Ex Parte Linsky et al

Board of Patent Appeals and Interferences

Dec 8, 2009

10625716 (B.P.A.I. Dec. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STACIA LINSKY and ELAINA BANKS
__________

Appeal 2009-004623
Application 10/625,716
Technology Center 3700
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Decided: December 8, 2009
__________

Before LORA M. GREEN, MELANIE L. McCOLLUM, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a breast
self-examination apparatus and a method of breast self-examination. The
Examiner has rejected the claims as anticipated or obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

Appeal 2009-004623
Application 10/625,716

STATEMENT OF THE CASE
Claims 1-5, 7-14, 16-23, and 25-29 are on appeal (App. Br. 2).
Claims 6, 15, and 24 are also pending but have been indicated to be
allowable (Final Rej. 6). We will focus on claims 1, 11, 19-21, and 28,
which read as follows:
1. A breast self-examination apparatus, comprising:
a form-fitting garment comprising armpit areas; and,
at least one examination pattern disposed on said garment.
11. A breast self-examination apparatus, comprising:
a form-fitting garment;
at least one breast examination pattern disposed on said garment; and,
at least one armpit examination pattern disposed on said garment.
19. A breast self-examination apparatus, comprising:
a form-fitting t-shirt;
at least one examination pattern disposed on said t-shirt; and,
at least one marking instrument for marking or designating areas of
suspected abnormalities directly on said t-shirt.
20. The apparatus of Claim 19, wherein said t-shirt is fabricated from a
thin material.
21. The apparatus of Claim 19, wherein said t-shirt comprises a low-
coefficient of friction to facilitate hand and finger movement over said at
least one examination pattern.
28. A method of breast self-examination, comprising the steps of:
a. obtaining a breast self-examination apparatus, comprising:
a form-fitting garment; and,
at least one examination pattern disposed on said garment; and
b. putting on said garment;
c. aligning said at least one examination pattern over a breast; and,
d. examining and palpating the breast from the outside of said
garment via guiding at least one finger over said at least one
examination pattern.
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Claims 1-5, 8, and 28 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Fingleson (US 5,479,661, issued Jan. 2, 1996) (Ans. 4).
Claims 7, 11-14, and 16 stand rejected under 35 U.S.C. § 103(a) as
obvious over Fingleson in view of Morrison (US 4,873,982, issued Oct. 17,
1989) (Ans. 7).
Claims 9, 10, 19-23, 25-27, and 29 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Fingleson in view of Rusin (US 6,412,491 B1,
issued Jul. 2, 2002) (Ans. 9).
Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as obvious
over Fingleson in view of Morrison and Rusin (Ans. 9).
ANTICIPATION
The Examiner finds that Fingleson “discloses a breast self-
examination apparatus, garment 10, including a form-fitting garment . . .
with at least one examination pattern 38,40 . . . disposed on the garment”
(Ans. 5). The Examiner also finds that Fingleson “discloses the method of
breast self-examination including obtaining the breast examination form-
fitting garment 10 with the pattern 38,40; putting on the garment, aligning
the garment pattern with the breast and examining the breasts as” in claim 28
(id. at 6).
Appellants argue that Fingleson “fails to teach ‘armpit areas’” (App.
Br. 7). Appellants also argue that Fingleson “fails to teach the step of
examining the breast from the outside of the garment” (id. at 8).
Issues
Did the Examiner err in finding that Fingleson discloses a garment
comprising armpit areas?
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Did the Examiner err in finding that Fingleson discloses examining
and palpating the breast from the outside of the garment?
Findings of Fact
1. The Specification discloses a shirt-like garment having breast
self-examination patterns thereon (Spec. 6: 14-16).
2. The Specification also discloses that a user of the garment
conducts “a breast self-examination by palpating her breasts from the
outside of the garment, as opposed to directly feeling or contacting her bare
breasts” (id. at 6: 21 to 7: 2).
3. Specification Figure 5 is reproduced below:

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Specification Figure 5 “is a perspective view of an apparatus for facilitating
breast self-examinations . . . , shown in use” (id. at 12: 5-8).
4. The Specification discloses that “spiral or circular-like
examination patterns . . . are disposed or printed on respective armpit
areas 34 and 36 of garment 20” (id. at 15: 4-6).
5. Fingleson discloses “an upper body garment having open sides
with ties, with the front panel of the garment printed with written and
graphic instructions for breast self-examination” (Fingleson, col. 2, ll. 2-6).
6. Fingleson also discloses that the “sides of the garment are left
open so the woman can easily reach through to examine her breasts” (id. at
col. 2, ll. 23-26).
7. Fingleson Figure 8 is reproduced below:

Fingleson Figure 8 depicts “the instructional garment in use being worn by a
woman conducting a self-examination of her breasts” (id. at col. 2, ll. 56-
57).
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8. Fingleson discloses that the “wearer passes her hand through
the side openings of garment 10 under front panel 12 to complete the
procedure” (id. at col. 4, ll. 18-20).
Principles of Law
“It is axiomatic that, in proceedings before the PTO, claims in an
application are to be given their broadest reasonable interpretation consistent
with the specification.” In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983).
“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., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987).
Analysis
Claim 1 recites “a form-fitting garment comprising armpit areas.”
Consistent with the ordinary meaning of the term “armpit areas” and how it
is used in the Specification (Findings of Fact (FF) 3-4), we interpret claim 1
to require that the garment include areas that cover a person’s armpits.
Fingleson discloses “an upper body garment having open sides with
ties, with the front panel of the garment printed with written and graphic
instructions for breast self-examination” (FF 5). We agree with Appellants
that the Examiner has not set forth a prima facie case that Fingleson’s
garment includes armpit areas.
The Examiner finds that “the open area under the arms, in addition to
the garment fabric area adjacent to the arm areas and thereabout the side of
the garment that would inherently fold around and under the wearer’s arms
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when worn, is the ‘armpit area’ as broadly interpreted” (Ans. 5). In
particular, the Examiner finds:
Fing[le]son . . . covers “Armpit areas” as broadly claimed since
the side portions of the Fing[le]son et al garment, along the side
edges would cover the outer edges of one’s armpits at the front
and rear shoulder areas. The fabric about one’s arm would fold
over in use under the underarm and therefore be in an “armpit
area”. . . . Appellant[s’] drawings also show the armpit areas as
extending outwardly from under the arms to cover a wearer’s
lymph gland areas.
(Id. at 11.)
We do not agree. First, the Examiner has set forth no support for her
assumption that “the garment fabric area adjacent to the arm areas and
thereabout the side of the garment . . . would inherently fold around and
under the wearer’s arms” (Ans. 5). In addition, although the side edges of
Fingleson’s garment would, from the front and rear directions, cover the
outer edges of the wearer’s armpits (see FF 7), we do not agree that one of
ordinary skill in the art would refer to these regions as the armpit areas of the
garment. In addition, although Specification Figure 5 may depict the
circular pattern as extending beyond the armpit regions (FF 3-4), we do not
agree that Appellants’ drawings show the armpit areas as extending beyond
the areas of a person’s body that would normally be considered the armpits.
Claim 28 recites “examining and palpating the breast from the outside
of said garment.” Consistent with the ordinary meaning of the phrase “the
outside of said garment” and how it is used in the Specification (FF 2), we
interpret claim 28 to require examining and palpating the breast from the
outside of the garment, “as opposed to directly feeling or contacting [the]
bare breast” (id.). We do not agree that the Examiner is being reasonable in
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instead interpreting “the term ‘outside of the garment’ . . . to be away from
the garment material layer or outside of the garment material” (Ans. 6).
Instead of examining and palpating the breast from the outside of the
garment, Fingleson discloses that the “wearer passes her hand through the
side openings of garment 10 under front panel 12 to complete the procedure”
(FF 8; see also FF 6-7). Thus, we agree with Appellants that the Examiner
has not set forth a prima facie case that Fingleson discloses examining and
palpating the breast from the outside of the garment.
Conclusion
The Examiner erred in finding that Fingleson discloses a garment
comprising armpit areas. We therefore reverse the anticipation rejection of
claim 1 and of claims 2-5 and 8, which depend from claim 1.
The Examiner also erred in finding that Fingleson discloses
examining and palpating the breast from the outside of the garment. We
therefore reverse the anticipation rejection of claim 28.
OBVIOUSNESS – FINGLESON AND MORRISON
The Examiner relies on Fingleson for disclosing “the invention
substantially as claimed” (Ans. 7). However, the Examiner states that
Fingleson “does not specifically disclose the garment as extending directly
over the underarm area” (id.).
The Examiner relies on Morrison for disclosing “a breast examination
garment that extends to an underarm or side area of the wearer” (id.). The
Examiner finds that Morrison “discloses that the garment is adapted for use
in other areas of the body where the detection of lumps is desired (such as
the underarm area)” (id. at 7-8).
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The Examiner concludes that it would have been obvious “to
construct the [Fingleson] garment to extend under the arm areas by including
the side portions as seen in Morrison and to mark those areas in a similar
fashion as the Fing[le]son front surface as suggested by Morrison . . . in
order to effectively examine the wearer for breast cancer” (id. at 8).
Appellants argue that neither Fingleson nor Morrison discloses “an
examination pattern disposed on an armpit area of an examination garment”
(App. Br. 9).
Issue
Did the Examiner err in finding that Fingleson and Morrison disclose
or suggest a breast self-examination apparatus comprising a garment having
at least one armpit examination pattern disposed thereon?
Findings of Fact
9. Morrison discloses “a garment which is useful for examining a
surface for lumps or irregularities comprising two contacting plies”
(Morrison, col. 1, ll. 63-65).
10. Specifically, Morrison discloses a garment “adapted to fit
around the upper torso and over the breast area of an individual” (id. at
col. 2, ll. 1-2).
11. Morrison also discloses that the garments “may be specially
adapted for use with other parts of the body” (id. at col. 4, ll. 18-21).
12. In addition, Morrison discloses that, “if the person wears the
garment while being examined, and the doctor notes an area that the patient
should check periodically, the garment can be marked where the patient is to
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perform the specific periodic self-examinations at home” (id. at col. 4, ll. 12-
18).
Principles of Law
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citation omitted). “It is fundamental that rejections under 35
U.S.C. § 103 must be based on evidence comprehended by the language of
that section.” In re Grasselli, 713 F.2d 731, 739 (Fed. Cir. 1983).
Analysis
Claim 11, as well as claim 7, recites a breast self-examination
apparatus comprising a garment having at least one armpit examination
pattern disposed thereon. We agree with Appellants that the Examiner has
not set forth a prima facie case that Fingleson and Morrison teach or suggest
a garment having at least one armpit examination pattern disposed thereon.
As noted by the Examiner, Morrison discloses that its garment “may
be specially adapted for use with other parts of the body” (FF 11). In
addition, Morrison discloses that “the garment can be marked where the
patient is to perform . . . specific periodic self-examinations at home”
(FF 12). However, the Examiner has not pointed to an adequate teaching or
suggestion of a garment having at least one armpit examination pattern
disposed thereon.
The Examiner does states that “one of ordinary skill in the art with
experience of breast examination and the well known charts used in such
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examination by the public and health care workers would know to extend the
examination to the underarm lymph gland areas” (Ans. 18). However, the
Examiner has not provided evidence that it was known in the art at the time
of the present invention to examine the armpit area or that armpit
examination patterns were known in the art.
Conclusion
The Examiner erred in finding that Fingleson and Morrison disclose
or suggest a breast self-examination apparatus comprising a garment having
at least one armpit examination pattern disposed thereon. We therefore
reverse the obviousness rejection of claims 7 and 11 and of claims 12-14 and
16, which depend from claim 11.
OBVIOUSNESS – FINGLESON AND RUSIN
The Examiner relies on Fingleson for disclosing “the invention
substantially as claimed,” but states that Fingleson “does not specifically
disclose the marker pens as claimed” (Ans. 9). The Examiner relies on
Rusin for disclosing “a breast examination device with a sheet material and a
marker pen . . . , in order to mark areas on the sheet 101 for further
examination or areas of further concern” (id.). The Examiner concludes that
it would have been obvious “to modify the garment of Fing[le]son to include
[a] marking pen to mark areas on the garment over the sites on the wearer
where further examination or areas of interest are on the wearer” (id.).
With respect to claims 9, 10, and 29, Appellants argue that “Rusin
fails to remedy the deficiencies of Fingleson et al., i.e. the failure of
Fingleson et al. to teach armpit areas examination from outside the garment”
(App. Br. 11).
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With respect to claim 19, Appellants argue that Fingleson and Rusin
fail to teach a form-fitting t-shirt (id. at 11-12).
With respect to claims 20 and 21, Appellants argue that Fingleson and
Rusin “further fail to teach the thin material or the low coefficient of friction
for facilitating movement of the user’s hand and fingers over an examination
pattern” (id. at 12).
Issues
Did the Examiner err in finding that Fingleson and Rusin teach or
suggest: (1) a garment including armpit areas, as required by claim 9;
(2) examining and palpating the breast from the outside of a garment via
guiding at least one finger over an examination pattern, as required by
claim 29; (3) a form-fitting t-shirt, as required by claim 19; (4) a t-shirt
fabricated from a thin material, as required by claim 20; and (5) a t-shirt
comprising a low-coefficient of friction, as required by claim 21?
Findings of Fact
13. The Specification states that the “garment 20 is preferably
manufactured in a variety of tight or form-fitting sizes” (Spec. 13: 14-15).
14. The term “form-fitting” is defined as “conforming to the outline
of the body : fitting snugly.” Merriam-Webster Online Dictionary,
, Oct. 1, 2007 (of
record).
15. The term “shirt” is defined as “a garment for the upper part of
the body.” Merriam-Webster Online Dictionary, , Nov. 25, 2009.
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16. The term “T-shirt” is defined as “a collarless short-sleeved or
sleeveless usually cotton undershirt” or “an outer shirt of similar design.”
Merriam-Webster Online Dictionary, , Nov. 25, 2009.
17. Fingleson discloses that its garment “is preferably
manufactured of a soft, flexible woven fabric 18 which is machine washable,
but . . . can also be made of a plastic or paper material which may or may not
be disposable” (Fingleson, col. 3, ll. 1-4).
18. Rusin discloses “an examination device which can be used to
facilitate physical examination of the breast,” including “a drape which can
be applied to the body,” the drape having “a smooth ‘reduced friction’
surface on one side and a complimentary surface that clings to exposed skin”
(Rusin, col. 2, ll. 13-20).
19. Rusin also discloses that the device “may also include a
marker 150 attachable to the device 101 for identification of a location of
interest on the portion of the human body under examination” (id. at col. 3,
ll. 24-28).
20. In addition, Rusin discloses:
[T]he examiner (e.g. a physician conducting a tactile breast
examination on a patient or a patient conducting self breast
examination) places a device 101 over the portion of the human
body, such as a breast, for examination. Next the examiner then
slides the examining hand across the top surface 110 of the
device 101. . . .
When a lump of interest is found on the patient’s body it is
identified through tactile examination, and the examiner may
mark the point of interest on the device 101 with marker 150.
(Id. at col. 3, ll. 39-52.)
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Principles of Law
Obviousness analysis “need not seek out precise teachings directed to
the specific subject matter of the challenged claim.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). Instead, it proper to “take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” Id. at 421.
“[T]erms [that] merely set forth the intended use for, or a property
inherent in, an otherwise old composition . . . do not differentiate the
claimed composition from those known to the prior art.” In re Pearson, 494
F.2d 1399, 1403 (CCPA 1974).
Analysis
Claim 19 recites “a form-fitting t-shirt.” We agree with Appellants
that the term “form-fitting” requires that the t-shirt “conform[] to the outline
of the body : fit[] snugly” (FF 14; App. Br. 7, fn. 1). However, as pointed
out by the Examiner, the “form-fitting function would depend greatly on the
size of the wearer and not just on the type of material used to construct the
garment” (Ans. 10). Thus, we interpret claim 19 to require a t-shirt that is
capable, on a particular wearer, of being form-fitting.
The term “t-shirt” is defined as “a collarless short-sleeved or
sleeveless usually cotton undershirt” or “an outer shirt of similar design”
(FF 16). In addition, the term “shirt” is defined as “a garment for the upper
part of the body” (FF 15). Therefore, giving these terms their broadest
reasonable interpretation, we interpret a t-shirt to include a collarless,
sleeveless, garment for the upper part of the body.
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Fingleson discloses a collarless, sleeveless, upper body garment (FF 5
& 7). Appellants have not adequately shown why this garment would not be
considered a t-shirt, nor have they adequately explained why this garment is
not capable of being worn such that it is form-fitting.
With regard to claims 20 and 21, Fingleson discloses that its garment
“is preferably manufactured of a soft, flexible woven fabric 18 which is
machine washable, but . . . can also be made of a plastic or paper material
which may or may not be disposable” (FF 17). We agree with Appellants
that the Examiner has not pointed to specific teachings indicating that
Fingleson’s garment is fabricated from a thin material or that it comprises a
low-coefficient of friction to facilitate hand and finger movement over an
examination pattern. However, given the broad disclosure in Fingleson of
woven fabric, as well as plastic and paper, we agree with the Examiner that
it would have been obvious to fabricate Fingleson’s garment from a thin
material and such that it comprises a low-coefficient of friction.
With regard to claim 9, which depends from claim 1, the Examiner
has not set forth a prima facie case that Fingleson discloses a garment
comprising armpit areas for the reasons discussed above. In addition, the
Examiner has not set forth a prima facie case that such a garment would
have been obvious in view of Rusin.
With regard to claim 29, which depends from claim 28, the Examiner
has not set forth a prima facie case that Fingleson discloses examining and
palpating the breast from the outside of a garment for the reasons discussed
above. In addition, the Examiner has not set forth a prima facie case that
this step would have been obvious in view of Rusin. In this regard, we note
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that Rusin discloses that “the examiner . . . slides the examining hand across
the top surface 110 of the device 101” (FF 20). However, the Examiner only
relies on Rusin for the marker element (Ans. 17).
Conclusion
Appellants have not shown that the Examiner erred in finding that
Fingleson and Rusin teach or suggest a form-fitting t-shirt. We therefore
affirm the obviousness rejection of claim 19. Claims 22, 23, and 25-27 have
not been argued separately and therefore fall with claim 19. 37 C.F.R.
§ 41.37(c)(1)(vii).
Additionally, Appellants have not shown that the Examiner erred in
finding that Fingleson and Rusin teach or suggest a t-shirt fabricated from a
thin material or a t-shirt comprising a low-coefficient of friction. We
therefore affirm the obviousness rejection of claims 20 and 21.
The Examiner did, however, err in finding that Fingleson and Rusin
teach or suggest a garment including armpit areas and examining and
palpating the breast from the outside of a garment via guiding at least one
finger over an examination pattern. We therefore reverse the obviousness
rejection of claims 9 and 29 and of claim 10, which depends from claim 9.
OBVIOUSNESS – FINGLESON, MORRISON, AND RUSIN
Claims 17 and 18 depend from claim 11. As discussed above, the
Examiner erred in finding that Fingleson and Morrison disclose or suggest a
breast self-examination apparatus comprising a garment having at least one
armpit examination pattern disposed thereon. In addition, the Examiner has
not set forth a prima facie case that Rusin overcomes this deficiency. We
therefore reverse the obviousness rejection of claims 17 and 18.
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SUMMARY
We affirm the obviousness rejection of claims 19-23 and 25-27.
However, we reverse the anticipation rejection of claims 1-5, 8, and 28 and
the obviousness rejections of claims 7, 9-14, 16-18, and 29.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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