Ex Parte BRAVERMAN

Patent Trials and Appeals Board

Mar 27, 2019

13839566 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/839,566 03/15/2013
7055 7590 03/29/2019
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Laurie BRAVERMAN
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
P42188 5105
EXAMINER
HUYNH, KHOA D
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
03/29/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURIE BRAVERMAN
Appeal 2018-006831
Application 13/839,566
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Laurie Braverman (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 47---65 under 35 U.S.C. § 103(a) as
unpatentable over Cohen (US 2009/0233524 Al, pub. Sept. 17, 2009) and
Giese (US 6,918,812 B2, iss. July 19, 2005). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2018-006831
Application 13/839,566
THE CLAIMED SUBJECT MATTER
Claim 4 7, reproduced below, is illustrative of the claimed subject
matter.
4 7. A brassiere configured for users with non-pendulous
breasts and which is adapted to retain the non-pendulous breasts
in an anatomically correct position without pushing breast
tissue together, comprising:
a first wing having a first end and a second end;
a second wing having a first end and a second end;
a first closure portion arranged on the first end of the first
wmg;
a second closure portion provided on the first end of the
second wing:
a first cup sized and configured for an non-pendulous
breast having a cup size of AAA, AA, A or B, said first cup
having an outer portion connected to the second end of the first
wmg;
a second cup sized and configured for an non-pendulous
breast having a cup size of AAA, AA, A or B, said second cup
having an outer portion connected to the second end of the
second wing;
a gore comprising a first end connected to an inner
portion of the first cup and a second end connected to an inner
portion of the second cup, said gore being sized and configured
to contact and sit flat on a chest wall;
each of said first cup and said second cup comprising:
an inner contour defining a cup volume and having
a perimeter diameter;
an outer contour defining a volume larger than the
cup volume and having a cup diameter that is larger than
the perimeter diameter; and
a fill material disposed between the inner contour
and the outer contour, wherein one of:
when the brassiere has a band size of 26 inches, 28
inches, 30 inches or 32 inches, the brassiere
accommodates a bust point spread that is between one of
5 to 6 inches, 6 to 7 inches, or 7 to 8 inches; or
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when the brassiere has a band size of 34 inches, 36
inches, or 3 8 inches, the brassiere accommodates a bust
point spread of between 5 to 6.5 inches or between 6.5 to
8 inches.
DISCUSSION
Claims 47, 52, 54, 56-61, 64, and 65
Appellant presents arguments for independent claim 47 (Appeal
Br. 8-16), relies on the same arguments for independent claim 61 (see id. at
16-21) and dependent claims 5 6-5 8 (see id. at 29-31 ), and does not assert
any separate arguments for dependent claims 52, 54, 59, 60, 64, and 65 (see
id. at 34). We select claim 47 as representative, and claims 52, 54, 56-61,
64, and 65 stand or fall with claim 47. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Cohen discloses a brassiere, substantially as
claimed (see Final Act. 3--4 ( citing Figure 1 of Cohen as annotated and
reproduced on page 6 of the Final Action)), but "is silent [as] to the use of a
pair of closure portions attached to the first and second wings respectively"
(id. at 4). However, the Examiner finds that Giese discloses "that it is well-
known and conventional to use ... first and second closure portions ( Giese
Fig 1, 55 and 56; Col 6, Ins 1-4) attached to the first end of the first and
second wings respectively." Id. The Examiner determines that it would
have been obvious to modify Cohen to include Giese's closure portions
because such closures are "beneficial for providing a reliable and
conventional fastener mechanism (Giese Col 6, Ins 1-4)." Id. at 5. The
Examiner also finds "that the combination [ of Cohen and Giese] is silent [as]
to the various band sizes and the ranges of the bust point spread." Id.
However, the Examiner finds that "Cohen does teach the use of different
embodiments of the brassiere that are capable of accommodating different
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breast sizes (Cohen para 0019), thereby providing different bust point
spread[] ranges and band sizes." Id. The Examiner determines that it would
have been obvious "to experiment with different band sizes and bust point
spread values in order to achieve an optimal configuration, since discovering
an optimum value of a result effective variable involves only routine skill in
the art." Id. (citing In re Boesch, 617 F.2d 272 (CCPA 1980)).
Appellant argues that the Examiner erred by failing to give patentable
weight to the preamble recitation in claim 4 7 that the brassiere is
"configured for users with non-pendulous breasts and ... adapted to retain
the non-pendulous breasts in an anatomically correct position without
pushing breast tissue together." See Appeal Br. 14 (citing Final Act. 3).
Appellant asserts that "this language must be accorded patentable weight
consistent with the precedential Federal Circuit decision In re Giannelli, 739
F.3d 1375 (Fed. Cir. 2014) and MPEP 2111.04 citing the same." Reply
Br. 2. Although we agree with Appellant that the disputed limitation should
be accorded patentable weight, for the reasons that follow, Appellant's
argument does not identify error in the rejection.
"[T]he phrase 'adapted to' generally means 'made to,' 'designed to,'
or 'configured to,' though it can also be used more broadly to mean 'capable
of or 'suitable for."' In re Man Mach. Interface Tech. LLC, 822 F.3d 1282,
1286 (Fed. Cir. 2016) (citing Giannelli, 739 F.3d at 1379). In Giannelli, the
court looked to the written description of the application and determined that
the phrase "adapted to" in view of the specification, has a narrower meaning
than "capable of' or "suited for." Giannelli, 739 F.3d at 1379. Here, claim
4 7 recites that the brassiere "is adapted to retain the non-pendulous breasts
in an anatomically correct position without pushing breast tissue together."
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Appeal Br. 36 (Claims App.). The Examiner explains in the Answer that he
interprets the limitation as requiring a brassiere that is "capable of retaining
the non-pendulous breasts of a user in an anatomically correct position."
Ans. 3. In other words, the Examiner "provided the claim language with
weight to the fullest extent possible, in light of the Appellant's Specification
and Drawings." Id. at 4. In this regard, Appellant does not point to, nor do
we discern, any disclosure in the Specification that would necessitate a
narrower interpretation of "adapted to" than "capable of." Thus, Appellant
does not identify error in the Examiner's interpretation of the disputed
limitation.
Appellant argues that "COHEN teaches a push up bra which does not
retain ... non-pendulous breasts in an anatomically correct position without
pushing breast tissue together. In fact, the opposite is the case; paragraph
[0004] of COHEN states that the disclosed bra provides 'cleavage
enhancement."' Appeal Br. 11-12 ( underlining omitted). Appellant also
asserts that "GIESE similarly teaches a bra that provides 'cleavage control'
or breast 'enhancement' and 'which applies a force in a medial direction for
directing the breasts toward one another."' Id. at 12 (quoting Giese, col. 1,
11. 7-11 ). We are not persuaded by these arguments.
In response to Appellant's argument, the Examiner explains that,
"since the bra of Cohen discloses all the structural features of the claimed
invention, the prior [art] would be expected to be able to perform the
claimed functions." Ans. 3; see also id. at 4--5 ( explaining that combination
of Cohen and Giese "discloses the structural features as recited by the
[claim], and would therefore be expected to be able to perform the claim
limitation"). Appellant's argument does not specifically address the
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Examiner's position that the structure based on the combined teachings of
Cohen and Giese would be capable of performing the claimed function or
explain why this position would be deficient.
Appellant argues that the Examiner has not explained
whether or how a person of ordinary skill in the art would have
a reasonable expectation of success in using a push up bra
(COHEN) and/or a cleavage enhancing bra (GIESE) for users
having non-pendulous breasts and which can retain the non-
pendulous breasts in an anatomically correct position without
pushing breast tissue together.
Appeal Br. 16 (underlining omitted). The Examiner responds that,
"[b ]ecause the prior art has all the claimed elements, it would be reasonable
to expect that the combined reference of Cohen and Giese would be capable
of performing the purpose as recited by the Appellant of 'retaining the non-
pendulous breasts of the user in the correct anatomical position."' Ans. 5.
We are not persuaded by Appellant's argument.
Appellant's Specification defines "non-pendulous breasts" as breasts
that are immovable. See Spec. 1 ( describing that "smaller/immovable
breasts are not pendulous as are the larger natural breasts"). To the extent
that Cohen, in disclosing a "push up" bra, contemplates pushing the breast
tissue together, as Appellant asserts, Cohen's teachings must be directed to
pendulous breasts that are movable. Appellant does not persuasively explain
why Cohen's brassiere would not be capable of retaining non-pendulous
breasts (which are immovable) in their anatomically correct position,
whether Cohen intended such use/result or not.
Appellant argues that Cohen and Giese do not teach or suggest the
band sizes and bust point spread ranges recited in claim 47. Appeal Br. 12-
13. Appellant asserts that the invention "utilizes the recited relationship of
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band size and bust point spreads in order to create a better fitting brassiere
for users with non-pendulous breasts that retain the non-pendulous breasts
in an anatomically correct position without pushing breast tissue together."
Id. at 13. According to Appellant, "[t]his is the opposite of what COHEN
and GIESE teach - as both documents relate to a bra that seeks to move
breast tissue in order to, among other things, enhance cleavage." Id. (citing
Cohen ,r 4; Giese, col. 1, 11. 53-57). We are not persuaded by this argument
because it is not responsive to the rejection presented. As discussed above,
the Examiner does not find that either Cohen or Giese discloses the claimed
band size and bust point spreads. Rather, the Examiner determines that,
given the teachings of the prior art, it would have been obvious to
experiment with band sizes and bust point spreads to optimize the
configuration. Final Act. 5; see also Ans. 4 (explaining that the "band size
and bust point spread measurement would be dependent upon the user's
individual anatomy[,] ... [and] it would have been obvious to one having
skill in the art at the time the invention was made to optimize these
parameters for the comfort of the individual"). In this regard, Appellant
does not specifically address the Examiner's articulated reasoning for the
conclusion of obviousness or explain why this reasoning would be in error.
Appellant argues that Cohen and Giese are not combinable because
"they describe contradictory solutions to solve the same problem." Appeal
Br. 13. In particular, Appellant asserts that Cohen enhances cleavage using
padding and contouring, whereas Giese enhances cleavage without relying
on extra padding. Id. This argument is unpersuasive. The Examiner does
not rely on Giese for its teachings directed to enhancing cleavage or
padding. Rather, the Examiner relies on Giese only for its teachings
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regarding closure portions. Even assuming that Cohen and Giese disclose
different approaches with respect to padding, this would not have dissuaded
a person having ordinary skill in the art from considering Giese' s teachings
regarding closure portions as applicable to Cohen's brassiere.
For the above reasons, Appellant does not apprise us of error in the
Examiner's conclusion that the subject matter of claim 47 would have been
obvious. Accordingly, we sustain the rejection of claim 47, and of claims
52, 54, 56-61, 64, and 65 falling therewith, under 35 U.S.C. § 103(a) as
unpatentable over Cohen and Giese.
Claims 48 and 62
In rejecting claim 48, which depends from claim 47, the Examiner
finds that "Cohen teaches the use of a bra cup that can be one of a variety of
sizes (As shown in Cohen Figures 1-8) and would have a variable amount of
padding located within the bra cups [in] order to create a more appropriate
fit for the user." Final Act. 6. The Examiner determines that it would have
been obvious
to have a bra with an inner contour [that] is an AA cup size (As
shown in Cohen Figure 4), while the outer contour has an A cup
size outer radius (As shown in Cohen Figure 1 ). Such
modification would be considered a mere choice of a preferred
optimum configuration for the user's breast within the bra as a
matter of "obvious to try[,]" as a person with ordinary skill has
good reason to pursue the known options within his or her
technical grasp. Additionally, this configuration would provide
the user's breasts with the obvious benefit of having a more
comfortable and contoured fit within the bra.
Id. at 6-7.
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Appellant argues that "[t]here is simply no appreciation [in the cited
references] of taking into account a specified cup size outer radius in relation
to specified inner cup contour as recited in claim 48." Appeal Br. 22
(underlining omitted). Appellant asserts that Cohen's "disclosure of
different bra sizes is insufficient to teach or suggest the alternative features
of claim 48." Id. This argument is unpersuasive because it is not responsive
to the rejection presented. Here, the Examiner does not find that Cohen
discloses the features recited in claim 48. Rather, as discussed above, the
Examiner determines that it would have been obvious to modify Cohen to
include such features as "a mere choice of a preferred optimum
configuration for the user's breast within the bra as a matter of 'obvious to
try[,]' as a person with ordinary skill has good reason to pursue the known
options within his or her technical grasp." Final Act. 7; see also Ans. 6
(reasoning that, "[b ]ecause Cohen teaches that variable padding is known
and utilized in the production of brassieres, it would have been obvious ...
to create a brassiere cup with a smaller inner contour size and a larger outer
contour size") ( emphasis added). In this regard, Appellant does not
specifically address the reasoning articulated by the Examiner for the
conclusion of obviousness or explain why this reasoning would be deficient.
For the above reasons, Appellant does not apprise us of error in the
Examiner's conclusion of obviousness with respect to claim 48. Regarding
claim 62, Appellant relies on the same unpersuasive arguments presented for
patentability of claim 48. See Appeal Br. 31-33. Accordingly, we sustain
the rejection of claims 48 and 62 under 35 U.S.C. § 103(a) as unpatentable
over Cohen and Giese.
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Claims 49 and 63
In rejecting dependent claim 49, the Examiner finds that, "[a]s shown
in Cohen Figures 1, 2, and 4, Cohen teaches wherein the outer contour (As
shown in Cohen Figure 1, wherein the outer contour would be on the outside
of the cups) is capable of being a different cup size than a C or a D cup
size." Final Act. 7. More specifically, the Examiner explains that Cohen
discloses that "brassieres are available in a variety of cup sizes, including
A cup, B cup, and C cup sizes. As stated in the rejection, the outer contour
cup size is indeed fully capable of being a cup size that is different from
either a C or a D cup size." Ans. 6 ( citing Cohen ,r 15).
Appellant contends "that the mere possibility that COHEN can be
read to teach the recited feature is insufficient to teach or suggest the
features of claim 49." Appeal Br. 23. We are not persuaded by this
assertion because Appellant does not point out where the Examiner's finding
that Cohen discloses bras having cup sizes of A cup and B cup, which are
"different cup size[ s] than a C or a D cup size" as claimed, is deficient.
For the above reasons, Appellant does not apprise us of error in the
Examiner's conclusion of obviousness with respect to claim 49. Regarding
claim 63, Appellant relies on the same unpersuasive arguments presented for
patentability of claim 49. See Appeal Br. 33-34. Accordingly, we sustain
the rejection of claims 49 and 63 under 35 U.S.C. § 103(a) as unpatentable
over Cohen and Giese.
Claims 50, 51, and 55
In rejecting dependent claim 50, the Examiner determines that it
would have been obvious "to experiment with different cup volumes and cup
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diameters in order to achieve an optimal configuration, since discovering an
optimum value of a result effective variable involves only routine skill in the
art." Final Act. 7 (citing In re Boesch, 617 F.2d at 276).
Appellant argues that "there is a standard in the industry which leads
away from the inventive bra. Those of skill in the art would proportionally
grade and size up or down based upon the industry standard in a manner that
would not result in the invention." Appeal Br. 24. Appellant asserts that
"there is nothing in the record or applied prior art to suggest that they would
experiment with the specific parameters being claimed- especially when one
considers that they seek to do the very opposite of what Appellant seeks."
Id. at 24--25; see also id. at 25 (asserting that "[t]t is not apparent how these
documents would in any way suggest a bra having a specifically recited cup
volume and cup diameter such as a cup volume is 310 cc and a cup diameter
is 4.5 inches"). We are unpersuaded by this line of argument.
Appellant appears to insist on an explicit teaching, suggestion, or
motivation in the cited art to establish obviousness, but such a requirement
has been foreclosed by the Supreme Court. KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398,415,419 (2007) (stating that a rigid insistence on teaching,
suggestion, or motivation is incompatible with its precedent concerning
obviousness). The Court noted that an obviousness analysis "need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for [ an examiner] can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ." Id. at 418.
Instead, the relevant inquiry is whether the Examiner has set forth "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
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cited with approval in KSR, 550 U.S. at 418. As discussed above, the
Examiner presents reasoning as to why it would have been obvious to
modify the brassiere of Cohen to have the claimed cup volumes and
diameters. See Final Act. 7; see also Ans. 7 ( explaining that a "cup's
volume and diameter would be dependent upon the user's individual
anatomy[,] ... [and] it would have been obvious to one having skill in the
art at the time the invention was made to optimize these parameters for the
comfort of the individual"). In this regard, Appellant does not offer any
factual evidence or persuasive technical rationale to refute the Examiner's
articulated reasoning or explain why it would lack rational underpinnings.
Moreover, to the extent that Appellant appears to argue that the prior
art teaches away from the claimed invention because it uses different sizing
standards (see Appeal Br. 24--25), we note that prior art does not teach away
from claimed subject matter merely by disclosing a different solution to a
similar problem unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Here, Appellant does not point to, nor do we find, any
disclosure in the prior art criticizing, discrediting, or otherwise discouraging
the combination of teachings proposed by the Exarniner in the rejection.
For the above reasons, Appellant does not apprise us of error in the
Examiner's conclusion of obviousness with respect to claim 50. Regarding
claims 51 and 55, Appellant relies on the same unpersuasive arguments
presented for patentability of claim 50. See Appeal Br. 25-26, 28-29.
Accordingly, we sustain the rejection of claims 50, 51, and 55 under
35 U.S.C. § 103(a) as unpatentable over Cohen and Giese.
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Claim 53
Claim 5 3, which depends from claim 4 7, recites that "the inner
contour has an inner apex and the outer contour has an outer apex that is
medially offset from the inner apex." Appeal Br. 37 (Claims App.). The
Examiner finds that Cohen discloses that
the inner contour (As shown in Cohen Figure 1, wherein the inner
contour is located within the cups of the bra) has an inner apex
(Cohen Fig 1, 24) and the outer contour (As shown in Cohen
Figure 1, wherein the outer contour would be on the outside of
the cups) has an outer apex (See Cohen Annotated Figure 1 ... )
that is medially offset from the inner apex.
Final Act. 8. According to the Examiner, "apex is defined by Merriam-
Webster as 'the uppermost point[,]' ... [and] the 'highest point' or the
outermost point on a brassiere would be the area located at a front location
on the individual bra cup, which is where the outer apex is annotated." Ans.
7-8 (including annotated reproduction of Figure 1 of Cohen).
Appellant argues the Examiner's identified outer apex in the
annotated figure does not have support in Cohen's written description. See
Appeal Br. 27. In particular, Appellant asserts that, "[a]lthough the
Examiner's annotated drawing (on page 8 of the Examiner's Answer) places
an arrow at a location of an alleged outer apex, the Examiner can point to no
disclosure in COHEN which would support this particular location for the
outer apex." Reply Br. 5. We agree that the Examiner's finding lacks
adequate evidentiary support.
The particular area that the Examiner identifies as the "outer apex" in
annotated Figure 1 of Cohen is not adequately supported by the reference.
Although Cohen discloses apex 24, it is unclear whether apex 24 is on the
inner contour or outer contour of the brassiere. Cohen ,r 15, Fig. 1.
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Assuming, arguendo, that apex 24 is on the inner contour, there is no
disclosure in the reference as to whether the brassiere includes an outer apex,
or where such outer apex would be located. The location identified by the
Examiner in the annotated figure appears to be somewhat arbitrary, and the
Examiner's evidentiary basis for this interpretation is unclear. See Ans. 8
(including annotated reproduction of Figure 1 of Cohen). Even accepting
the Examiner's proffered definition of "apex" as the "uppermost point" or
"highest point" (Ans. 7-8), the location identified by the Examiner in
annotated Figure 1 of Cohen does not appear to be the uppermost or highest
point of the outer contour. Thus, a preponderance of the evidence does not
support the Examiner's finding that Cohen discloses that "the inner contour
has an inner apex and the outer contour has an outer apex that is medially
offset from the inner apex," as recited in claim 53.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case that claim 53 is unpatentable based
on the cited references. On this basis, we do not sustain the rejection of
claim 53, under 35 U.S.C. § 103(a) as unpatentable over Cohen and Giese.
DECISION
The Examiner's decision rejecting claims 47---65 under 35 U.S.C.
§ 103(a) as unpatentable over Cohen and Giese is AFFIRMED as to claims
47-52 and 54---65, and REVERSED as to claim 53.
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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)(l )(iv).
AFFIRMED-IN-PART
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