Ex Parte Gorski et al

Board of Patent Appeals and Interferences

Jun 30, 2008

10304769 (B.P.A.I. Jun. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte IONE PAMELA GORSKI and
CYNTHIA CHIARMONTE-ARCE
____________

Appeal 2008-1094
Application 10/304,769
Technology Center 3700
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Decided: June 30, 2008
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Before WILLIAM F. PATE, III, MURRIEL E. CRAWFORD, and
JENNIFER D. BAHR, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Ione Pamela Gorski and Cynthia Chiarmonte-Arce (Appellants)
appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims
21-32, which are the only pending claims. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).
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The Invention
Appellants’ claimed invention is directed to “nipple covers which are
substantially flat and can be stretched to fit different sizes” (Specification
2:3-4). Claims 21, 22, and 26, the only independent claims, read as follows:
21. A stretchable and substantially flat nipple
cover for covering the nipple and immediate
surrounding area comprising:
a skin side and an outer side;
said skin side having an adhesive and soft
pad thereon;
said adhesive covered by an adhesive
protector;
said cover having outer peripheral edges
forming a seashell shape; and
said outer side have a central seashell
decoration thereon;
said cover measuring about three inches by
about three inches;
said central seashell measuring about one
and a half inches by about one and a half inches;
said cover being opaque and skin colored;
and
said soft pad being decorative.
22. A stretchable and substantially flat nipple
cover comprising:
a skin side and outer side; said skin side
have an adhesive and a soft pad thereon;
said adhesive covered by an adhesive
protector;
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said cover having an outer periphery
forming a decorative shape which is not a
geometric shape;
said outer side having a central decorative
shape thereon which is not a geometric shape.
26. A stretchable and substantially flat nipple
cover comprising:
a skin side and outer side;
said skin side having an adhesive and a soft
pad thereon:
said adhesive covered by an adhesive
protector;
said cover having an outer periphery
forming a seashell decoration;
said outer side having a central seashell
decoration thereon.

The Rejection
Appellants seek review of the Examiner’s rejection of claims 21-32
under 35 U.S.C. § 103(a) as unpatentable over Noble (US 5,755,611, issued
May 26, 1998) in view of the pasty worn by Lil Kim at the 1999 MTV
Video Music Awards, as documented by Celebrity Movie Archive::Lil Kim,
http://www.celebritymoviearchive.com/tour/movie.php/11351 and Jennifer
Weiner, Salon, The 1999 MTV Video Music Awards, September 11, 1999,
http://www.salon.com/ent/feature/1999/09/11/mtv_video/print.html.

THE ISSUE
Each of Appellants’ independent claims 21, 22, and 26 requires a
“stretchable and substantially flat nipple cover.” The Examiner finds that
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Noble discloses a stretchable and substantially flat nipple cover (Answer 3)1.
Appellants contend that Noble’s breast supports are cup shaped and thus are
not “substantially flat” as defined in Appellants’ Specification (Appeal Br.
5).
The issue presented in this appeal is whether Appellants demonstrate
error in the Examiner’s rejection of claims 21-32 as unpatentable over Noble
in view of the pasty worn by Lil Kim at the 1999 MTV Video Music
Awards. This issue turns, in part, on whether the Examiner erred in
determining that Noble’s breast supports are “substantially flat,” as required
in each of the independent claims.

FINDINGS OF FACT
FF1. Appellants’ Specification, at page 5, line 2, defines “substantially
flat” as meaning that “the cover has no concave or cup-like parts.”
FF2. Noble teaches a ¾ cup embodiment 20 of breast support apparatus
that reveals the top part of the breast in wear (col. 3, ll. 54-55), a ½
cup embodiment 120 that reveals the top half of the breast in wear
(col. 5, ll. 36-38), and a full cup embodiment 220 that covers the
entire breast and is designed for women with especially close
separation of the breasts (col. 5, ll. 52-54). In each of the
embodiments of Noble’s invention, the breast support apparatus
includes a cup portion 22 that is preformed in the shape of the
portion of the breast to support the breast while covering the nipple

1 We make reference in this opinion to the Examiner’s Answer, mailed
March 23, 2007 and to the Appellant’s Appeal Brief, filed November 20,
2006.
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(col. 2, ll. 39-41, col. 3, l. 52, col. 5, l. 43, and col. 5, l. 67). In
addition, each breast support apparatus of the ¾ cup and ½ cup
embodiments includes a flattened peripheral flange portion 24
extending about part of the periphery of the cup portion (col. 2, ll.
42-45, col. 3, l. 53, col. 5, l. 40).
FF3. Noble does not disclose any embodiment of the breast support
apparatus that does not have a concave or cup-like portion. Even
the prior art “StaykupsTM” self-supporting brassiere cups discussed
by Noble in column 1 include a cup portion.
FF4. The Celebrity Movie Archive and Weiner article establish that Lil
Kim wore a pasty having a peripheral shape and design resembling
a seashell adhered using adhesive bonding to her left breast
covering the nipple. These articles provide no indication as to the
material or material properties of the pasty. These articles also
provide no indication as to whether the pasty has a concave or cup
shape prior to being adhered to the breast.

PRINCIPLES OF LAW
It is elementary that to support an obviousness rejection all words in a
claim must be considered in judging the patentability of that claim against
the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
While the analysis in support of a legal conclusion of obviousness
“need not seek out precise teachings directed to the specific subject matter of
the challenged claim,” there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness. KSR
Int’l. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007).
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ANALYSIS
Each of Appellants’ independent claims 21, 22, and 26 recites a
stretchable and substantially flat nipple cover. The Examiner correctly notes
that the terminology “substantially flat” appears only in the preambles of
these claims and not in the body of any of the claims. This in no way
indicates that the terminology “substantially flat” is not a limitation of the
claim entitled to patentable weight. The preamble of a claim does not limit
the scope of the claim when it merely states a purpose or intended use of the
invention; however, terms appearing in a preamble may be deemed
limitations of a claim when they give meaning to the claim and properly
define the invention. See In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir.
1994). In this case, the terminology “substantially flat” is clearly not a
statement of purpose or intended use of the invention. Rather, it is a
limitation on the structure, or shape, of the nipple cover.
In accordance with the definition in Appellants’ Specification,
“substantially flat” means that “the cover has no concave or cup-like parts”
(FF1). Each of independent claims 21, 22, and 26 therefore is limited to a
nipple cover that has no concave or cup-like parts.
All of the breast support apparatus discussed or taught by Noble
includes a cup portion (FF2 and FF3) and thus is not “substantially flat,” as
required in claims 21, 22, and 26. The Examiner therefore erred in finding
that Noble discloses a substantially flat nipple cover. The Examiner does
not rely on the Lil Kim pasty for any teaching that would overcome the
deficiency in Noble. Moreover, Noble’s cup shape performs the function of
supporting the breast (FF2). Thus, even assuming that the Lil Kim pasty is
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substantially flat, that is, devoid of any concave or cup-like parts, it is not
apparent why a person of ordinary skill in the art would have found a reason
to make Noble’s breast support apparatus substantially flat.
In light of the above, we conclude that the Examiner failed to
establish a prima facie case that the subject matter of claims 21, 22, and 26
would have been obvious to a person of ordinary skill in the art at the time
of Appellants’ invention. Appellants have carried their burden of
demonstrating error in the Examiner’s rejection. The rejection of claims 21,
22, and 26 and claims 23-25 and 27-32, which depend either directly or
indirectly from one of claims 21, 22, and 26, cannot be sustained.

DECISION
The decision of the Examiner to reject claims 21-32 is reversed.

REVERSED

vsh

FRANK A. SPEAR
10264 CHAMPIONS COURT
IJAMSVILLE, MD 21754