Ex Parte Linkon

Patent Trial and Appeal Board

Apr 22, 2013

11626796 (P.T.A.B. Apr. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NICOLE LINKON
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Appeal 2011-001336
Application 11/626,796
Technology Center 3700
____________________

Before JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001336
Application 11/626,796

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER
The claimed subject matter relates to “an apparatus for women with
surgically altered breasts for support and cosmetic purposes.” Spec. 1, ll. 4-
5. Claims 1 and 14 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A women's undergarment, the undergarment comprising:
a first and second shoulder strap having a front end and a
back end adapted to extend over the shoulder of an individual;
a back strap whereby the first and second shoulder strap
extend over the shoulder and are connected to the back strap by
a fastening means;
a first cup and second cup attached to the first and second
shoulder straps, the first and second cup adapted to support the
breast wherein the first and second cups have a plurality of
layers including at least a first layer and a second layer wherein
a space exists between the first layer and the second layer;
at least one insert whereby the insert is sized to conceal
the nipple of the individual and further wherein the insert has a
thickness greater than the thickness at any other point in the
undergarment and further wherein the insert allows the user to
manipulate the insert into the desired position that results in the
correct alignment of the insert about the nipple of the individual
wherein the insert is replaceable with another insert having
either an increased or decreased thickness; and
said insert does not take up the entire space that exists
between the first and second layers.

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REJECTIONS
Appellant seeks review of the following rejections:
(1) the rejection of claims 1-20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement (Ans. 4-5);
(ii) the rejection of claims 1-4 and 6-20 under 35 U.S.C. § 102(b) as
anticipated by Greenberg (US 5,098,330, iss. Mar. 24, 1992) (Ans. 5-6); and
(iii) the rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable
over Greenberg and Glasser (US 3,221,748, iss. Dec. 7, 1965) (Ans. 6-7).

ANALYSIS
Rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph
Appellant does not present arguments contesting the Examiner’s
rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph. See Br. 5-
13; see also Ans. 8. Consequently, Appellant has waived any argument of
error, and we summarily sustain the rejection of claims 1-20 under 35 U.S.C.
§ 112, first paragraph. See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir.
2002) (holding that the Board did not err in sustaining a rejection under 35
U.S.C. § 112, second paragraph, when the applicant failed to contest the
rejection on appeal); see also Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential) (“If an appellant fails to present arguments on a
particular issue—or, more broadly, on a particular rejection—the Board will
not, as a general matter, unilaterally review those uncontested aspects of the
rejection”) and MANUAL OF PATENT EXAMINING PROCEDURE § 1205.02 (8th
ed., Rev. 9, Aug. 2012) (“If a ground of rejection stated by the examiner is
not addressed in the appellant’s brief, that ground of rejection will be
summarily sustained by the Board.”).
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Rejection of claims 1-4 and 6-20 as anticipated by Greenberg
Appellant argues claims 1-4 and 6-20 as a group. Br. 5-7. We select
independent claims 1 and 14 as the representative claims. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
Claims 1-4 and 6-13
The Examiner found that Greenberg discloses all of the limitations of
independent claim 1. Ans. 5-7. Appellant first contends that Greenberg fails
to disclose a removably attachable insert sized to conceal only the nipple of
the individual user. Br. 10. Independent claim 1 does not include this
language, such that the contention is unpersuasive. See In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed. Cir. 1998); In re Self, 671 F.2d 1344, 1348
(CCPA 1982).
Appellant secondly contends that Greenberg fails to disclose the insert
being thicker than the first and second layers of the undergarment. Br. 10.
The Examiner found, and we agree, that Greenberg’s insert (elastomeric
member 56) “is thicker than either of the cup layers [linings 26, 28, 30].”
Ans. 6; see also Ans. 5; Greenberg, fig. 4. Appellant does not provide
persuasive reasoning or evidence as to why the Examiner’s specific finding
is in error.
Appellant thirdly contends that Greenberg fails to disclose allowing
the user to manipulate the insert into the desired position that results in the
correct alignment of the insert about the nipple. Br. 10. The Examiner
found, and we agree that “[t]he Greenberg . . . insert is able to be
manipulated within the pocket since there is a border area about the insert
within the cup/pocket [and] when placed within the cup/pockets[,] it is
manipulated and placed within . . . the desired position.” Ans. 12.
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Appellant does not provide persuasive reasoning or evidence as to why the
Examiner’s specific finding is in error.
Appellant fourthly contends that Greenberg fails to disclose the insert
being replaceable with another insert having either an increased or decreased
thickness. Br. 10. The Examiner found that “Appellant did not claim the
pads with the increased or decreased thickness or that the first insert was
[actually] replaced with the inserts of ‘increased or decreased’ size.” Ans.
11-12. The Examiner further found that “[t]he fact that the Greenberg . . .
pad [or insert] is removable in itself is an inherent indication that the pad [or
insert] could be replaced with other pads of any configuration as desired by
the user” and that “there is a border area about the insert within the
cup/pocket when placed within the cup/pockets.” Id. As explained by our
reviewing court:
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter, may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971)). The Examiner had a sufficient
basis for finding that Greenberg’s insert (elastomeric member 56) is
replaceable with another insert having an increased or decreased thickness,
and Appellant provides no persuasive evidence or reasoning that Greenberg
did not inherently possess the functionality of being replaceable with another
insert as recited in claim 1.

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For the foregoing reasons, we find that the Examiner did not err in
finding that the subject matter of claim 1 was disclosed by Greenberg, and
we sustain the rejection of claims 1-4 and 6-13 under 35 U.S.C. § 102(b).

Claims 14-20
The Examiner found that Greenberg discloses all of the limitations of
independent claim 14. Ans. 5-7. As an initial matter, Appellant’s
contentions regarding Greenberg’s failure to disclose (i) the insert being
thicker than the first and second layers of the undergarment; (ii) allowing the
user to manipulate the insert into the desired position; and (iii) the insert
being replaceable with another insert having an increased or decreased
thickness (Br. 10) are not persuasive for the reasons discussed supra in
connection with independent claim 1.
Appellant’s contention regarding Greenberg’s purported failure to
disclose an insert sized to conceal only the nipple of the individual user (Br.
10) is also unpersuasive. The Examiner reasoned, and we agree, that claim
14 does not include specific parameters for a nipple or for a pad that would
be configured to cover only a wearer’s nipples, and therefore, Greenberg’s
insert (elastomeric member 56) is capable of concealing only a wearer’s
nipple as called for in claim 14, when utilized with a particularly
dimensioned body part. See Ans. 9-10. In light of this, the burden shifted to
Appellant to show that Greenberg’s insert (elastomeric member 56) is
incapable of concealing only a wearer’s nipple as called for in claim 14. See
Schreiber, 128 F.3d at 1478 (once the Examiner finds that the prior art
structure would be capable of performing all of the functions claimed, the
burden shifts to the applicant to show that this is not the case). Appellant
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does not provide persuasive reasoning or evidence as to why Greenberg’s
insert (elastomeric member 56) is incapable of the claimed function.
However, we agree with Appellant that Greenberg does not disclose a
“removably attachable” insert (Br. 10; Clms. App’x.) in that the Examiner
has not provided a sufficient basis for finding that Greenberg’s insert
(elastomeric member 56) is inherently capable of being attachable to the first
and/or second layer (linings 26, 28, 30) or any other element. Cf. Ans. 7
(“Greenberg et al discloses the invention substantially as claimed except for
the attachment of the pad to the cup” (emphasis added)). Accordingly, we
do not sustain the rejection of claims 14-20 under 35 U.S.C. § 102(b) as
anticipated by Greenberg.

Rejection of claim 5 as unpatentable over Greenberg and Glasser
Claim 5 depends from claim 1 and recites “wherein the first cup and
second cup have a first layer and second layer wherein the insert is affixed to
the first layer.” Clms. App’x. The Examiner found that Glasser discloses
the “use of a hook and loop material that is attachable to the inside surface of
the cup pocket so that the insert pad is removable from the pocket but is also
securely adhered to the bra cup pocket in use.” Ans. 12-13. The Examiner
concluded “it would have been obvious . . . to modify the garment of
Greenberg . . . with the teaching of Glasser to include the removably
attachable pad and the fastener to attach the pad therein . . . [to] prevent the
pad from falling from the cup in use.” Id. at 7.
Appellant contends that the combination of Greenberg and Glasser
fails to teach the first and second cups having first and second layers
wherein the insert is affixed to the first layer. Br. 12. However, the
Examiner found and we agree that Greenberg’s cups 12, 14 include a
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plurality of layers 26, 28, 30 and that Glasser discloses a pad that is attached
to a cup with a hook and loop fastener 38. Ans. 5, 7; see also Glasser, col. 2,
ll. 27-31 (“The hook-like elements 38 are capable of inter-meshing with the
nap of the fabric layer 22 [of the cup 18]. Wherever the pad is placed in the
cup, the nap is available to form a companion fastener element.
Accordingly, it is possible, within limits, to position the pad 24 at any
desired location . . . .”). Appellant does not provide persuasive reasoning or
evidence as to why the Examiner’s specific findings, or the Examiner’s
resulting proposed combination, are in error.
For the foregoing reasons, we find that the Examiner did not err in
concluding that the subject matter of claim 5 would have been obvious over
Greenberg and Glasser, and we sustain the rejection of claim 5 under 35
U.S.C. § 103(a).

NEW GROUND OF REJECTION
We enter a new ground of rejection of claims 14-20 under 35 U.S.C.
§ 103(a) as unpatentable over Greenberg and Glasser. We adopt and
incorporate by reference both the Examiner’s findings with respect to
Greenberg and Glasser and the Examiner’s reasoning supporting a
combination of Greenberg and Glasser on pages 5-14 of the Answer.
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection of
independent claim 14 and dependent claims 15-20 under 35 U.S.C. § 103(a)
as unpatentable over Greenberg and Glasser.

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DECISION
The Examiner’s rejection of claims 1-4 and 6-13 under 35 U.S.C.
§ 102(b) is AFFIRMED.
The Examiner’s rejection of claims 14-20 under 35 U.S.C. § 102(b) is
REVERSED.
The Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) is
AFFIRMED.
We enter a NEW GROUND OF REJECTION of claims 14-20 under
35 U.S.C. § 103(a) as unpatentable over Greenberg and Glasser.
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection of claims 1-13, this
decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. §41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. 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. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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