Ex Parte Isaacson et al

Patent Trial and Appeal Board

Feb 28, 2018

14064781 (P.T.A.B. Feb. 28, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/064,781 10/28/2013 Kasandra Isaacson ISAA.6264CON-NY 3972
5409 7590 03/02/2018
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
SZAFRAN, BRIE ANNA TARAH LARELL
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
AZ5409@IPLAWUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KASANDRA ISAACSON and KIM M. VANYO
Appeal 2016-008630
Application 14/064,781
Technology Center 3700
Before: JAMES P. CALVE, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1—19. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants indicate that the Kasandra Isaacson and Kim M. Vanyo are the
real parties in interest. Appeal Br. 1.
Appeal 2016-008630
Application 14/064,781
CLAIMED SUBJECT MATTER
The claims are directed to a shirt hold-down undergarment. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An undergarment comprising:
a body configured to wrap around at least a waist region
of a person, the body including an enclosed waist opening on a
top portion of the body, an enclosed left leg opening located at a
bottom portion of the body and an enclosed right leg opening
located at the bottom portion of the body;
a first elongated loop directly attached to the outside of a
front side of the body configured to receive an attachment
mechanism of a shirt hold-down device, wherein the attachment
of the first elongated loop to the body does not contact either leg
opening of the undergarment; and
a second elongated loop directly attached to the outside of
a back side of the body configured to receive an attachment
mechanism of a shirt hold-down device, wherein the attachment
of the second elongated loop to the body does not contact either
leg opening of the undergarment.
Appeal Br. 20 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Smarr US 2,175,786 Oct. 10, 1939
Kattermann US 2,298,737 Oct. 13, 1942
Perez US 2,258,502 Oct. 7, 1941
Mann US 2,545,099 Mar. 13, 1951
Hochberg US 2,671,222 Mar. 9, 1954
Bosack US 5,177,813 Jan. 12, 1993
Isaacson US 8,601,615 B2 Dec. 10, 2013
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Application 14/064,781
REJECTIONS
I. Claims 1—11 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
II. Claims 1—5, 7, 8, and 11—17 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Mann.
III. Claims 1,5, and 6 are rejected under 35 U.S.C. § 102(b) as
anticipated by Perez.
IV. Claims 12, 13, 16, and 17 are rejected under 35 U.S.C. § 102(b)
as anticipated by Hochberg.
V. Claims 5, 6, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mann and Smarr.
VI. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Mann.
VII. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Mann, Smarr, and Bosack.
VIII. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Mann and Kattermann.
OPINION
Rejection I; Indefiniteness of claims 1—11
The Examiner determines that there is insufficient antecedent basis for
the limitations “the outside of a front side of the body” and “the outside of a
back side of the body” in each of independent claims 1 and 7. Final Act. 6.
Appellants assert that “[a]s almost every individual who has worn clothes
would readily understand, the vast majority of garments have an inside and
an outside, i.e., the clothes could be accidently or intentionally worn ‘inside
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Application 14/064,781
out’ or ‘outside in,’” and the outside and inside of an undergarment are
inherent features of such a garment. Appeal Br. 6.
Although we agree with the Examiner that the format of the above-
noted language raises an issue of lack of antecedent basis, in the context of
this case, we do not agree that this lack of an expressly-recited antecedent
basis renders claims 1 and 7 indefinite. A failure to provide explicit
antecedent basis for a term in a claim does not, per se, render the claim
indefinite, there being a “well-settled rule that claims are not necessarily
invalid for a lack of antecedent basis.” Microprocessor Enhancement Corp.
v. Texas Instruments Inc., 520 F.3d 1367, 1376 (Fed. Cir. 2008); see also
Manual of Patent Examining Procedure (MPEP) § 2173.05(e) (“[T]he failure
to provide explicit antecedent basis for terms does not always render a claim
indefinite.”). Additionally, “[ijnherent components of elements recited have
antecedent basis in the recitation of the components themselves.” MPEP
§ 2173.05(e) (citing Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir
2001)). In the context of claims 1 and 7, which recite an undergarment, we
agree with Appellants that a person of ordinary skill in the art would
understand which surface of the garment is the “inside,” and which surface
is the “outside.”2 Accordingly, we do not sustain the rejection of claims 1
and 7 and associated dependent claims 2—6 and 8—11 as indefinite.
Rejection II; Anticipation by Mann
The Examiner finds that Mann discloses all of the limitations recited
in independent claim 1, including a body with “an enclosed left leg opening
2 Revising the clauses at issue for the first and second elongated loops to
expressly recite attachment to “an outside” (rather than “the outside”) of a
respective front/back side of the body would not impact the scope of the
claim.
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Appeal 2016-008630
Application 14/064,781
located at a bottom portion of the body and an enclosed right leg opening
located at the bottom portion of the body.” Final Act. 7. Referring to Figure
1 of Mann, the Examiner finds that the space between reference numerals 26
and 16 qualifies as the recited left leg opening located at the bottom portion
of the body, and the space between reference numerals 15 and 26 qualifies
as the recited right leg opening located at the bottom portion of the body. Id.
The Examiner finds that loops 41 and 22, shown in Figures 4 and 5 of Mann,
correspond to the first and second elongated loops recited by claim 1. Id. at
7-8.
Appellants assert that Mann does not teach “a body” that includes leg
openings as required by claim 1, but, instead, teaches leg openings that are
formed between two different attachable bodies, namely, pantie 26 and
corset/girdle 15. See Appeal Br. 7—8. Specifically, Appellants contend,
pantie 26 of Mann is connected to corset/girdle 15 via hook mechanisms,
and, thus, the combination of pantie 26 and corset/girdle 15 is not “a body”
with the recited left and right leg openings recited in claim 1. Id.
In response, the Examiner finds that pantie 26 and corset/girdle 15 of
Mann are attached together, and this meets the “body” requirement in claim
1 because “Applicant does not claim a single piece of material, body etc. to
define the undergarment and also uses the term ‘comprising’ which is
considered ‘open ended.’” Reply Br. 4—5 (citing Mann, 1:2—20, 52—56, 2:1—
22, 45-55, Fig. 1).
Appellants have the better position on this point because the term
“body,” as used in Appellants’ Specification implies a single garment, not
separate garments. Indeed, the broadest reasonable interpretation of the term
“body,” consistent with Appellants’ Specification, is that the body is the
main portion of a single garment, not necessarily the entire garment, but is
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Application 14/064,781
not formed of separate garments or portions thereof. See Spec. 133
(describing the body of panty undergarment 12 separately from other
components that comprise panty undergarment 12, such as attachment
mechanisms 18). In contrast, Mann describes its pantie as one garment, and
the item to which it attaches as a different garment. For example, Mann
states, “[i]t is an object of the present invention to provide a woman’s pantie
of a type adapted to be attached and supported from any undergarment such
as a corset or girdle or from a garter belt.” Mann, 1:2—6. Mann further
states, “[i]t is another object of the present invention to provide a woman’s
pantie which . . . can be easily laundered, quickly dried, small enough to
carry in a purse or handbag, attached with great ease, serves as a support for
a sanitary pad making it unnecessary to wear uncomfortable sanitary belts.”
Id. 1:9-17 (emphasis added). Figure 1 of Mann depicts pantie 26 attached to
corset/girdle 15, and Figure 2 depicts pantie 26 by itself with hooks 24 and
40 disposed on each end for securing to pantie 26 to another garment. Id.
1:25-29,2:6-10, 48-51.
Thus, the Examiner’s finding that Mann discloses an enclosed left (or
right) leg opening located at a bottom portion of the body requires an
unreasonably broad interpretation of the term “body” as recited in claim 1.
Consequently, we do not sustain the Examiner’s rejection of claim 1 and
claims 2—5 depending therefrom as anticipated by Mann.
Independent claims 7 and 12 recite substantially the same limitation as
discussed above regarding claim 1. Appeal Br. 22, 24 (Claims App.).
Accordingly, for the reasons discussed above regarding claim 1, we do not
sustain the rejection of claims 7 and 12 and associated dependent claims 8,
11, and 13—17 as anticipated by Mann.
Rejection III; Anticipation by Perez
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Application 14/064,781
The Examiner finds that Perez teaches first and second elongated
loops (18 and 22) directly attached to body 10 of an undergarment (via 19
and 22), and, in accordance with the requirements of claim 1, these loops do
not contact either leg opening. Final Act. 18—19.
Appellants contend that the Examiner’s finding on this point is in
error because items 18 and 22 of Perez are button holes that are not directly
attached to body 10, but, rather, are holes in the fabric of body 10 itself.
Appeal Br. 13. Specifically, Appellants state that claim 1 does not recite “a
body which forms a loop, but rather an elongated loop directly attached to
the body.” Id. Further, Appellants contend that the fabric in Perez that
contains holes 18 and 22 contacts the leg openings because this material
forms these leg openings. Id. at 13—14. Thus, according to Appellants, even
if holes 18 and 22 could be considered to be “directly attached to” body 10,
Perez nevertheless would fail to disclose the additional limitation that the
attached loops do not contact the leg openings as recited in claim 1. Id.
The Examiner responds that holes 18 and 22 are directly attached to
body 10 via buttons 19 and 24, and claim 1 does not require the loops to be
entirely separate elements from the body. Ans. 16.
Consistent with Appellants’ Specification (see Spec. H 21, 22, Figs.
12, 13), we understand the term “attached to” to mean that two separate
components are connected together. Thus, we agree with Appellants that
holes 18 and 22 are not loops “directly attached to” body 10. As for whether
the material in which holes 18 and 22 are disposed may be considered to
form loops directly attached to body 10, we agree with Appellants that this
finding does not meet the requirement in claim 1 that the loops are not in
contact with the leg openings of body 10 because this material defines a
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Application 14/064,781
portion of these leg openings. Accordingly, we do not sustain the rejection
of claim 1 and claims 5 and 6 depending therefrom as anticipated by Perez.
Rejection IV; Anticipation by Hochberg
The Examiner finds that Hochberg discloses all the limitations recited
in claim 12, including “a stitched seam (via 25) that extends horizontally
(note Figures 1—2) between the enclosed left leg opening and the enclosed
right leg opening (via 20, note Figure 1 ).” Final Act. 20.
Appellants contend that the Examiner’s finding regarding stitching 25
of Hochberg is in error because stitching 25 is located on another part of
body 10, near waistband 11, and does not extend between the leg openings
of this body. Appeal Br. 15—16.
In response, the Examiner provides an annotated version of
Hochberg’s Figure 1 identifying the location of the leg opening and stitches
25 and states, “the enclosed right and left leg openings are located at the
bottom portion of the body with the horizontal stitched seam in between both
as claimed.” Ans. 18—19 (emphasis added).
We agree with Appellants’ argument on this point because claim 12
requires the seam to extend between (not merely be located “in between”)
the leg openings, i.e., the recited seam extends from one opening to the other
opening. Thus, the Examiner’s finding that stitching 25 of Hochberg is “in
between” the leg openings in body 10 does not satisfy the requirements of
claim 12. Accordingly, we do not sustain the rejection of claim 12 and
claims 13, 16, and 17 depending therefrom as anticipated by Hochberg.
Rejections V—VIII; Obviousness
The Examiner’s use of Smarr, Bosack, and Kattermann does not
remedy the deficiency discussed above regarding Rejection II and Mann.
See Final Act. 22—25. Accordingly, we do not sustain Rejections V—VIII.
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DECISION
The Examiner’s rejection of claims 1—19 is reversed.
REVERSED
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