Ex Parte Warner

Board of Patent Appeals and Interferences

May 11, 2009

10299533 (B.P.A.I. May. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRENT J. WARNER
____________

Appeal 2008-5715
Application 10/299,533
Technology Center 3700
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Decided:1 May 11, 2009
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Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-5715
Application 10/299,533

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STATEMENT OF THE CASE
Brent J. Warner (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 26-33, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
The Appellant’s claimed invention is to a manually-operated
corkscrew of the first-class lever type. Spec. 1:11. Claim 26, reproduced
below, is representative of the subject matter on appeal.
26. An apparatus to extract a stopper from a
bottle, comprising:
an insertion element to engage with the
stopper, the insertion element mounted via an
insertion element pivot point; and
at least one fulcrum coupled between the
insertion element pivot point and an area of a lever
where the lever is to be grasped by a hand;
the lever and at least one fulcrum formed to
enable a single hand grasping the lever and a neck
of the bottle to squeeze the lever toward the neck
of the bottle when the at least one fulcrum is
secured against a lip of the bottle and the insertion
element is substantially fully engaged with the
stopper and the stopper is substantially fully
inserted in the bottle.
Appeal 2008-5715
Application 10/299,533

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THE EVIDENCE
The Examiner relies upon the following evidence:
White US 280,697 Jul. 3, 1883
“French Subito” by Jacques Perille, The Virtual Corkscrew Museum,
Vault 1, www.bullworks.net/virtual/vault/subito.htm (last visited
Sept. 22, 2001) (“French Subito”).

THE REJECTIONS
The Examiner made the following rejections of the claims:
1. Claims 26-30 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
2. Claims 26-31 and 33 are rejected under 35 U.S.C. § 102(b) as
anticipated by French Subito.
3. Claim 32 is rejected under 35 U.S.C. § 103(a) as unpatentable over
French Subito and White.

ISSUES
The Appellant appeals from the adverse decision of the Examiner as
stated in the final Office Action of August 29, 2005. Notice of Appeal,
dated November 27, 2005; App. Br. 1-2. The Appellant fails, however, to
present any arguments rebutting the Examiner’s rejection of claims 26-30
under 35 U.S.C. § 112, second paragraph, as being indefinite. App. Br. 5.
As such, we summarily sustain the Examiner’s rejection of claims 26-30
under 35 U.S.C. § 112, second paragraph.
Appeal 2008-5715
Application 10/299,533

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The Examiner found that the corkscrew depicted in French Subito
discloses all the structural elements as recited in claims 26, 29, and 31, and
that the corkscrew of French Subito is capable of one-handed use, as called
for in the claims, because the one-handed engagement of the device would
be dependent upon the size of a user’s hand and the size of the device being
used. Ans. 3-4.
The Appellant contends that when the fulcrum of the French Subito
corkscrew is secured against the lip of a bottle, and the insertion element is
substantially fully engaged with the stopper, and the stopper is substantially
fully inserted in the bottle, the resulting arrangement does not enable one-
handed operation of the corkscrew. App. Br. 7 (claim 26), 9 (claims 29 &
31).
The issue presented by this appeal is:
Has the Appellant shown the Examiner erred in finding that the
structure of the corkscrew depicted in French Subito is configured such that
one can operate the corkscrew with a single hand, as called for in claims 26,
29, and 31?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
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Application 10/299,533

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1. The Appellant’s Specification describes that “[t]he lever is shaped
so that the free end of the lever and the bottle neck can be held
simultaneously in one hand, e.g. the thumb of a hand grasps the
bottle neck while the fingers grasp the free end of the lever or the
thumb can grasp the free end of the lever while the fingers grasp
the bottle neck, when the screw is engaged within the cork and one
of the fulcrums is engaged on the bottle lip.” Spec. 7:146-151;
Spec. 10:219-223.
2. French Subito depicts a corkscrew including an insertion element
or screw, a lever pivotally mounted to the screw about an insertion
element pivot point, and a fulcrum pivotally mounted to the lever
at a point between the insertion element pivot point and an area of
the lever to be grasped by a user’s hand.
3. The photograph of the prior art corkscrew does not provide enough
information to discern by a preponderance of the evidence that the
insertion element, lever, and fulcrum are dimensioned and
arranged spatially such that a user can hold the free end of the
lever and the bottle neck simultaneously in one hand and squeeze
the lever toward the neck of the bottle when the insertion element
is substantially fully inserted within the cork and the cork is
substantially fully inserted in the bottle and the fulcrum is engaged
on the bottle lip.

Appeal 2008-5715
Application 10/299,533

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PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
To establish anticipation, every element and limitation of the claimed
invention must be found in a single prior art reference, arranged as in the
claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001). In other words, there must be no difference between the
claimed invention and the reference disclosure, as viewed by a person of
ordinary skill in the field of the invention. Scripps Clinic & Research
Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991).

ANALYSIS
Independent claims 26, 29, and 31 require that the lever and the
fulcrum are arranged so that a single hand can grasp the lever and the neck
of the bottle and squeeze the lever toward the neck of the bottle when the
fulcrum is secured against a lip of the bottle and the insertion element is
substantially fully engaged with the stopper and the stopper is substantially
fully inserted in the bottle. Thus, the claims impose a structural limitation
on the arrangement of the insertion element, fulcrum, and lever to enable
one-handed operation.
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Application 10/299,533

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Although French Subito depicts a corkscrew that has all of the
structural components of the claimed apparatus (Fact 2), we cannot find by a
preponderance of the evidence based on the prior art photograph alone that
the components of the prior art corkscrew are arranged relative to one
another to enable one-handed operation in the manner claimed. In order to
enable one-handed operation, the components must be dimensioned and
arranged spatially such that a user can hold the free end of the lever and the
bottle neck simultaneously in one hand and squeeze the lever toward the
neck of the bottle when the screw is substantially fully inserted within the
cork and the cork is substantially fully inserted in the bottle and the fulcrum
is engaged on the bottle lip (Fact 1). The photograph of the prior art
corkscrew does not provide us with enough information to discern by a
preponderance of the evidence that such a one-handed operation is enabled
(Fact 3).
The Examiner notes that “one-handed engagement of the device
would be dependent upon the size of a user’s hand and the size of the device
being used.” Ans. 4. While we agree that one-handed operation will be
dependent upon the size of a user’s hand, we note that designers of hand
tools take into account ergonomic considerations and the average
dimensions of a user’s hand when designing a hand tool so that it can be
operated as intended. The Examiner has failed to provide sufficient
evidence to show that the French Subito corkscrew is configured to enable
any user to operate it with one hand as called for in claim 26, 29, and 31, or
their dependent claims 27, 28, 30, and 33.
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Application 10/299,533

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As such, we cannot sustain the rejection of claims 26-31 and 33 under
35 U.S.C. § 102(b) as being anticipated by the corkscrew depicted in French
Subito.
Likewise, the Examiner’s rejection of claim 32 as being unpatentable
over the corkscrew of French Subito in view of White is based on the same
erroneous finding as to the scope and content of the French Subito reference.
In particular, the Examiner found that French Subito discloses “all of the
claimed subject matter except for the lever forming a concave curve from
the pivot point to the grasped lever area.” Ans. 4. Thus, the Examiner’s
rejection of claim 32 is based on the erroneous finding that the French
Subito corkscrew enables one-handed operation as called for in claim 31,
from which claim 32 depends. As such, for the same reasons provided
above in our analysis of claim 31, we also cannot sustain the rejection of
claim 32.

CONCLUSIONS
The Appellant has failed to show that the Examiner erred in rejecting
claims 26-31 under 35 U.S.C. § 112, second paragraph as being indefinite.
The Appellant has shown the Examiner erred in finding that the
structure of the corkscrew depicted in French Subito is configured such that
one can operate the corkscrew with a single hand as called for in the claims.
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Application 10/299,533

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DECISION
The decision of the Examiner to reject claims 26-31 under 35 U.S.C.
§ 112, second paragraph is affirmed.
The decision of the Examiner to reject claims 26-31 and 33 under
35 U.S.C. § 102(b) and claim 32 under 35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

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