Ex Parte Boser

Board of Patent Appeals and Interferences

Sep 29, 2010

09944612 (B.P.A.I. Sep. 29, 2010)

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.
09/944,612 09/04/2001 Ronald J. Boser 1322
7590 09/29/2010
MYRON AMER P.C.
Suite 2B
350 National Boulevard
Long Beach, NY 11561-3327
EXAMINER
HALE, GLORIA M
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
09/29/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RONALD J. BOSER
____________

Appeal 2009-013715
Application 09/944,612
Technology Center 3700
____________

Before LINDA E. HORNER, JENNIFER D. BAHR, and JOHN C.
KERINS, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Ronald J. Boser (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claim 1, which is the only claim
pending in this application, under 35 U.S.C. § 112, second paragraph, as
being indefinite; under 35 U.S.C. § 103(a) as being unpatentable over
Fairbanks (US 2,613,365, iss. Oct. 14, 1952), Gershman (Maurice
Gershman, MD, SELF-ADHERING NYLON TAPES, 168 J.A.M.A., 930
(Oct. 18, 1958)) and Shimizu (JP 8-158111, pub. Jun. 18, 1996)2; and under
35 U.S.C. § 102(b) as being anticipated by Shimizu. We have jurisdiction
over this appeal under 35 U.S.C. § 6 (2002).
The Invention
Appellant’s claimed invention is directed to a brassiere. Claim 1,
reproduced, below, is the only claim pending in the application.
1. A first and second construction for right and left breast cup
supports for a brassiere attached in supporting relation
respectively in surrounding relation about a bottom of a
cooperating breast cup using VELCRO hook-type and
VELCRO loop-type fasteners, said first and second
construction comprising for each breast cup a U-shape of
shape-imparting construction material serving as each said cup
support, a fabric casing in covering relation about said U-shape,
a VELCRO hook-type fastener in a strip configuration attached
to said fabric casing, and a VELCRO loop-type fastener in a
strip configuration attached in an outwardly facing relation in
an operative location in surrounding relation about a bottom of
a cooperating breast cup and in an interposed position between
said brassiere and an upper torso of a wearer of said brassiere,
said strips of VELCRO hook-type and VELCRO loop-type

2 We refer in this opinion to the English language translation of this
document prepared by FLS, Inc. in Feb. 2005, contained in the image file
wrapper for this application.
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fasteners having operative positions in face-to-face contact with
each other incident to providing breast cup support to said
wearer of said brassiere, and only in said second construction a
removal of said attached cup support which exposes said
VELCRO loop-type attached strip which is characterized by a
nominally felt presence to the touch of said second construction
contributing to comfort in the wearing of the brassiere.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Rejection (1) – indefiniteness
The Examiner rejected claim 1 as indefinite because, according to the
Examiner, the trademark “VELCRO” is used therein to describe hook-type
and loop-type fasteners. Ans. 3. The Examiner reasons that a trademark is
used to identify a source of goods, and not the goods themselves. Id.
Consequently, according to the Examiner, the use of the trademark to
describe hook-type and loop-type fasteners renders the claim indefinite. Id.
In contesting the rejection, Appellant does not dispute that
“VELCRO” is a trademark. Rather, Appellant contends that because the
trademark “VELCRO” appears in capital letters and is followed by a generic
designation of the product, thereby respecting the proprietary nature of the
trademark in the manner set forth in the Manual of Patent Examining
Procedure (MPEP) § 608.01(v) (8th Ed., Rev. 8, Jul. 2010), its use is
permissible. App. Br. 3-4; Reply Br. 1-2.
Accordingly, the issue raised in the appeal of this rejection is whether
the use of the trademark “VELCRO” renders claim 1 indefinite.
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The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
The primary purpose of the definiteness requirement is to
ensure that the claims are written in such a way that they give
notice to the public of the extent of the legal protection afforded
by the patent, so that interested members of the public, e.g.,
competitors of the patent owner, can determine whether or not
they infringe.
All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774, 779-
80 (Fed. Cir. 2002) (citing Warner-Jenkinson Co. v. Hilton Davis Chem.
Co., 520 U.S. 17, 28-29 (1997)).
Appellant’s reliance on the guidance in MPEP § 608.01(v) is
unavailing here, as that section does not address the use of trademarks in
claims. The use of trademarks in a claim is addressed in MPEP
§ 2173.05(u), which instructs examiners that the use of a trademark in a
claim to describe a product renders the claim indefinite.
The Examiner is correct that the trademark “VELCRO” identifies the
source of the product, and does not describe the product itself. See 15
U.S.C. § 1127 (defining the term “trademark” as “any word, name, symbol,
or device, or any combination thereof” used to identify and distinguish the
trademark owner’s product from those manufactured or sold by others and to
indicate the source of the goods). The trademark “VELCRO” precedes
“hook-type fastener” and “loop-type fastener” in the claim so as to modify
those terms. It is not clear how the trademark “VELCRO” describes or
further modifies “hook-type fastener” and “loop-type fastener,” because a
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trademark identifies the source of a product, not structural details of the
product. The manufacturer of a product sold under a trademark may modify
or update the structure of that product from time to time, or manufacture or
sell different versions of the product, such that any product details associated
with the trademark are uncertain and arbitrary. Consequently, if any effect
is to be given to the trademark “VELCRO” in claim 1, in accordance with
precedent of our reviewing court,3 potential competitors would be unable to
ascertain whether or not they are infringing the claimed subject matter.
Therefore, we agree with the Examiner that the use of the trademark
“VELCRO” in claim 1 renders the claim indefinite.
We sustain the rejection of claim 1 under 35 U.S.C. § 112, second
paragraph.
Rejection (2) - Fairbanks, Gershman, and Shimizu
We adopt all of the findings and reasoning of the Examiner on pages
4-6 of the Answer.
In essence, the Examiner found, and we agree, that Fairbanks
describes a brassiere comprising all of the features of claim 1 with the
exception of hook-type and loop-type fasteners to detachably secure the
sheath 25 and wire frame 30 to the first and second breast cups (bust pockets
12, 13). Ans. 4-5. Rather, Fairbanks discloses as the securement means a
tape 20 comprising female snap fastening members 21 on the cups and a

3 Claims are interpreted with an eye toward giving effect to all terms in the
claim. See, e.g., Elekta Instr. S.A. v. O.U.R. Scientific Int'l, Inc., 214 F.3d
1302, 1305, 1307 (Fed. Cir. 2000); Stumbo v. Eastman Outdoors, Inc., 508
F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions which
render phrases in claims superfluous).
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plurality of male snap fastening members 26 on the sheath 25 spaced so as to
engage with the female snap fastening members. Col. 3, ll. 29-31 and 37-40.
Gershman discloses the use of “synthetic burs” comprising one tape
strip having a top bristle or male surface composed of tiny hooks and a
cooperating second tape having a bottom matted or female surface
composed of tiny loops as an attachment means for securing items, such as a
brassiere, on a person. Gershman teaches placing the tape with the male
(hook) surface on the outer (top) face of the bottom layer of material and the
tape with the female (loop) surface on the layer overlying the bottom layer
so as to engage the hooks and loops. Gershman also specifically teaches the
use of such hook and loop fasteners to replace snaps.
Shimizu teaches the use of such hook and loop (soft pile) fasteners in
brassieres, for detachably securing cup members to cup-use concave
portions and pads to cup members, and further teaches placing the loop (soft
pile) fastener members on the surfaces that may make direct contact with the
skin of the user, so as to provide a pleasant feel. Paras. 11, 19, 22, 29.
Gershman and Shimizu provide more than ample suggestion to
support the conclusion that it would have been obvious for a person of
ordinary skill in the art to modify the Fairbanks brassiere by replacing the
tapes of female and male snap fasteners of Fairbanks with soft pile (female,
loop) fastener members and hook (male) fastener members, respectively,
such that the loop-type fastener members replace the tapes 20 on the inside
surface of the bust pockets 12 and 13, so as to provide a comfortable feel
against the skin of the wearer in the wireless version of the brassiere, when
the sheath 25 and wire frame 30 are not attached (see Fairbanks, col. 2, ll. 1-
10).
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For the above reasons, the Examiner correctly concluded that the
combined teachings of Fairbanks, Gershman, and Shimizu render obvious
the subject matter of claim 1.
Appellant does not assert any arguments against the combined
teachings of Fairbanks, Gershman, and Shimizu. Rather, Appellant asserts
arguments as to why neither Gershman nor Shimizu anticipates the claimed
subject matter. App. Br. 6, 7. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Appellant’s only reference to Gershman is a
bald assertion that the Gershman article cannot be relied upon to support the
point that hook and loop fasteners were not available at the time of
Fairbanks’ invention. App. Br. 4. That point is not pertinent to the question
of whether the combined teachings of Fairbanks, Gershman, and Shimizu
render obvious the subject matter of claim 1 to a person having ordinary skill
in the art at the time of Appellant’s invention.
Appellant has not persuaded us that the Examiner’s rejection of claim
1 under 35 U.S.C. § 103(a) should be reversed. We sustain the rejection.
Rejection (3) – anticipation by Shimizu
Appellant argues that Shimizu does not anticipate the subject matter
of claim 1, because Shimizu describes cups, not supports, which are
detachable. App. Br. 7. Thus, the issue raised in the appeal of this rejection
is whether Shimizu describes detachable breast cup supports comprising for
each breast cup a U-shape of shape-imparting material, as called for in claim
1.
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The Examiner correctly found that Shimizu describes U-shaped wire
supports 4 on cups 2 (paras. 13, 28; fig. 4), which are detachably secured to
cooperating breast cups (cup-use concave portions 1a of mounting means 1)
by means of cup fastening sections 2b (each having hooks, disposed on the
cups 2) and cup holding sections 1b (each comprising a tape of napped pile
material having a large number of soft piles (loops), disposed on the
cooperating breast cups) (para. 29). Ans. 7-8.
We thus conclude that the Examiner correctly found that Shimizu
describes detachable breast cup supports comprising for each breast cup a U-
shape of shape-imparting material, as called for in claim 1. We sustain the
rejection of claim 1 under 35 U.S.C. § 102(b).

DECISION
The Examiner’s decision is affirmed.
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

Appeal 2009-013715
Application 09/944,612

9
hh

MYRON AMER P.C.
Suite 2B
350 National Boulevard
Long Beach, NY 11561-3327