UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ZACHARY BAIANY
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Appeal 2011-004255
Application 11/851,089
Technology Center 3700
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Before EDWARD A. BROWN, ANNETTE R. REIMERS, and
RICHARD E. RICE, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
Zachary Baiany ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1-7 and 10-18. An oral hearing was
conducted on February 11, 2013. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE CLAIMED SUBJECT MATTER
Claims 1, 14, and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the appealed subject matter:
1. A men's swimsuit comprising:
an outer shell having an outer-shell
waistband; and
a form-fitting inner liner defining an interior
lumen, the inner liner having:
an inner-liner waistband attached to
the outer-shell waistband; and
a pair of inner-liner leg sleeves
extending from the inner-liner waistband,
each inner-liner leg sleeve terminating
in a hem configured to exert a radially
compressive force urging the hem against a
thigh passing therethrough;
whereby, the hems of the inner-liner leg
sleeves, in cooperation with the inner-liner
waistband, prevent particulate matter from
reaching the interior lumen of the inner liner
wherein the inner liner comprises a form-
fitting material.
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THE REJECTIONS
Appellant requests review of the following rejections:
1. claims 1-3, 5, 6, 10, and 12-16 under 35 U.S.C. § 102(b) as
anticipated by Cohen '924 (US 2,983,924; iss. May 16, 1961);
2. claims 4, 11, 17, and 18 under 35 U.S.C. § 103(a) as
unpatentable over Cohen '924 and Cohen '589 (US 3,333,589; iss. Aug. 1,
1967); and
3. claim 7 under 35 U.S.C. § 103(a) as unpatentable over Cohen
'924 and Bayer (US 7,251,840 B2; iss. Aug. 7, 2007).
ANALYSIS
Rejection of claims 1-3, 5, 6, 10, and 12-16 - Cohen '924
Claims 1-3, 5, 6, and 13-16
Appellant argues claims 1, 14, and 15 together as a group, and does
not provide any separate argument for dependent claims 2, 3, 5, 6, and 13.
App. Br. 3-7. We select claim 1 as representative of the grouping, with
claims 2, 3, 5, 6, and 13-16 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
Claim 1 recites a men's swimsuit comprising "a form-fitting inner
liner." The Examiner found that Cohen '924 discloses a men's swimsuit
comprising an inner liner 42 defining an interior lumen. Ans. 4. The
Examiner determined that Cohen 924's inner liner is form fitting. Id. at 7.
Appellant contends that Cohen '924 discloses semi-form fitting swim
trunks including an inner liner with front and rear panels that only stretch
side to side, and a crotch portion that stretches only front to rear. App. Br.
3-4 (citing Cohen, col. 2, ll. 29-33, 52-55). Appellant contends that because
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Cohen '924's front and rear panels stretch only in the direction of arrow 46,
this is why Cohen '924 calls the trunks "semi form fitting." Id. at 4.
Appellant refers to the Declaration by John M. Airasian
("Declaration"). App. Br. 5-6. Appellant contends that Mr. Airasian "sets
forth what one of ordinary skill in the art of clothing manufacture would
regard as form fitting." Id. at 5. In the Declaration, Mr. Airasian states:
In reading US Patent 924 Cohen, it is well
established that to conform to a two dimensional
surface as defined above, a garment must be able
to stretch in two directions. The garment disclosed
by Cohen stretching along one direction, hereafter
referred to as the elastic direction, does not stretch
along a second direction, referred to herein as the
inelastic direction. For the foregoing reasons, it is
my opinion that a garment incapable of stretching
in two directions cannot reasonably be regarded
as a form fitting garment.
See Declaration 1, ll. 24-29 (emphasis added).
Appellant correctly contends that Cohen '924 discloses that its trunk
provides a "semi-form fit." See Cohen '924, col. 2, ll. 29-32. We agree with
the Examiner, however, that Cohen '924 does not explicitly describe the
panty 42 as "semi-form fitting." Ans. 7-8.
Regarding claim construction, the Patent and Trademark Office gives
claim limitations their broadest reasonable interpretation consistent with the
specification, reading the claim language as it would be interpreted by one of
ordinary skill in the art. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). Appellant does not direct us to a specific
definition of "form-fitting" in the Specification, or contend that the
Specification contains any disclosure that precludes the Examiner's
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construction. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994); In re
Bigio, 381 F.3d 1320, 1325 (Fed Cir. 2004).
If the Specification does not assign or suggest a specific definition to a
claim term, it is appropriate to consult a general dictionary definition of the
term for guidance in determining its ordinary and customary meaning to one
having ordinary skill in the art. See Comaper Corp. v. Antec., Inc., 596 F.3d
1343, 1348 (Fed. Cir. 2010). An ordinary meaning of "form-fitting" is
"conforming to the outline of the body: fitting snugly
."
Merriam-Webster's Collegiate Dictionary 492 (11th ed. 2003). Similar to
this ordinary meaning, the Examiner stated that "the term 'form fitting'
requires that a garment conform to the outline of the body." Ans. 7. The
Examiner also stated that "[t]he 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." Id.
Appellant contends that the Declaration provides "art specific
evidence" concerning the meaning of "form fitting," and that it is contrary to
Phillips for the Examiner to attempt to rely on a general purpose dictionary
definition of this term. App. Br. 7 (citing Phillips v. AWH Corp., 415 F.3d
1303, 1321 (Fed. Cir. 2005)). In the Declaration, Mr. Airasian states,
however, that it is his opinion that it is unreasonable to regard a garment that
cannot stretch in two directions as a "form fitting garment." Decl. 1, ll. 28-
29; Ans. 8. Mr. Airasian does not state that the term "form fitting" has this
same particular meaning in the pertinent field. See Ans. 8. We find that Mr.
Airasian's statement noted above effectively provides his own construction
of the claim term, but does not establish an art-specific definition of the
term. As such, Appellant's contention that the Examiner improperly relied
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on a general purpose dictionary definition of "form fitting," and not Mr.
Airasian's "art specific evidence," is not persuasive.
As noted above, Mr. Airasian also states in the Declaration that "it is
well established that to conform to a two dimensional surface as defined
above, a garment must be able to stretch in two directions." See Declaration
1, ll. 24-25. Appellant contends that this statement is a fact, not an opinion.
Reply Br. 5. However, this statement does not persuade us of error in the
Examiner's finding that the liner 42 can stretch in two directions. See Ans.
7.
Cohen '924 describes the material used to make panty 42 as
stretchable. We agree with the Examiner that the material would stretch to
fit the wearer of the trunk. See Ans. 7. Cohen '924 states that "[t]he
construction of the panty is such that it is adjustable along with the trunks
and gives proper support for all sizes from small through large." See Cohen
'924, col. 2, ll. 48-51 (emphasis added). Appellant contends that this
statement implies "that to the extent the trunks are semi-form-fitting, so too
is the inner liner." Reply Br. 2. Figure 1 of Cohen '924 shows that the panty
42 is smaller than the swim trunk formed by the panels 10, 12. In order for
the panty 42 to provide "proper support" to different-sized wearers, the
panty would need to stretch sufficiently to conform, to at least some extent,
to the outline of the wearer's body, and thus satisfies the "form-fitting"
limitation as properly construed.
In view of the above, we sustain the rejection of claim 1, and also the
rejection of dependent claims 2, 3, 5, 6, and 13-16.
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Claim 10
Claim 10 depends from claim 1 and recites that "the inner liner
comprises elastomeric fibers." The Examiner found that "[i]t is well known
in the art that nylon is a form-fitting material that has elastic recovery and
can dry quickly. The inner-liner [of Cohen '924] is therefore considered to
comprise elastomeric fibers." Ans. 5. The Examiner also found that "[i]n
order for a material to stretch it requires elastic properties. The nylon used
to make the inner liner of Cohen has elastic properties since the liner
stretches and is therefore considered to comprise elastomeric fibers." Id. at
9.
Appellant contends that the Examiner did not provide any factual
evidence to support the assertion that nylon fibers are elastomeric fibers.
App. Br. 8. Appellant also contends that because a garment stretches does
not mean that garment is made of an elastomeric material. Reply Br. 6.
These contentions are persuasive.
Appellant's Specification states that "[t]he materials used to construct
parts of the swimsuit 100, and in particular the inner liner 106, may include
elastomeric fibers or other such natural or synthetic materials that, at room
temperature, can be expanded or stretched to about twice or more of their
original length." Spec. 4, ll. 1-4 (emphasis added). A technical dictionary
definition of "elastomer" is "a polymeric material, such as a synthetic rubber
or plastic, which at room temperature can be stretched under low stress to at
least twice its original length and, upon immediate release of the stress, will
return with force to its approximate original length." See McGRAW-HILL
DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 648 (5th ed.
1994) (emphasis added). This dictionary definition of elastomer is
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consistent with the description of the elastic properties of the elastomeric
fibers in the Specification.
We disagree with the Examiner's reasoning that Cohen '924's nylon
inner liner can be considered to comprise elastomeric fibers. Cohen '924
does not disclose that the nylon material has sufficient elasticity such that it
can be expanded or stretched to about twice or more of its original length.
The Examiner has not provided any other evidence that nylon is an
elastomer. Accordingly, the Examiner did not make a finding supported by
a preponderance of the evidence that Cohen '924's inner liner comprises
elastomeric fibers. We do not sustain the rejection of claim 10.
Claim 12
Claim 12 depends from claim 1 and recites that "the inner liner
comprises a scrotal pouch." The Examiner found that the crotch portion of
Cohen '924's inner liner can be considered a scrotal pouch. Ans. 5. The
Examiner reasoned that "[t]he crotch portion 48 of Cohen when fitted to the
body will form a pouch type structure around the genitals of the wearer
thereby retaining the genitals in a defined and set position/location.
Therefore the crotch portion is considered a scrotal pouch." Id. at 10.
Appellant disputes the Examiner's finding that Cohen '924's inner liner
comprises a "scrotal pouch," as claimed. App. Br. 8-9. Appellant contends
that the front panel of Cohen '924's inner liner is merely a flat panel that
overlays the scrotal region, which does not make it a "scrotal pouch." Reply
Br. 7. These contentions are persuasive.
Cohen '924 describes "the crotch portion 48 joining said front and rear
portions." See Cohen '924, col. 2, ll. 55-59. Figure 3 of Cohen '924 shows
the outer surface of the crotch portion 48, and does not depict any structure
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that resembles a "pouch." The Examiner did not identify any disclosure in
Cohen '924 that supports the finding that the crotch portion 48 will form a
"pouch type structure" around the genitals of a wearer of the swim trunks.
As such, the Examiner's finding that Cohen '924's crotch portion 48 is a
"scrotal pouch," as claimed, is not supported by a preponderance of the
evidence. We do not sustain the rejection of claim 12.
Rejection of claims 4, 11, 17, and 18 – Cohen '924 and Cohen '589
Claims 4, 11, and 17
Appellant indicates that claims 4, 11, and 17 stand or fall with claim 1
and does not provide any argument for these dependent claims. App. Br. 9.
Accordingly, we also sustain the rejection of claims 4, 11, and 17.
Claim 18
Claim 18 depends from claim 1 and recites that "the inner liner
comprises a long chain synthetic polymer having at least 85% segmented
polyurethane." The Examiner found that Cohen '589 discloses an inner liner
made of nylon and spandex. Ans. 5. The Examiner also found that
Appellant's Specification states, "[f]or example, elastomeric fibers may
include spandex, polyester, LYCRA, or any manufactured fiber in which the
fiber forming substance is a long chain synthetic polymer comprised of, for
instance, at least 85% of a segmented polyurethane." Id. at 6 (citing Spec. 4,
ll. 1-7). The Examiner determined that therefore Cohen '589's inner liner
comprises a long chain synthetic polymer having at least 85% segmented
polyurethane. Id.
Appellant contends that the Specification lists four different
alternatives, and "any manufactured fiber . . . at least 85% of a segmented
polyurethane," is a fourth alternative to spandex, polyester, and LYCRA®
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and not a restatement of a property inherent in these three alternatives. App.
Br. 9. We agree with Appellant that the Specification does not explicitly
describe spandex, polyester, and LYCRA® as "a long chain synthetic
polymer having at least 85% segmented polyurethane." The Examiner did
not provide any additional evidence to support this finding. Accordingly,
because we find that the Examiner's rejection of claim 18 is based on an
insufficient finding, we do not sustain the rejection.
Rejection of claim 7 – Cohen '924 and Bayer
Claim 7 depends from claim 1 and recites that "the hems comprise a
drawstring that, when tightened, exerts a radially compressive force." The
Examiner found that Cohen '924 does not disclose a hem around the legs
that comprises a drawstring. Ans. 6. The Examiner found that Bayer
discloses pants having a bottom hem comprising a drawstring 410 around
each leg portion. Id. (citing Bayer, col. 6, ll. 10-20; see also Fig. 9). The
Examiner concluded that it would have been obvious to use Bayer's
drawstring hem to modify the hem of Cohen '924 "in order to provide a tight
seal against the leg of the wearer, preventing particulate matter from
entering." Ans. 6.
Appellant contends that Cohen '924 does not mention that the entry of
particulate matter is a problem. App. Br. 10. Appellant also contends that
the Examiner did not provide any articulated reasoning with a rational
underpinning to support the obviousness of the modification of Cohen '924.
Reply Br. 8. Appellant contends that Cohen '924's hem already provides a
tight seal, and one skilled in the art would have recognized that the elastic
hem would have been easier for a wearer. Id. Appellant also contends that a
drawstring is not equivalent to an elastic hem because a drawstring provides
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an unexpected advantage. Id. Particularly, Appellant contends that a
drawstring, unlike an elastic hem, can be loosened and tightened at will,
allowing trapped particulates to fall out, and water to enter to cleanse the
interior of the swimsuit. Id. at 9. These contentions are not persuasive.
Bayer states that "the drawstrings 410 permit a user to draw the
bottom of each leg 404, 405 tightly about the leg and prevent the intrusion of
cold air, water or other similarly unwanted environmental hindrance or
annoyance." See Bayer, col. 6, ll. 15-18 (emphasis added). One of ordinary
skill in the art would have recognized particulate matter as such an
"environmental hindrance or annoyance" for the wearer of Bayer's garment.
Appellant has not provided any persuasive argument as to why Bayer's
drawstrings 410 would lack the capability to "prevent particulate matter
from reaching the interior lumen of the inner liner" when substituted in the
Cohen '924 trunk for the elastic edging 54. Nor has Appellant provided any
persuasive argument as to why one of ordinary skill in the art would not
have recognized that Bayer's drawstrings 410 could be loosened by a wearer
of Cohen '924's trunk to allow unwanted particulate matter to escape from
inside of the panty 42, and to allow water to enter to cleanse the interior of
the panty 42. The substitution of Cohen '924's elastic edging 54 with
Bayer's drawstrings 410 appears to be no more than "the simple substitution
of one known element for another" with predictable results. See KSR Int'l
Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). We sustain the rejection of
claim 7.
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DECISION
The Examiner's rejection of claims 1-7, 11, and 13-17 is AFFIRMED,
and rejection of claims 10, 12, and 18 is REVERSED. 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-IN-PART
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