Ex Parte Rana et al

Patent Trial and Appeal Board

Mar 27, 2013

10331790 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte AMAR PAL SINGH RANA and NIMAL SINGH
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Appeal 2010-009532
Application 10/331,790
Technology Center 3700
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Before CHARLES N. GREENHUT, MICHAEL L. HOELTER and
JOHN W. MORRISON, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009532
Application 10/331,790

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 21, 23-26, 28 and 30-32. App. Br. 5. Claims 1-20, 22,
27 and 29 have been cancelled. App. Br. 5. We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM.

CLAIMED SUBJECT MATTER
The disclosed subject matter pertains to a “human female crotch
enhancing article to provide the human female wearer with subtle
understated sexual expression and/or subtle non-verbal communication.”
Spec. para. [0002]. Independent claim 21 is illustrative of the claims on
appeal and is reproduced below:
21. A female genitalia crotch enhancing article and garment
combination comprising:
a cosmetic human female genitalia crotch enhancer
volume component;
a human female garment having a crotch; said crotch
having an outer layer and an inner layer forming a space there
between;
said cosmetic human female genitalia crotch enhancer
volume insertable into the said space there between the said
outer layer and said inner layer of said human female garment's
crotch; and
said cosmetic human female genitalia crotch enhancer
volume is structured to provide the simulated appearance of the
exaggerated contours and curves of said female genitalia with
the pudendal cleft associated with the human female external
genitalia simulated thereon said enhancer volume.

REFERENCES RELIED ON BY THE EXAMINER

Mayer US 3,295,530 Jan. 3, 1967
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Tatro US 4,967,768 Nov. 6, 1990

The Camel Toe Cup Advertisement; Oct. 24, 2002; at
wwww.cameltoe.net/cameltoecup.htm; see the Wayback
machine results from wvvw.waybackmachine.com.

THE REJECTION ON APPEAL
Claims 21-26 and 28-301 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mayer, Tatro and the Camel Toe Cup
Advertisement. Ans. 3.
ANALYSIS
Appellants present different arguments for each claim on appeal.
App. Br. 10-26. We address each claim separately.
Appellants also argue that reliance by the Examiner on the Camel Toe
Cup Advertisement should not be allowed as this document lacks
authentication. App. Br. 12, 34, Reply Br. 2, 8. The Examiner
acknowledges the electronic source of this document as the Wayback
machine and identifies a date of Oct. 24, 2002 as per “the Wayback machine
results from www.waybackmachine.com.” Ans. 3. In contesting the
Examiner’s reliance on this document, Appellants refer to a trial judge that
overruled a magistrate’s findings, in part, because “the purported webpage
printouts themselves were not self-authenticating.” Reply Br. 2 (no case
citation or authentication provided). Appellants’ contentions are not
persuasive. First, MPEP § 2128 provides guidance that “[p]rior art

1 The Examiner’s list of claims includes canceled claims 22 and 29 and fails
to list claims 31 and 32. A correct claim listing is found in the Final Action
dated March 17, 2009, i.e., claims 21, 23-26, 28 and 30-32. Appellants
properly respond to the claims listed in the Final Action and we likewise
address these claims.
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disclosures on the Internet or on an on-line database are considered to be
publicly available as of the date the item was publicly posted.”2 Appellants
do not indicate that the date provided the Camel Toe Advertisement by the
Wayback Machine, and relied on by the Examiner, was generated other than
in the normal course of operation of this site. There is no indication that this
date was arbitrarily assigned or that the origin of document itself is suspect.
Second, the Camel Toe Advertisement itself is undated meaning that the
date did not arise from the document itself (i.e., no self-authentication) but
instead arose from sources separate and independent of this document.
Third, we have been instructed that “[t]he general rule is that administrative
agencies like the PTO are not bound by the rules of evidence that govern
judicial proceedings.” In re Epstein, 32 F.3d 1559, 1565 (Fed. Cir. 1994).
For example, the PTO can rely upon hearsay evidence in making rejections
and applicants are free to investigate hearsay assertions to respond to the
Office Action. Id. at 1565-6. This court stated that “[t]he inapplicability of
hearsay evidence rules in ex parte PTO examination is appropriate in light of
the purpose and reason for the hearsay rule.” Id. at 1565. Here, the matter is
an ex parte proceeding which is provided more leeway under the rules of
evidence, unlike the trial/judicial proceeding seemingly referred to by
Appellants supra. Accordingly, without more, we decline to agree with

2 “Electronic documents that are not themselves dated and have no posting
date, but are/were available as links on a website that is archived on the
Wayback Machine, are dated as of the archived date of the website.” See
“Prior art in the Field of Business Method Patents – When is an Electronic
Document a printed Publication for Prior Art Purposes?” Presented at
AIPLA Fall 2002 by Wynn W. Coggins, The United States Patent and
Trademark Office. Also found at
http://www.uspto.gov/patents/resources/methods/aiplafall02paper.jsp

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Appellants that reliance by the Examiner on the Camel Toe Advertisement
was improper.
Claim 21
The Examiner relies primarily on Mayer for disclosing “a
female undergarment/girdle that includes pockets for the placement of
prosthetics/pads/enhancer volumes therein” (italics added). Ans. 4. The
Examiner relies further on Tatro for disclosing “an undergarment with a
front pocket to hold a prosthetic device/cup/enhancer volume therein” and
on the Camel Toe Cup Advertisement “for the fact that it is a female
prosthetic cup/enhancer volume” (italics added). Ans. 4. The Examiner
finds that it would have been obvious to modify Mayer’s female garment “to
include a frontal pocket” in order to hold a device, “such as the Camel Toe”
device, therein. Ans. 4. The Examiner also found that it would have been
obvious to modify “constructing the [Camel Toe] device with as much detail
as desired to create an anatomically correct simulative cup/enhancer volume
in order to achieve the desired aesthetic effect.” Ans. 4.
Appellants contend that their device is not a prosthetic3 (App. Br. 10,
14-16; Reply Br. 3-4, 9-10) and further that it is not a prosthetic in
accordance with the dictionary definition of a device “to replace or augment
a missing or impaired part of the body” (App. Br. 10, Reply Br. 4, 10).
Appellants also contend that claim 21 pertains “to exaggerated cosmetic
contours and curves for female crotch enhancing female garments only.”
App. Br. 10, see also 14-16. The Examiner notes that Appellants contention
appears to focus on the function and intended use of the invention and not its

3 As noted supra, the Examiner refers to the claimed device not only as a
prosthetic but also as a “pad,” “enhancer volume” and “cup.” Ans. 4.
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claimed structure. Ans. 5. The Examiner further finds that when
Appellants’ device is placed within a garment’s crotch area, “it then
inherently acts as a prosthetic device for the crotch” as it “inherently
‘augments or enhances’ the wearer’s genitalia.’” Ans. 6. The Examiner
summarizes that “Appellant’s argument that the ‘enhancer volume’ is not a
prosthetic is in name only since their device would inherently act as such a
prosthetic device or pad” (italics added). Ans. 6. Regardless of what the
device is called, Appellants do not show where the Examiner erred in
finding that the device “would inherently act” as a prosthetic. Ans. 6.
Appellants’ contentions are not persuasive.
Appellants also contend that their invention “satisfies a long felt need
in the industry” and that there “has been a failure of others to find a
solution to the problem at hand” and that “the unexpected result is our
female crotch enhacing [sic] article.” App. Br. 10. The Examiner “is not
clear as to what the ‘long felt need to provide an exaggerated pudendal cleft
expression’ is or how it is measured” but the Examiner finds that replicating
female genitalia is “well known in the art” as exemplified by the Camel Toe
Cup advertisement. Ans. 7. In summary, the Examiner finds that there does
not appear to be a long felt need of such a female genitalia prosthetic
pad/enhancer or “that the need was not yet addressed in the marketplace” as
Appellants assert. Ans. 8.
We are instructed by our reviewing court that a long-felt need must
not have been satisfied by another before the invention by applicant. See
Newell Companies v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988)
(“[O]nce another supplied the key element, there was no long-felt need or,
indeed, a problem to be solved”). In view of these instructions, Appellants
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do not identify a long felt need, or a problem to be solved, that the Camel
Toe Cup device and its ilk does not already satisfy. We are thus not
persuaded that Appellants’ device satisfies a long felt need that has remained
unaddressed.
Appellants also direct attention to the Declaration submitted by
Appellants’ Expert Gabriele Goldaper and asks us to “note the depth of the
scientific evidentical declaration” of this Expert. App. Br. 11, see also
Reply Br. 9. We note the Expert’s resume and unique qualifications but the
analysis contained therein is the Expert’s opinion as to the obviousness of
the claimed invention over the cited art. We are not informed as to where
the Expert cites to scientific documents, or relies on well-established legal
principals, prior to reaching the conclusion that the claimed invention “is
absolutely not obvious to one of ordinary skill in the pertinent art at the
time the invention was made.” Declaration pg. 37.
Appellants (and also the Expert) contend that the Examiner had to
combine three references and that this fact alone “shows the unobviousness
of the teachings of [the] current application.” App. Br. 11, see also Reply
Br. 5 and Declaration pg. 35. On this specific point, our reviewing court has
provided instruction that it “is not the number of references, but what they
would have meant to a person of ordinary skill in the field of the invention.”
In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). See also Ans. 8.
Furthermore, an expert’s opinion on the legal conclusion of obviousness is
neither necessary nor controlling. See Avia Group Intern., Inc. v. L.A. Gear
Calif., Inc., 853 F.2d 1557, 1564 (Fed. Cir. 1988).
Appellants further address each reference individually (App. Br. 11-
12, Reply Br. 5-6) and also address each reference in combinations not
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relied on by the Examiner (App. Br. 12, Reply Br. 6-7). “Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.” In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). However, Appellants
also discuss the combination relied on by the Examiner and here, Appellants
contend that the cited combination “did not go far enough to address the
‘exaggerated’ curves and contours related directly to the pudendal cleft.”
App. Br. 12-13, Reply Br. 7. More specifically, Appellants contend that the
Examiner did not “explicitly or implicitly include ‘exaggerated’ curves” in
the rejections made. App. Br. 13. We disagree with Appellants. The
Examiner explicitly stated that the desired amount of detail “would have
been a matter of design choice.” Ans. 5, see also 10. Appellants do not
contend that a design with exaggerated curves and contours over existing
designs would function differently nor do Appellants contend that one
skilled in the art does not have the ability to “replicate any body part they
desire with the extent of detail they desire.” Ans. 8. Accordingly,
Appellants’ contention regarding “exaggerated curves” is not persuasive.
Appellants also contend that the submitted Declaration “proves that
the combination of prior arts [sic] suggested is unsatisfactory for the
intended purpose.” App. Br. 13. However, the Declaration is silent
regarding the cited combination not being suitable for its intended purpose
and Appellants do not indicate where such can be found. We are instructed
that attorney arguments and conclusory statements which are unsupported by
factual evidence are entitled to little probative value. See In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (“Attorney’s arguments in a brief cannot take
the place of evidence”).
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Appellants further contend that the Examiner has not provided a
reference which teaches the combination cited and as such the Examiner has
not identified any teaching which “would anticipate the teachings of the
current application.” App. Br. 13, Reply Br. 7. Appellants’ contention is
misplaced as the Examiner is rejecting claim 21 as being obvious over the
prior art, not that claim 21 is anticipated by the prior art.
Appellants further contend that expressions of disbelief by experts
constitute strong evidence of nonobviousness and that Appellants’ Expert
“does express disbelief.” App. Br. 16, see also Reply Br. 11. While
disbelief may have been expressed, it is disbelief that the cited references
render Appellants’ claims obvious, not that the problem purportedly solved
by Appellants was heretofore considered unsolvable. App. Br. 16, Reply Br.
11. As such, Appellants’ reliance on Environmental Designs, Ltd. v. Union
Oil Co. of Cal., 713 F.2d 693, 698, (Fed. Cir. 1983), among others, is not
persuasive. App. Br. 16.
Based on the record presented, Appellants’ contentions are not
persuasive and accordingly, we sustain the Examiner’s rejection of claim 21.

Claim 23
Claim 23 depends from claim 21 and includes the further limitation
that the cosmetic human female genitalia crotch enhancer element volume
discussed above is prevented from shifting in the garment “by means of one
of a group consisting of adhesive, fastener or being sewn within the said
inner and outer layers.” Appellants identify no structure in the Specification
or in any of the Figures that correspond to an adhesive, a fastener or being
sewn therein. However, Appellants do identify a flap in the Specification
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that may be “without or with fasteners” when discussing Figs. 8-10. Spec.
para. [0053]. Because no specific definition or structure is provided by
Appellants, it is appropriate to provide these claim terms with their ordinary
and customary meaning as understood by a person of ordinary skill when
read in the context of the Specification.
Appellants rely on the arguments presented with respect to claim 21
and further contend that “[n]o such adhesives or fastners [sic] means are
present in prior art of Maher, Tatro or transvestite camel-toe or even
declared by Examiner Gloria Hale as obvious.” App. Br. 17. Appellants’
contention is not accurate as the Examiner specifically identifies the Tatro
undergarment as disclosing a “pocket with the connector 50 to hold the
device therein.” Ans. 4, see also 16. Tatro specifically identifies item 50 as
“two-part snap fasteners.” Tatro 4:31. Accordingly, Tatro’s connector 50 is
a fastener as this term would be reasonably understood. Based on the record
presented, Appellants’ contentions are not persuasive and we sustain the
Examiner’s rejection of claim 23.

Claim 24
Claim 24 depends from claim 21 and includes the further limitation
that the above described crotch volume “has a body facing side with a soft
absorbent material thereon.” Appellants rely on the arguments presented
with respect to claim 21 and further contend that “[n]o such soft adsorbent
material is present in prior art of Maher, Tatro or transvestite cameltoe
or even declared by Examiner Gloria Hale as obvious.” App. Br. 17.
Appellants’ contention is not accurate as the Examiner specifically states
that one skilled in the art “would have known to construct the device of any
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known materials to provide the best simulative genitalia effect such as soft
absorbent material” so as to “obtain the benefits of those materials” (italics
added). Ans. 5. Appellants do not indicate error in the Examiner’s finding
nor do Appellants indicate that it would not have been known to construct
the genitalia device of a soft material so as to obtain the benefits of such a
soft material. Accordingly, Appellants’ contentions are not persuasive.

Claim 25
Claim 25 depends from claim 21 and includes the further limitation
that the claimed garment “is one of the group consisting of lingerie, panty, . .
. tight fitting clothing, . . . figure control clothing . . .” etc. The Examiner
specifically finds that “[t]he garment of Mayer et al is a panty as claimed.”
Ans. 4, see also 16. Mayer specifically states that “[t]he present invention
relates to foundation garments and particularly to panty girdles.” Mayer 1:8-
9. Accordingly, Appellant’s reliance on the arguments presented with
respect to claim 21 and also that “[n]one of these garment combinations
are present in [the] prior art of Maher, Tatro or transvestite camel-toe
or even declared by Examiner Gloria Hale as obvious” are deemed
persuasive. App. Br. 17-18, see also 14.

Claim 26
Claim 26 depends from claim 21 and includes the further limitation
that the genitalia crotch enhancer volume discussed above is formed of a
colored material taken from the group consisting one of a transparent
material, a translucent material “or any known color.” The Examiner
specifically finds that “[t]he device of the Camel Toe cup prosthetics is of a
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known color as claimed.” Ans. 4, see also 16. Accordingly, Appellant’s
reliance on the arguments presented with respect to claim 21 and also that
none of “the colors mentioned above are present in [the] prior art of
Maher, Tatro or transvestite camel-toe or even declared by Examiner
Gloria Hale as obvious” are deemed persuasive. App. Br. 18.

Claim 28
Appellants repeat the same arguments with respect to independent
claim 28 as were previously presented with respect to independent claim 21.
App. Br. 18-25. These arguments are not deemed persuasive. Appellants
also dispute a limitation unique to claim 28, i.e., the previously discussed
crotch enhancer volume being structured “without the pudendal cleft
associated with the human female external genitalia simulated thereon.”
App. Br. 25. Appellants contend this limitation is not present in the cited
art. App. Br. 25. However, the Examiner finds that “[p]roviding the desired
amount of detail in the prosthetic device/cup/enhancer volume would have
been a matter of design choice” (Ans. 5) and further that providing a “’non-
exaggerated pudendal cleft’ enhancer” “is an obvious modification of a
design modification that is only limited by the imagination of the user and
not allowable subject matter” (Ans. 15-16). The Examiner further finds that
“[o]ne of ordinary skill in the art would have had the skill and knowledge to
construct and design any prosthetic device of “enhancer volume
device/structure/pad to replicate any body part they desire with the extent of
detail they desire.” Ans. 8. Appellants do not show where the Examiner’s
findings are in error and accordingly, we sustain the rejection of claim 28.

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Claims 30 and 32
Claim 30 depends from claim 32 which depends from independent
claim 28. Claim 32 provides the additional limitation that the crotch
enhancer volume previously discussed is positioned within the garment “so
as to also overlay in the vicinity of the wearer’s authentic pudendal cleft.”
Claim 30 further requires that the enhancer volume is prevented from
shifting by means of a “fastener.” Appellants repeat the same arguments
with respect to independent claim 28 and also with respect to the perceived
lack of a fastener; but as discussed supra, these arguments are not
persuasive. App. Br. 25-26. Regarding the additional limitation of claim 32
(i.e., positioning the enhancer volume over the wearer’s authentic region),
the Examiner specifically finds that the Camel Toe device is “designed to
protect the female genitalia and to cover and disguise the female genitalia
volume during sports activities as desired.” Ans. 12. Appellants do not
persuade us that the Examiner’s findings are in error and accordingly, we
sustain the Examiner’s rejection of claims 30 and 32.

Claim 31
Claim 31 depends from claim 21 and includes the further limitation
that the crotch enhancer volume is of a material “taken from one of the
group consisting of polyurethane foam, sponge, foam, rubber material, soft
plastic, feathers, cloth, cotton, cotton fiber, leather and porous or non-porous
materials.” Appellants contend that none of these materials are present in
the cited art. App. Br. 26. We disagree. The Examiner has specifically
found that it “would have [been] known to construct the device of any
known materials to provide the best simulative genitalia effect.” Ans. 5.
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We note that the Camel Toe Advertisement relied on by the Examiner
clearly states that it is “Molded of durable teflon.” Appellants do not argue
that Teflon is not a “soft plastic” nor do Appellants argue that Teflon is not
“porous or non-porous materials” as claimed. Accordingly, Appellants’
contention that none of the claimed materials are present in the cited art is
not persuasive. We sustain the rejection of claim 31.

DECISION
The rejection of claims 21, 23-26, 28 and 30-32 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).

AFFIRMED

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