Ex Parte Westall

Patent Trial and Appeal Board

Feb 28, 2013

10941798 (P.T.A.B. Feb. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CAROLYN DIANE WESTALL
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Appeal 2010-006633
Application 10/941,798
Technology Center 3700
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Before STEVEN D. A. McCARTHY, ANNETTE R. REIMERS, and
CARL M. DeFRANCO, Administrative Patent Judges.

DeFRANCO, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 15-28. Br. 8. Claims 1-14 have been canceled. Id.
at 2; see also 16, Br., Clms. App’x. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b). We AFFIRM.

THE CLAIMED INVENTION
The claimed invention relates to articles of clothing “for use in
covering and/or supporting women’s breasts” and “a method of providing
covering and/or support to the breasts of a woman.” Spec. 1 (ll. 4-6) and 5
(ll. 1-3). Claim 15 is illustrative of the claims on appeal and recites:
15. A breast support comprising:

a. a first major side defining a cup-like inner concave
surface adapted for placing into a supporting position in a
generally shape-conforming orientation against at least a
lower portion of the breast; and

b. a second major side defining an outer convex
surface adapted for engaging a relatively close-fitting
outer garment being worn by a user to maintain the
support in its supporting position against the breast upon
manual insertion of the breast support between the breast
and the relatively close-fitting outer garment.

REFERENCES RELIED ON BY THE EXAMINER
Abramson US 2,495,307 Jan. 24, 1950
Rosenthal US 2,567,732 Sep. 11, 1951

THE REJECTIONS ON APPEAL
1. Claims 15-22, 25, 26 and 28 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Abramson. Ans. 3.
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2. Claims 23 and 24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Abramson and Rosenthal. Id. at 4.
3. Claim 27 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Abramson. Id. at 5.

ANALYSIS
The rejection of claims 15-22 and 25
as being anticipated by Abramson
Appellant argues claims 15-22 together as a group. Br. 8. We select
claim 15 for review, with claims 16-22 standing or falling with claim 15.
See 37 C.F.R. § 41.37(c)(1)(vii)(2011). Claim 25 is argued separately;
however, because Appellant presents the same arguments for claim 25 as for
claims 15-22, it will likewise stand or fall with claim 15. See Br. 12-13.
Independent claim 15 recites, inter alia, that the breast support
comprises “a cup-like inner concave surface adapted for placing . . . against
at least a lower portion of the breast” and “an outer convex surface adapted
for engaging a relatively close-fitting outer garment.” Br., Clms. App’x.
The Examiner relied on Abramson as disclosing a breast shield that
includes all the structural limitations of claim 15, namely, “Abramson
discloses a breast support (C of figure 6) comprising a first major inner
concave surface side and a second outer convex surface side.” Ans. 3; see
also 5-6. The Examiner also noted Abramson’s disclosure that the shield
gives the breast proper support and is retained in place by a brassiere while
being worn. Id. at 3 (citing Abramson, col. 3, ll. 14-26). Addressing the
claim language “adapted for engaging a relatively close-fitting outer
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garment,” the Examiner considered it to be “just intended use [that] does not
further limit the structure” of the claimed invention. Id. at 5-6.
Specifically, the Examiner found that the outer convex surface of
Abramson’s shield is “worn within a brassiere” and thus “engageable to a
relatively close-fitting outer garment.” Ans. 6. The Examiner explained that
“brassieres are wearable as desired as either an inner garment or an outer
garment such as in use as a swimsuit, exercise sports bra or as a belly
dancing brassiere.” Id. at 6-7; see also id. at 6 (“[A] brassiere is also
considered to be an outer garment as desired by a wearer such as when worn
as a sports brassiere as an outer exposed layer, as a brassiere worn in
dancing and in belly dancing or in exercise like yoga.”). The Examiner
further found that the brassiere of Abramson falls within the breadth of the
claim 15 because it is a close-fitting outer garment relative to the inner
support (i.e., shield). See id. (explaining that “[t]he outer surface of the
Abramson support functions as claimed by Appellant in that it is engage able
[sic] with any garment worn over it whether it is an outer garment of a
brassiere that is worn as an inner garment or as an outer garment.”).
Appellant emphasizes that the outer convex surface “engaging an
outer garment” is the limitation that distinguishes the claimed invention over
the prior art. Br. 3. Specifically, Appellant argues that the shields of
Abramson do not engage an outer garment, but rather are “supported by a
brassiere, which is an undergarment that would not be confused with an
outer garment.” Br. 8. Because “throughout the Abramson patent, the
breast shields are held in place by an undergarment, namely a brassiere, and
not an outer garment,” Appellant asserts that Abramson cannot anticipate the
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claimed breast support that is “adapted for engaging a relatively close-fitting
outer garment.” Id. at 9.
We agree with the Examiner that the brassiere of Abramson may
indeed be worn as an outer garment. Appellant does not address, let alone
raise any substantive reason to question, the Examiner’s finding that
Abramson’s disclosure of a “brassiere” encompasses an outer garment such
as a sports bra, swimsuit top, or dancing bra. We are not persuaded by
Appellant’s conclusory assertions that a brassiere is only “an undergarment
that would not be confused with an outer garment.” Br. 8; see also 10, 13
and 14. To the contrary, modern-day women certainly do wear brassieres as
outer garments, be it for running, hiking, dancing or simply lounging. As
such, we find that Abramson teaches a breast support (shield) having a cup-
like inner concave surface and an outer convex surface that engages with a
close-fitting outer garment (brassiere) that is worn by a user to maintain the
support (shield) in a supporting position against the breast, as required by
claim 15. Accordingly, we sustain the Examiner’s rejection of claim 15, and
of claims 16-22 and 25 which fall with claim 15, as being anticipated by
Abramson.
The rejection of claims 23 and 24
as being obvious in view of Abramson and Rosenthal

Claims 23 and 24 depend from claim 15 and further recite that the
support is made of a specific type of material, “a flexible foam material”
(claim 23) or “polyurethane” (claim 24). Br., Clms. App’x. The Examiner
relied on Rosenthal for its disclosure of “a breast pad support that is
structured of a foam material.” Ans. 4. The Examiner further found that
“[s]uch polyurethane foam materials are well known and widely used as
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breast support [sic].” Id. With those findings in mind, the Examiner
explained the rationale for modifying Abramson in view of Rosenthal: “[t]he
Abramson support is formed of a plastic,” “[p]olyurethane is a known plastic
material,” and “[t]herefore, selecting the desired plastics material of
polyurethane, as disclosed by Rosenthal, to construct the Abramson support
thereof would have been an obvious modification.” Ans. 7.
The Examiner further relied on In re Leshin, 277 F.2d 197 (CCPA
1960), for the holding that it is within the general skill of a worker in the art
to select a known material on the basis of its suitability for its intended use
as a matter of obvious design choice. See id. at 5. The Examiner explained
that an ordinary artisan “would have had the skill and knowledge to select
the level of rigidity and flexibility of the support material to provide the
desired support and protection as desired.” Id. at 7. The Examiner added
that:
A more rigid material would provide more support than a foam
material and therefore one of ordinary skill would have had the
knowledge to select the foam material when desiring more
flexibility and soft support. If a more rigid support is desired
along with more protection from blows one would select the
more rigid material of Abramson such as in use while playing
more aggressive sports like soccer. A softer polyurethane
material would be selected for an activity such as the belly
dancing use. Therefore one would have had the skill and
knowledge to select the desired material for the end use desired.

Id. at 7-8.
Appellant asserts two reasons for distinguishing claims 23 and 24 over
the combination of Abramson and Rosenthal. First, Appellant restates the
same argument as previously made with respect to claim 15, maintaining
that neither Abramson’s shield nor Rosenthal’s pad engage “a relatively
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close-fitting outer garment.” Br. 9. For the reasons discussed supra, we are
not persuaded by this argument.
Appellant further contends that modifying the structure of Abramson
to include any desired foam material “would change the principal operation
of the Abramson breast shields if imposed thereon.” Br. 10. Appellant
reasons that Abramson’s shields must be “rigid” and “formed from hard
plastic in keeping with the principal operation,” that is “acting to protect the
breasts from injury as by being struck when in a sore and tender condition.”
Id. at 11. According to Appellant, the Examiner’s proposed modification of
Abramson’s shields from a rigid plastic to a flexible foam would amount to
an “improper” change of operation. Id. at 12.
Appellant’s argument is not persuasive because, as the Examiner
found, the proposed modification to substitute flexible polyurethane foam
for hard plastic does not change the principle operation of Abramson (i.e.,
protecting the breast), “but rather only provides the same principle at a lesser
degree such as . . . form [sic] a less aggressive blow.” Ans. 8. In other
words, according to the Examiner, the degree of protection may differ as a
result of modifying the Abramson shield from hard plastic to flexible foam,
but the principle of protecting the breast remains. Id.
Indeed, Abramson bears out the Examiner’s finding, identifying
several ways in which the shield serves to protect the breast. Specifically,
Abramson discloses that the shields are “to be worn underneath the clothing”
so as to (1) protect the breast “from injury as by being struck,” (2) maintain
the breast “in clean and sanitary condition” and prevent “possible infection,”
and (3) protect the woman’s breast “against any possible irritation from her
clothing.” Abramson, col. 2, ll. 31-53 & col. 3, ll. 21-40. We note that all
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of these objectives are fulfilled regardless of whether Abramson’s shield is
formed of flexible foam or a hard plastic material. As such, we agree with
the Examiner that, while arguably the degree of protection might change as a
result of modifying Abramson’s shield from hard plastic to flexible foam,
the principle purpose of protecting the breast from injury, irritation and
infection would remain unchanged. Hence, we are not persuaded by
Appellant’s contention that substituting foam for plastic in Abramson’s
shield would result in an improper change of operation. Accordingly, we
sustain the Examiner’s rejection of claims 23 and 24 under 35 U.S.C.
§ 103(a) as being obvious over Abramson in view of Rosenthal.

The rejection of method claims 26 and 28
as being anticipated by Abramson
Appellant argues claims 26 and 28 together as a group. Br. 13-14.
We select independent claim 26 for review, with dependent claim 28
standing or falling with claim 26. See 37 C.F.R. § 41.37(c)(1)(vii)(2011).
Claim 26 is a method claim. According to Appellant, it is directed to
a method of supporting a breast “entailing donning an outer garment,
inserting a breast support underneath the outer garment, and releasing the
breast support and allowing the outer garment to engage an outer surface of
the breast support.” Br. 14; see also 18-19, Clms. App’x. The Examiner
found that the method steps of claim 26 are “inherent to the use of the
Abramson device” and that, as previously found, the brassiere of Abramson
“is wearable as an inner or outer garment . . . as desired.” Ans. 9; see also 4
(“Abramson inherently discloses the method of donning a relatively close
fitting garment of a brassiere and inserting the support [shield] underneath
the garment.”).
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Appellant responds to the Examiner’s findings with the same
arguments that were raised with respect to claim 15. Br. 13-14. As
discussed supra, given that Abramson’s brassiere can be worn as an outer
garment (e.g., a sports bra, swimsuit top or dancing bra) with the shield then
being inserted underneath the brassiere, we agree with the Examiner that the
method steps of claim 26 are inherent to the use of Abramson’s shield.
Accordingly, we sustain the Examiner’s rejection of independent claim 26,
and of dependent claim 28 which falls with claim 26, as being anticipated by
Abramson.
The rejection of claim 27
as being obvious in view of Abramson
Claim 27 depends directly from claim 26 and further recites that the
outer garment be “strapless.” Br. 19, Clms. App’x. Appellant contends that
Abramson “makes no mention of a strapless outer garment.” Br. 15.
However, the Examiner found that strapless brassiere tops are “well known,”
for example a “strapless brassiere swimsuit top,” and that women wear
garments “with or without straps as desired.” Ans. 3, 5 and 9. Thus, the
Examiner concluded that “placing the support cup of Abramson under such a
strapless brassiere would have been an obvious modification such as for use
in any type of dancing.” Id. at 9. We agree with the Examiner that the
placement of the Abramson shield underneath a brassiere or other close
fitting garment, be it with or without straps, is an obvious modification. We
are not persuaded by Appellant’s arguments to the contrary, and
accordingly, we sustain the Examiner’s rejection of claim 27 as being
obvious over Abramson.

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DECISION
We AFFIRM the Examiner’s decision rejecting claims 15-28.
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

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