Ex Parte Adams-Zarrella

Board of Patent Appeals and Interferences

Mar 26, 2009

11110456 (B.P.A.I. Mar. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte LINDA E. ADAMS-ZARRELLA

Appellant
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Appeal 2008-6208
Application 11/110,456
Technology Center 3700
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Decided1: March 27, 2009
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Before RICHARD TORCZON, SALLY GARDNER LANE and SALLY C.
MEDLEY, Administrative Patent Judges.

LANE, 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).

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I. STATEMENT OF THE CASE
The appeal, under 35 U.S.C. § 134(a), is from a Final Rejection of
Appellant’s claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse and enter new grounds of rejection.
Appellant’s application is directed to “wearing apparel having cutouts
on the rear pockets.” (Spec. 1, l. 6).
The Examiner relied on the following references:
Name Number Date
Grue 2,671,902 March 16, 1954
Green 4,446,573 May 8, 1984
Bontems 6,473,908 November 5, 2002

The Examiner rejected claims 1, and 9-152 under 35 U.S.C. § 102(b)
over Grue. The Examiner also rejected claims 2-8 under 35 U.S.C. § 103(a)
as follows: Claims 3-4 over Grue; claim 2 over Grue and Green; and claims
5-8 over Grue and Bontems.
II. FINDINGS OF FACT
1. Appellant’s claim 1 recites:
A wearing apparel,
said wearing apparel made from fabric, and
said fabric having a outside surface and an inside surface,
said outside surface being the surface remote from a user
wearing said wearing apparel,
said wearing apparel having a front and a back,

2 The Examiner stated that “[c]laims 1, 9, and 12-15 are rejected under 35
U.S.C. § 102(b) as being anticipated by Grue . . .” (Ans. 3), but included
claims 10 and 11 in the explanation of the rejection (id. at 5). Thus, we
consider claims 10 and 11 to be rejected under 35 U.S.C. § 102(b) over
Grue.
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said back of said wearing apparel having at least one pocket
attached thereto,
said at least one pocket having an inside surface and an outside
surface,
an aperture extending from said outside surface through to said
inside surface of said pocket,
a second aperture extending from said outside surface of said
fabric through to said inside surface of said fabric,
means secured to said inside surface of said fabric for blocking
said second aperture.

(App. Br. 11; Claims Appx.).
2. Appellant’s independent claims 9 and 12 recite “a second
aperture extending from said outside surface of said wearing apparel through
to said inside surface of said wearing apparel” (App. Br. 13; Claims Appx.),
and “a second aperture extending from said outside surface of said fabric
through said outside and inside surfaces of said fabric” (id. 14), respectively.
3. The “SUMMARY OF THE INVENTION” in Appellant’s
specification provides that
The present invention is directed to wearing apparel having
rear pockets, and the pockets have cutouts in a variety of
shapes. The cutouts extend through the pocket and through
the material inside the pocket area. A material such as sheer
lace or tulle can be placed adjacent the wearer's exposed skin.

(Spec. 2).
4. Figure 1 of Grue is reproduced below.
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“Figure 1 is a frontal elevational view illustrating the improved emblem [14]
or insignia displaying pocket showing the pocket on the outer surface of a
garment and with parts of the garment broken away” (Grue col. 2, ll. 4-8),
including an “outer wall 10 having an opening 11” (id. at col. 2, ll. 31), and a
“wall 16 of a garment” (id. at col. 2, ll. 50-51).
5. Figure 2 of Grue is reproduced below.
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“Figure 2 is a vertical section through the pocket and adjoining portion of
the garment taken on line 2-2 of Fig. 1” (Grue col. 2, ll. 9-11), with an “an
inturned edge 18 . . . provided around the opening 11 with said inturned edge
stitched to the adjoining edge of the lining 15” (id. at col. 2, ll. 53-54).
III. PRINCIPLES OF LAW
“Anticipation requires a showing that each limitation of a claim is
found in a single reference, either expressly or inherently.” Atofina v. Great
Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006).
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IV. REJECTION UNDER 35 U.S.C. § 102(b)
Issue
Does Grue teach a fabric “wearing apparel” with an aperture
extending from said outside surface of said fabric through to said inside
surface of said fabric,” as claimed?
Analysis
Appellant claims a “wearing apparel” with two apertures, one
“aperture extending from said outside surface through to said inside surface
of said pocket” and “a second aperture extending from said outside surface
of said fabric through to said inside surface of said fabric.” (FF 1, see also
FF 2 regarding claims 9 and 12). Appellant’s specification describes the
wearing apparel as “having rear pockets, and the pockets have cutouts in a
variety of shapes. The cutouts extend through the pocket and through the
material inside the pocket area. A material such as sheer lace or tulle can
be placed adjacent the wearer's exposed skin.” (FF 3). “During
examination, ‘claims ... are to be given their broadest reasonable
interpretation consistent with the specification, and . . . claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art.’” In re American Academy of Sci. Tech Center,
367 F.3d 1359, 1364 (Fed. Cir. 2004). We interpret the Appellant’s claims
as directed to wearing apparel that has an aperture allowing access from
the outside to the inside of the apparel.
Grue discloses a garment with a pocket with an “outer wall 10 having
an opening 11,” so that an emblem (14) can be displayed through the pocket.
(FF 4). The pocket taught in Grue has several layers, including “an inturned
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edge 18 . . . provided around the opening 11 with said inturned edge stitched
to the adjoining edge of the lining 15.” (FF 5). The Examiner found that
Grue discloses pocket lining 15, which has been defined as part
of Grue's fabric wearing apparel, attached to the inside surface
of pocket panel 10. Said lining 15 inherently has an inside
surface and an outside surface. In order to expose emblem 14,
then, secured behind pocket panel 10 and lining 15, as visible in
Figure 2 included below, a first aperture in the pocket 10
corresponds to a second aperture in the lining 15, in
combination Grue's opening 11. The second aperture of lining
15 anticipates applicant's "second aperture extending from said
outside surface of said fabric through to said inside surface of
said fabric.”

(Ans. 9).
Appellant argues that lining 15 cannot be considered to be a “wearing
apparel made from fabric,” and that, therefore, Grue teaches only one of the
claimed apertures. (App. Br. 5-6). We agree. The “lining,” taught by Grue
is not a “wearing apparel made from fabric” because the broadest reasonable
interpretation of “wearing apparel,” in light of the specification, is a primary
garment, which includes, but is not defined by, pockets. (See FF 3). The
wall 16 of Grue, not the lining 15, would correspond with the claimed
“wearing apparel made from fabric.” (See FF 4). Grue does not teach an
aperture in wall 16. Therefore, Grue does not teach an aperture in the fabric
of the wearing apparel, as explained by Appellant’s specification for the
claimed apparel. (FF 3).
Conclusion of Law
Grue does not teach a fabric “wearing apparel” with an “aperture
extending from said outside surface of said fabric through to said inside
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surface of said fabric,” as claimed. Thus, Grue does not teach each
limitation of the claimed wearing apparel, see Atofina, 441 F.3d at 998, and
the Examiner erred in rejecting claims 1, 9, and 12-15 under 35 U.S.C.
§ 102(b).
V. REJCTIONS UNDER 35 U.S.C. § 103(a)
The Examiner rejected claims 3 and 4, under 35 U.S.C. § 103(a) over
Grue. (Ans. 5-6). Although the Examiner found that it would have been
obvious to replace a diamond-shaped aperture with a heart-shaped aperture,
there was no finding of modification of Grue to include “an aperture
extending from said outside surface of said fabric through to said inside
surface of said fabric,” as recited in claim 1, from which claims 3 and 4
depend. Accordingly, the Examiner erred in rejecting claims 3 and 4 under
35 U.S.C. § 103(a) over Grue.
The Examiner also rejected claim 2 over the combination of Grue and
Green (Ans. 6), and claims 5-8 over the combination of Grue and Bontems
(Ans. 6-7), both under 35 U.S.C. § 103(a). Each of claims 2-8 depend on
claim 1, but the Examiner did not rely on Green or Bontems for a teaching
of an aperture extending from the outside of the wearing apparel or fabric to
the inside of the wearing apparel or fabric. Thus, neither Green nor Bontems
cures the deficiency of the Examiner’s rejection of claim 1 over Grue.
Accordingly, the Examiner erred in rejecting claims 2 and 5-8 under 35
U.S.C. § 103(a) over Grue and Green or Bontems.
VI. NEW GROUNDS OF REJECTION
Findings of Fact
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6. Appellant’s specification cites U.S. Patent No. 3,828,368
(“Lam”). (Spec. 1).
7. Lam teaches “wearing apparel in the form of a pair of pants or
trousers provided with apertures, openings or cutout portions in the seat of
the trousers to expose the wearer’s skin or garment disposed beneath the
trousers.” (Lam col. 1, ll. 31-35).
8. Lam teaches that “[f]or added strength, an additional binding
fabric or trim 34 may be attached by conventional means across the
openings 30, which also add to the appearance thereof.” (Lam. col., 2, ll.
56-58).
Analysis
Lam teaches a wearing apparel with apertures that expose the wearer’s
skin or garment underneath. (FF 7). Thus, Lam teaches a wearing apparel
made of fabric that has “an aperture extending from said outside surface of
said fabric through to said inside surface of said fabric,” as recited in
Appellant’s claims. Lam also teaches attaching binding fabric or trim across
the aperture in the wearing apparel. (FF 8), which corresponds to the “means
secured to said inside surface of said fabric for blocking said second
aperture.” (FF 1). Grue teaches a pocket with “an aperture extending from
the outside surface through to said inside surface of the pocket,” as claimed.
(FFs 4 and 5). Those of skill in the art would have had reason to combine
the teachings of Grue with the teachings of Lam to achieve a wearing
apparel that exposes the skin while providing a pocket for additional style.
Thus, the combination of Lam and Grue renders the wearing apparel of
Appellant’s claim 1 obvious. See KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727,
1740 (2007) (“When a work is available in one field of endeavor, design
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incentives and other market forces can prompt variations of it, either in the
same field or a different one. If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.”). Similarly,
independent claims 9 and 12 are also obvious over Lam and Grue.
We adopt the Examiner’s findings regarding dependent claims 2-8,
10, 11, and 13-15.
VII. ORDER
Upon consideration of the record and for the reasons given,
the rejection of claims 1 and 9-15 under 35 U.S.C. § 102(b) over Grue
is REVERSED;
the rejection of claims 3 and 4 under 35 U.S.C. § 103(a) over Grue is
REVERSED
the rejection of claim 2 under 35 U.S.C. § 103(a) over Grue and Green
is REVERSED; and
the rejection of claims 5-8 under 35 U.S.C. § 103(a) over Grue and
Bontems is REVERSED.
Additionally, for the reasons set forth herein, we enter the following
new grounds of rejection under 37 C.F.R. § 41.50(b) for
claims 1, 3, 4, and 9-15 under 35 U.S.C. § 103(a) over Lam and Grue;
claim 2 under 35 U.S.C. § 103(a) over Lam, Grue, and Green; and
claims 5-8 under 35 U.S.C. § 103(a) over Lam, Grue, and Bontems.
37 C.F.R. § 41.50(b) provides that, “[a] new grounds of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
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one of the following two options with respect to the new grounds of
rejection to avoid termination of proceedings as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding will be
remanded to the examiner; or
(2) Request that the proceeding be reheard under 37 C.F.R. § 41.52 by
the Board upon the same record.

REVERSED; NEW GROUNDS ENTERED 37 C.F.R. § 41.50(b)
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MAT

Joseph McGlynn
Patent & Trademark Services, Inc.
6111 Saddle Horn Dr.
Fairfax, VA 22030