Ex Parte Valentin

Patent Trial and Appeal Board

Mar 26, 2013

10937907 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TARA J. VALENTIN
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Appeal 2011-001924
Application 10/937,907
Technology Center 3700
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Before EDWARD A. BROWN, MITCHELL G. WEATHERLY, and
CARL M. DEFRANCO, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/937,907

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STATEMENT OF THE CASE
Tara J. Valentin (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1-15, 33, 34, and 36-50. App. Br.
2. Claims 35 and 51-53 are objected to, claims 16-28, 31, and 32 are
allowed (Id.; Ans. 3), and claims 29 and 30 are cancelled (Amendment dated
July 20, 2005). We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claims 1, 33, and 37 are independent. Claim 1, reproduced below, is
illustrative.
1. A backless and strapless bra comprising:
at least one cup member for supporting a
front surface of a wearer's breast; and
at least one support member for supporting
an underside of a wearer's breast,
wherein a surface of each cup member and
each support member are adapted to be directly
secured to a wearer's breast and each cup member
is unattached to any support member and any other
cup member.

REJECTIONS
Claims 1-7, 9-11, 14, 15, 33, 36-44, and 48-50 are rejected under 35
U.S.C. § 102(b) as anticipated by Hattori (US 4,553,550; iss. Nov. 19,
1985).
Claims 8, 13, 45, and 47 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hattori and Noble (US 5,755,611; iss. May 26, 1998).
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Claims 12 and 46 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hattori and Valentin (US 6,383,055 B2; iss. May 7,
2002).
Claim 34 is rejected 35 U.S.C. § 103(a) as unpatentable over Hattori
and Furuno (US 6,200,195 B1; iss. Mar. 13, 2001).

ANALYSIS
Rejection of claims 1-7, 9-11, 14, 15, 33, 36-44, and 48-50
Claims 1-7, 9-11, 14, 15, 37-44, and 48-50
Appellant argues claims 1 and 37 as a group and does not provide any
separate argument for dependent claims 2-7, 9-11, 14, 15, 38-44, and 48-50.
App. Br. 4-6.
The Examiner found Hattori discloses a backless and strapless
brassiere including at least one cup 50 and at least one support member 55.
Ans. 5. The Examiner also found that the claim language merely requires
that the cup 50 and support member 55 be capable of being used together,
and that nothing precludes them from being worn together. Id.
As to claim 1, Appellant contends that Hattori does not disclose a
backless and strapless bra comprising “at least one cup member for
supporting a front surface of a wearer's breast” and “at least one support
member for supporting an underside of a wearer's breast,” that is, the use of
a cup member in combination with a support member. App. Br. 4.
Appellant contends that Hattori’s breast coverings 50 and 55 are disclosed as
alternative embodiments. Id. at 4-5 (citing Hattori, col. 11, l. 44 – col. 12, l.
33; figs. 31, 34).
Appellant also contends that placement of breast covering 55 and its
retainers would interfere with placement of breast covering 50 and its
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retainers, or vice versa (id. at 5), and that the attachment means of the breast
coverings preclude a wearer from applying more than one breast covering
(id. at 6). Appellant contends that Figures 31, 34, and 37 of Hattori show the
alternative embodiments of the breast covering 50, 55, and 56, respectively,
“as separately applied to the same areas of a wearer’s breast.” App. Br. 5
(emphasis added). Appellant further contends that “this disclosure of only
the separate application of alternative embodiments is evidence of the
inability to concurrently apply more than one alternative embodiment of the
Hattori breast covering, as described above.” Id. These contentions are not
persuasive.
While we agree with Appellant that the Examiner did not make a
finding supported by a preponderance of the evidence that Hattori explicitly
discloses the use of breast coverings 50 and 55 in combination, we note that
Appellant has not identified any disclosure in Hattori that would preclude
the breast coverings from being used together. Reply Br. 2-3. Specifically,
the Examiner found that Hattori discloses a kit with different breast
coverings. Ans. 7-8 (citing Hattori, col. 13, ll. 56-65). As discussed by
Appellant, the Examiner appears to be referring to the description at Hattori
column 12, lines 56-60, which states, “each of the breast coverings 50, 55
and 56 in the above embodiments is contained in a package 36 together with
a number of retainers 3 and test peices 35, as shown in FIG. 41 and put on
the market.” Figure 41 shows two breast coverings 50, but shows no breast
covering 55 or 56. We agree with Appellant that this description, when read
in view of Figure 41, does not clearly disclose that the package 36 contains
each of the breast coverings 50, 55, and 56.
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However, the absence of a disclosure relating to function does not
defeat a finding of anticipation. See In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use
for an old product does not make a claim to that old product patentable.”).
Appellant has not identified any disclosure in Hattori that supports the
contention that the breast coverings 50, 55 are unable to be used together.
The Examiner found that breast covering 55 provides support under a
wearer’s breast, which is different from “the all nipple cover 50.” Ans. 8.
Regarding breast covering 55, Hattori discloses
FIG[S]. 33, 34 and 35 show, as an
embodiment of the invention, a breast covering 55
adapted to be attached below the breast to raise the
latter. The breast covering 55 is substantially
semicircular or crescent-shaped . . . . In use, as
shown in FIG. 34, retainers 3 are stuck below the
breast 12 at least on both sides thereof, and with
the breast raised, the breast covering 55 is applied
to cover the lower half of the breast 12, with the
fastening means engaged with the mating fastening
means so as to hold the breast 12 in the raised
position (i.e., in good shape) by the breast covering
55.
See Hattori, col. 12, ll. 22-33 (emphasis added); see also Ans. 9.
Hattori further discloses that “[t]he breast covering 50 shown in FIGS.
28 and 30 has such a size as to cover only the nipple and the region
therearound and is used as a nipple covering.” See Hattori, col. 11, ll. 65-67
(emphasis added); see also Ans. 9. Hattori also discloses that “as shown in
FIG. 31, a plurality of small retainers 3 may be applied at spaced intervals or
an annular retainer, in whole or divided into parts, may be stuck around the
nipple 53.” See Hattori, col. 12, ll. 15-18. The Examiner correctly found
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that Hattori discloses using the breast coverings 50, 55 to cover and provide
support for different areas of a wearer’s breasts.
Appellant contends that the Examiner has misinterpreted Figure 31 of
Hattori, and states, “if one looks at the location of breast covering 55 in FIG.
34 and compares it to the locations of breast covering 50 in FIG. 31 or breast
covering 56 in FIG. 37, it is clear that breast covering 55 would be entirely
covered by breast covering 50.” Reply Br. 3 (emphasis added). Firstly, the
Examiner correctly noted that Hattori’s figures are not disclosed to be drawn
to scale. Ans. 9. Secondly, Hattori discloses that breast covering 50 can
cover only the nipple and surrounding region, and the breast covering 55 the
lower half of the breast. Appellant has not provided any persuasive
argument why the breast coverings 50, 55 must be applied to the same areas
of a wearer’s breast, or why breast covering 55 would be entirely covered by
breast covering 50. In addition, claim 1 does not preclude any overlap of the
cup member and support member. Hattori discloses that the retainers 3 for
breast covering 50 may be stuck around the nipple, and the retainers 3 for
breast covering 55 below the breast. Appellant has also not provided any
persuasive argument why these retainers 3 would interfere with each other if
breast coverings 50, 55 were worn together. See Reply Br. 3-4.
Appellant also contends that Hattori does not disclose that “a surface
of each cup member and each support member are adapted to be directly
secured to a wearer's breast.” App. Br. 5-6. Appellant contends that Hattori
discloses that breast coverings 50, 55 are secured to the wearer’s breast
using a fastening means 2 on its back side and a retainer 3, which is secured
to the wearer’s breast, to which the breast covering 50, 55 is then secured.
Id. at 6. In response, the Examiner stated that “[t]he fastening means 2 and
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retainer 3 secure the covering directly to the wearer's breast as broadly
claimed.” Ans. 9.
In response, Appellant states:
The fact that the Examiner considers the Hattori
attachment means, which includes the attachment
of a retainer to a breast and the subsequent
attachment of a breast covering to the retainer (and
not to the breast itself) to comprise “direct”
attachment of the breast covering to the breast,
makes clear that the Examiner has failed to give
the term “directly” its generally-accepted meaning
of “with nothing or no one in between.”
Reply Br. 5. These contentions are not persuasive.
Claim 1 recites the transitional term “comprising.” Claim 1 does not
recite any limitation that precludes Hattori’s retainers 3 being considered as
part of the breast covering 50 or 55. The retainers 3 include fastening means
4, which mate with fastening means 2 provided on breast coverings 50, 55,
and also a pressure sensitive adhesive agent layer 5. See Hattori, col. 11, ll.
48-56; col. 12, ll. 27-33. The breast covering 50 or 55 comprising a retainer
3 would comprise the adhesive agent layer 5. 1 The breast coverings 50, 55
are secured to a wearer’s breast with the adhesive agent layer 5, which
contacts the wearer’s skin “with nothing . . . in between” the adhesive agent
layer 5 and the wearer’s breast. Accordingly, Appellant has not apprised us
of any error in the Examiner’s finding that Hattori’s “fastening means 2 and
retainer 3 secure the covering directly to the wearer's breast as broadly

1 We note that claim 9, which depends from claim 1, recites that the bra
“further compris[es] an adhesive for securing at least one of the cup member
and the support member to a wearer’s breast.”
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claimed.” Hence, we sustain the rejection of claim 1, and its dependent
claims 2-7, 9-11, 14, and 15.
Claim 37 recites similar limitations as claim 1. Appellant’s
contentions for claim 37 are substantially the same as those for claim 1.
Accordingly, we also sustain the rejection of claim 37 and its dependent
claims 38-44 and 48-50.
Claims 33 and 36
Claim 33 recites “wherein the at least one cup member and the at least
one support member comprise sufficient adhesion to secure the cup member
and the support member to a wearer's breast.” Emphasis added. Appellant
contends that Hattori fails to teach every feature of claim 33 based on the
same arguments made with respect to claims 1 and 37, as discussed supra.
App. Br. 6. This contention is not persuasive as we find no deficiency in the
Examiner’s rejection of claims 1 and 37.
Appellant also contends that “the breast coverings of Hattori provide
no adhesion themselves and are not secured to a wearer's breast. Rather, the
Hattori breast coverings are attached to a retainer, which is first secured to a
wearer's breast.” Id. at 7 (citing Hattori, col. 11, ll. 48-56, col. 12, ll. 27-
33). These contentions are not persuasive.
Claim 33 recites the transitional term “comprising,” and does not
recite any limitation that precludes Hattori’s retainers 3 being considered as
part of the breast covering 50 or 55. Hattori’s adhesive agent layer 5
provides sufficient adhesion to secure the breast coverings 50, 55 to a
wearer’s breast. Accordingly, we sustain the rejection of claim 33 and
dependent claim 36.

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Rejection of claims 8, 13, 45, and 47
Appellant relies on the dependency of claims 8 and 13 from claim 1,
and claims 45 and 47 from claim 37, for patentability. App. Br. 7. As we
find no deficiency in the rejection of claims 1 and 37, as discussed supra, we
sustain the rejection of claims 8, 13, 45, and 47.

Rejection of claims 12 and 46
Appellant relies on the dependency of claim 12 from claim 1, and
claim 46 from claim 37, for patentability. App. Br. 7-8. Hence, we sustain
the rejection of claims 12 and 46.

Rejection of claim 34
Appellant relies on the dependency of claim 34 from claim 33 for
patentability. App. Br. 8. Hence, we sustain the rejection of claim 34.

DECISION
The Examiner's decision rejecting claims 1-15, 33, 34, and 36-50 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).

AFFIRMED

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