferences

Sep 16, 2008

10436570 (B.P.A.I. Sep. 16, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JAMES SPOONER
__________

Appeal 2008-2618
Application 10/436,570
Technology Center 3700
__________

Decided: September 16, 2008
__________

Before DONALD E. ADAMS, ERIC GRIMES, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a closure
in combination with a bottle. The Examiner has rejected the claims as
anticipated or obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.
Appeal 2008-2618
Application 10/436,570

INTRODUCTION
Claims 14, 24-27, 35, and 40 are on appeal. Claims 1, 4, and 36-39
are also pending but have been indicated to be allowable. We will focus on
claims 14, 24, 35, and 40, which are representative and read as follows:
14. In combination with a bottle for ingestible fluids, said bottle
having an opening, a closure for said bottle opening, said closure
comprising:
a cylindrical body having an outer surface and an inner surface,
said cylindrical body comprising a length of said closure from said outer
surface to said inner surface and comprising a compressible material and
disposed in said bottle opening; and
a corkscrew guide disposed in said outer surface of said
cylindrical body and said corkscrew guide comprising an annular recess
having one outer opening, said opening smaller than the inner diameter of
said bottle opening and substantially centered on an axis of said cylindrical
body, said recess having at least two walls, at least one of said walls to
constrain a tip of a corkscrew and to constrain central positioning of the
corkscrew on the outer surface of said cylindrical body during use of the
corkscrew; and
wherein said recess is adapted to a helix of the corkscrew to
constrain a central position of the corkscrew during use of the corkscrew.
24. In combination with a bottle for ingestible fluids, said bottle
having an opening, a closure for said bottle opening, said closure
comprising:
a cylindrical body having an outer surface and an inner surface,
said cylindrical body comprising a length of said closure from said outer
surface to said inner surface and comprising a compressible material and
disposed in said bottle opening; and
a corkscrew guide disposed in said outer surface of said
cylindrical body, said corkscrew guide comprising a plurality of recesses,
each recess having one outer opening, said opening smaller than the inner
diameter of the said bottle opening and substantially centered on an axis of
said cylindrical body, each recess having at least two walls, at least one of
said walls to constrain a tip of a corkscrew and to constrain radial
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positioning of the corkscrew as the corkscrew penetrates said cylindrical
body; and
wherein said recesses are adapted to a helix of the corkscrew to
constrain a central position of the corkscrew during use of the corkscrew.
35. In combination with a bottle for ingestible fluids, said bottle
having an opening, a closure for said bottle opening, said closure
comprising:
a cylindrical body comprising a compressible material having
an outer and an inner surface and comprising a length of said closure from
said outer surface to said inner surface, and said cylindrical body disposed in
said bottle opening;
a corkscrew guide disposed in said outer surface of said
cylindrical body, said corkscrew guide comprising a raised nipple having an
outer diameter smaller than the inner diameter of the bottle opening and
substantially centered on an axis of said cylindrical body, said nipple
comprising a wall to radially constrain a tip of a corkscrew, and said nipple
adapted to a helix of the corkscrew to constrain a central position of the
corkscrew during use.
40. In combination with a bottle for ingestible fluids, said bottle
having an opening, a closure for said bottle opening, said closure
comprising:
a cylindrical body having an outer surface and an inner surface,
said cylindrical body comprising a length of said closure from said outer
surface to said inner surface and comprising a compressible material and
disposed in said bottle opening; and
a corkscrew guide disposed in said outer surface of said
cylindrical body and said corkscrew guide comprising a cylindrical recess
having one outer opening, said opening smaller than the inner diameter of
said bottle opening and substantially centered on an axis of said cylindrical
body, said recess having at least two walls, at least one of said walls to
constrain a tip of a corkscrew and to constrain central positioning of the
corkscrew on the outer surface of said cylindrical body during use of the
corkscrew and one of said walls forming a closed bottom surface of said
recess, said bottom surface disposed in said recess between said outer face
and said inner face of said disk-shaped plug; and
wherein said recess is adapted to a helix of the corkscrew to
constrain a central position of the corkscrew during use of the corkscrew.
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ANTICIPATION
Claim 35 stands rejected under 35 U.S.C. § 102(e) as anticipated by
Fragola (US 6,796,449 B2, Sep. 28, 2004) (Ans. 2). The Examiner relies on
Fragola for teaching closures for wine bottles (id.). The Examiner argues
that the closure in Fragola Figure 18 has a raised nipple (id. at 3).
Appellant argues that the feature in Fragola Figure 18 identified as a
raised nipple “is located on the interior side (or ‘lower end’ as stated by
Fragola, column 8, lines 28-29) of the closure, thus making it inaccessible to
a screw extractor on the exterior side of the closure” (App. Br. 4-5). In
particular, Appellant argues that, “in claim 35, the cylindrical body is
disposed in the bottle opening such that there is clearly an outer and an inner
surface” (id. at 5).
Issue
The issue is whether the Examiner has set forth a prima facie case that
Fragola discloses a raised nipple disposed in an outer surface of the
cylindrical body of a closure.
Findings of Fact
1. The Specification discloses “closures for wine and other
beverage bottles . . . [having] a centrally located guiding means . . . in the
exterior face of the closure,” which “provides positioning constraint to the
tip of a conventional corkscrew during manual manipulation and guides the
advancing direction of the corkscrew during the extraction process”
(Spec. 3: 29 to 4: 4).
2. The Specification also refers to the exterior face of the closure
as an exposed or outer surface and refers to the axial opposed surface, which
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faces inside the bottle, as the inner surface (id. at 4: 9-14, 7: 5-17, & 9: 14-
16; see also Figure 3).
3. Fragola discloses “a closure for containers, and in particular . . .
a plug for bottles, preferably adapted to be used to plug bottles of wine”
(Fragola, col. 1, ll. 4-6).
4. Fragola discloses that the closure “comprises substantially rigid
supporting and sealing means 3 and a covering body 5” (id. at col. 3, ll. 11-
13).
5. Fragola Figure 18 is reproduced below:

This figure depicts a closure having supporting and sealing means 312 and
covering body 512 (Fragola, col. 8, ll. 14-30).
6. Supporting and sealing means 312 is “composed of a reinforcing
member 129 having a basically cylindrical hollow body 130 terminating at
both ends in annular shoulders 131, 131'” (id. at col. 8, ll. 15-18).
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7. “The lower end of the hallow body 130 is closed by a base 133,
while the upper end remains open” (id. at col. 8, ll. 28-29).
8. The “base 133 of the hollow body 130 is oriented toward the
interior of the container” (id. at col. 8, ll. 43-45).
9. “The lower annular shoulder 131 . . . is at the end of the
closure 112 designed to be inserted in the neck of the container” (id. at col. 8,
ll. 18-20).
10. “The covering body 512 is thermoformed directly on said
reinforcing member 129, in such a way that the elastomeric material fills the
cavity of the hollow body 130 and the external space between the two
shoulders 131, 131'” (id. at col. 8, ll. 30-33).
Analysis
Claim 35 is directed to a closure in combination with a bottle having
an opening, where the closure comprises a cylindrical body “disposed in said
bottle opening.” Claim 35 also requires that the cylindrical body has an
outer and an inner surface and a length of the closure from the outer surface
to the inner surface. The Specification uses the terms “outer surface” and
“inner surface” to refer to surfaces of the closure that face outside and inside
the bottle, respectively (Findings of Fact (FF) 1-2).
The Examiner argues:
There is no relationship in the claim between the cylindrical
body and bottle that would require the inner surface to be the
surface facing the bottle cavity. . . . The introduction of an inner
and an outer surface of the cylindrical body does not require
that the surfaces be axially opposed nor does it require that the
inner surface be located in the bottle cavity. The outer surfaces
of the body could be considered the axially opposed ends of the
body and the inner surface could be considered the cylindrical
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Application 10/436,570

sidewall of the body. With this interpretation, the sidewall or
inner surface of the body is considered inner because it is in
direct en[g]agement with the bottle neck. The axially opposed
ends, or outer surfaces, are considered outer because they are
exposed surfaces (i.e. one end is exposed to atmosphere and the
other end is exposed to the bottle cavity).
(Ans. 3-4.) We are not persuaded.
“It is axiomatic that, in proceedings before the PTO, claims in an
application are to be given their broadest reasonable interpretation consistent
with the specification.” In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983).
However, we find the Examiner’s interpretation to be unreasonable. In
particular, by the Examiner’s interpretation, it is not clear why the sidewall,
which is exposed to the surface of the bottle, would be considered an inner
surface. Furthermore, if both axial ends of the closure are considered outer
surfaces and the sidewall is considered the inner surface, it is not clear what
the Examiner is considering the length of the closure from the outer surface
to the inner surface. Thus, based on the common usage of the term “outer”
and how it is used in the Specification (FF 1-2), we agree with Appellant
that the outer surface refers to a surface of the cylindrical body that faces
outside the bottle and the inner surface refers to a surface of the cylindrical
body that faces inside the bottle. Because claim 35 recites that the closure is
disposed in the bottle opening, the designation of the inner and outer
surfaces of the closure requires a particular orientation of the closure in the
bottle opening.
Based on this claim interpretation, we also agree with Appellant that
the Examiner has not set forth a prima facie case that Fragola discloses a
raised nipple disposed on an outer surface of a cylindrical body. In
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particular, Fragola discloses that projection 133 is “oriented toward the
interior of the container” (FF 8-9). Thus, we agree that this projection in not
disposed on an outer surface of the cylindrical body. In addition, the
Examiner has not set forth a prima facie case that Fragola describes a raised
nipple disposed on the upper end, that is, the outer surface, of Fragola’s
closure. We therefore reverse the anticipation rejection of claim 35.
OBVIOUSNESS
Claims 14, 24-27, and 40 stand rejected under 35 U.S.C. § 103(a) as
obvious over Ogle II (US 5,060,812, Oct. 29, 1991) in view of Meckler
(US 4,182,458, Jan. 8, 1980) (Ans. 3).
The Examiner relies on Ogle II for teaching “a combination of a
bottle 14 and closure 10. The closure 10 comprises a body with an outer
surface 16 and an inner surface opposite thereto. The annular recess is
element 44.” (Ans. 3.) With regard to claim 24, the Examiner argues that
“the recesses are elements 44 and 34” (id.).
The Examiner relies on Meckler for teaching “that it is known to
provide a bottle with closures that either have an outwardly extending flange
(like that of Ogle, II) or that have a cylindrical body (see figure 7 of
Meckler)” (id.). The Examiner concludes that it would have been obvious
“to provide the combination of Ogle, II with the closure having a cylindrical
body, as taught by Meckler, in order to allow the closure to be completely
inserted into the bottle opening” (id.).
Appellant contends that Ogle II does not teach all of the limitations of
claims 14, 24, and 40 and that Meckler cannot properly be combined with
Ogle II to overcome the deficiencies thereof.
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Issues
The issues are whether Appellant has shown that the Examiner erred
in concluding that Meckler can be combined with Ogle II and in concluding
that the combined teachings of these references teach or suggest all of the
claim limitations.
Findings of Fact
11. Ogle II discloses a medication container stopper including “an
elastomeric plug adapted to make a friction fit in the opening of the
medication container” (Ogle II, col. 2, ll. 7-9).
12. Ogle II discloses that the “plug has an exterior outer surface
facing away from the container interior, and an inner surface facing toward
the container interior. A cavity in the exterior surface of the plug opens and
diverges away from the interior surface of the plug.” (Id. at col. 2, ll. 10-15.)
13. Ogle II also discloses including “an annular recess surrounding
the cavity in the exterior surface of the plug to receive the collar of a
conventional Luer-lock hypodermic syringe” (id. at col. 2, ll. 33-36).
14. Figure 1 of Ogle II is reproduced below:

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This figure shows a stopper “disposed in the mouth of a glass medication
container” or bottle (Ogle II, col. 2, ll. 61-64, & col. 3, ll. 14-18). “The
stopper includes an elongated cylindrical plug 15 with an upper, exterior
surface 16” (id. at col. 3, ll. 19-20). The stopper additionally includes an
“upwardly diverging conical cavity 34 centered in the exterior surface of the
plug ha[ving] a circular bottom 36” (id. at col. 3, ll. 47-48). Although not
labeled in this figure, the stopper also includes an “annular recess 44 . . .
disposed concentrically around cavity 34” (id. at col. 4, ll. 1-2; see also
Fig. 5). In addition, the stopper includes “an outwardly extending annular
flange 17 [having a] downwardly facing annular surface 18 . . . [that] fits
against an annular lip 19 around the mouth of the container” (id. at col. 3,
ll. 20-24).
15. Meckler discloses stoppers for wine bottles having and not
having a flange that fits over the mouth of the bottle (Meckler, Figs. 4 & 7).
Analysis
Ogle II discloses a stopper disposed in a bottle opening and having an
annular recess and a conical cavity disposed in its outer surface (FF 11-14).
Ogle II also discloses including a flange in the stopper that fits over the
mouth of the bottle (FF 14). Meckler discloses stoppers having and not
having a flange that fits over the mouth of the bottle (FF 15). Based on the
teachings in Meckler that not including a flange is a known alternative to
including a flange in a stopper, we agree with the Examiner that it would
have been obvious to not include a flange in the stopper of Ogle II.
With regard to claim 14, Appellant argues that the “device of Ogle II
is not applicable to bottles for ingestible fluids, but rather for a medication
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vial designed to receive a syringe for extraction of a medication” (App.
Br. 5). We are not persuaded. First, as noted by the Examiner (Ans. 4-5),
the recitation “for ingestible fluids” is merely an intended use that does not
further define the bottle. Second, medication that can be extracted from a
bottle through a syringe is an ingestible fluid.
Appellant also argues that it “would not occur to a user to use an
extracting tool because the closure of Ogle II is not designed to be extracted
(the syringe removes a fluid from the vial so that the closure is not to be
removed), whereas the closure of the present invention is meant to be
extracted” (App. Br. 6). In particular, Appellant argues:
The closure of Ogle II has no corkscrew guide adapted to a
helix of a corkscrew for use with a corkscrew. There is nothing
in the disclosure of Ogle II to indicate to a user that a corkscrew
may, can, or should be used with the closure of Ogle II, that a
user would want to use a corkscrew (or even remove the
closure), or that a corkscrew would even work on the closure.
The Examiner has not shown how the closure of Ogle II would
function in guiding a corkscrew and Ogle II itself makes no
such showing as removing the closure is not a goal or purpose
of Ogle II.
(Id.) In addition, Appellant argues that the “annular recess of Ogle II is
designed not to function as a corkscrew guide, but rather for accommodating
a Luer-lock collar of a syringe” (id.).
We are not persuaded by this argument. Although we agree that
Ogle II does not describe extracting its stopper with a corkscrew, we are
aware of no reason the stopper of Ogle II could not be extracted with a
corkscrew. In addition, we see no reason why the annular recess of Ogle II
would not be adapted to a helix of a corkscrew and function as a corkscrew
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guide in the same way that the claimed annular recess is adapted to a helix
and functions as a corkscrew guide. Therefore, Appellant has not shown
how the annular recess of Ogle II differs from the claimed corkscrew guide.
Appellant additionally argues that “the closure of Ogle II is not
cylindrical, but rather has a flange. Because the syringe has no needle and is
pushed into the closure, the flange insures that the closure cannot be pushed
into the bottle.” (App. Br. 6.)
We are not persuaded by this argument. First, although the stopper of
Ogle II contains a flange, we find that it also “comprises” a cylindrical body
(FF 14). Second, the Examiner relies on Meckler for teaching a cylindrical
stopper (Ans. 3). As discussed above, we agree with the Examiner that it
would have been obvious to not include a flange in the stopper of Ogle II. In
particular, we agree with the Examiner that “the closure of Ogle would still
function without the flange, provided the force between the bottle neck and
closure is greater than the force required to sever diaphragm 38” (id. at 5).
In addition, Appellant argues that “it is unlikely that one of ordinary
skill in the art would look to Ogle II for ways to improve the guidance of a
corkscrew for wine, or other ingestible fluid, bottles; likewise, it is unlikely
that one would or seek to combine Ogle II with Meckler” (App. Br. 7). In
particular, Appellant argues:
It is significant that neither Meckler nor other prior art
subsequent to, or contemporaneous with, Ogle II and dealing
with bottles for ingestible fluids cites Ogle II. Clearly, the
fields of interest of Ogle II and the other prior art are so
different as to not lead one to make the combination of Meckler
with Ogle II.
(Id.)
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We are not persuaded by this argument. First, the Examiner is not
arguing that it would have been obvious to include an annular recess (or
conical cavity), as described in Ogle II, in Meckler’s wine stopper. In
addition, for the reasons discussed above, we agree that it would have been
obvious to remove the flange from the stopper in Ogle II based on the
teachings in Meckler of stoppers both with and without a flange. We do not
agree that the fields of interest of Ogle II and Meckler, which are both
directed to bottle stoppers (FF 11 & 14-15), are so different as to make their
combination unobvious. In particular, even assuming that no prior art
dealing with bottles for ingestible fluids cites Ogle II, this does not indicate
that Ogle II and Meckler are in significantly different fields of interest. In
addition, that Meckler, in particular, does not mention Ogle II is not
surprising given that Meckler issued more than a decade before Ogle II.
With regard to claim 24, Appellant additionally argues that
“[e]lement (3[4]) of Ogle II is conical and therefore has only one wall”
(App. Br. 7). We are not persuaded. In addition to the surface forming a
cone, the conical cavity 34 of Ogle II has a circular bottom 36 (FF 14). In
interpreting the wall limitation of claim 24 to include the bottom surface, we
considered the fact that claim 40 recites that one of the walls of its
cylindrical recess “form[s] a closed bottom surface of said recess.”
We conclude that the Examiner has set forth a prima facie case that
claims 14 and 24 would have been obvious over Ogle II in view of Meckler,
which Appellant has not rebutted. We therefore affirm the rejection of
claims 14 and 24 under 35 U.S.C. § 103(a). Claims 25-27 have not been
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argued separately and therefore fall with claims 14 and 24. 37 C.F.R.
§ 41.37(c)(1)(vii).
With regard to claim 40, Appellant additionally argues that the
“Examiner has not stated whether Ogle II or Meckler discloses a cylindrical
recess” (App. Br. 7). We agree.
Claim 40 requires a cylindrical recess in the outer surface of the
cylindrical body. The Examiner does not set forth how this cylindrical
recess is taught or suggested by the combination of Ogle II and Meckler.
Therefore, we agree with Appellant that the Examiner has not set forth a
prima facie case that claim 40 would have been obvious. We therefore
reverse the rejection of claim 40.
CONCLUSION
We affirm the obviousness rejection of claims 14 and 24-27.
However, we reverse the anticipation rejection of claim 35 and the
obviousness rejection of claim 40.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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