Ex Parte Rana et al

Patent Trial and Appeal Board

Aug 21, 2017

10331790 (P.T.A.B. Aug. 21, 2017)

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.
10/331,790 12/30/2002 Amar Pal Singh Rana 6783
122641 7590
Amar Pal Singh RANA
1465 S. Mary Avenue
SunnyVale, CA 94087
EXAMINER
HALE, GLORIA M
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
08/21/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMAR PAL SINGH RANA and NIRMAL SINGH
Appeal 2015-005927
Application 10/331,79c1
Technology Center 3700
Before JEFFREY A. STEPHENS, CARL L. SILVERMAN, and
FREDERICK C. LANEY, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 21, 23—26, 28, and 30-32, which constitute all the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b). An oral
hearing was held on August 7, 2017.
We affirm-in-part.
1 The real party in interest is identified as Dr. Amar Pal Singh Rana and
Nirmal Singh. App. Br. 2.
Appeal 2015-005927
Application 10/331,790
STATEMENT OF THE CASE
Appellants’ invention relates to a female crotch enhancing article.
Abstract; Spec. Tflf 2, 18. Claim 21 is exemplary of the subject matter on
appeal:
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.
App. Br. 67 (Claims Appendix).
REJECTION
Claims 21, 23—26, 28, and 30-32 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Mayer et al. (US 3,295,530; iss.
Jan. 3, 1967) (“Mayer”) in view of Tatro (US 4967768; iss. Nov. 6, 1990)
and the Camel Toe Cup Advertisement.2 Final Act. 2—6.
2 In a prior Board decision (“Prior Board Decision”), the “Camel Toe Cup
Advertisment” is further identified as: “The Camel Toe Cup Advertisement;
Oct. 24, 2002; at www.cameltoe.net/cameltoecup.htm; see the Wayback
machine results from www.waybackmachine.com.” See Board Decision
(Appeal 2010-009532 (PTAB Mar. 28, 2013); Application 10/331,790), Page
3.
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Application 10/331,790
ANALYSIS
Claims 21, 23—26, 28, and 30-32 of parent application 10/331,790
(“Parent Application”) were previously rejected by the Examiner over
Mayer, Tatro, and the Camel Toe Cup Advertisment. See Parent
Application, Final Act. 2-4; Ans. 2—16. This rejection was affirmed by the
Board (“Prior Board Decision”) of March 28, 2013. Final Act. 2; Prior
Board Decision, page 14.
In the current appeal, Appellants present the same previously rejected
claims and additionally file a 37 CFR § 1.131 Declaration intended to
remove the Camel Toe Cup reference. App. Br. 2—14; Reply Br. 2—92.
Appellants argue the Examiner errs in finding the Declaration is inadequate
because, according to Appellants, the description and photos in the
Declaration are sufficient to remove the Camel Toe Cup reference, and
thereby obviate the rejection of the pending claims. App. Br. 11—13; Reply
Br. 5-6.
Appellants also present arguments previously considered by the
Examiner and addressed in the Prior Board decision. For example,
Appellants argue the Examiner’s reliance on the way back machine for the
effective date of the Camel Toe Cup reference is improper and the
Examiner’s characterization of the invention as “Female Genitalia
Prosthetic” is incorrect because the definition of “prosthetic” is “an artificial
device to replace or augment a missing or impaired part of the body” and
“[njowhere in our claims, we have missing or impaired part of a body.”
App. Br. 9.
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Application 10/331,790
The Examiner finds the § 131 Declaration (filed December 16, 2013)3
was not convincing to show reduction to practice and conception as it does
not provide a nexus between the claimed invention and what is disclosed in
the Declaration. Ans. 3—5; Final Act. 2—5. In particular, the Examiner finds:
[T]he figures/photographs in the Declaration also do not show what
appellant is claiming such as the pockets or double layers of material in
the crotch area of each of the shown garments to hold the “human
female genitalia crotch enhancer volume” as claimed in claims 21 and
28. Also, the claimed “human female genitalia crotch enhancer
volume” is also not shown in the figures/photos as either being in the
garments or outside of the garments or separate therefrom.
[TJherefore, it is not clear that the invention was actually conceived on
May 15, 2001 as stated by appellant in their Declaration under 35 USC
1.131. The photos also do not show the pad or the “exaggerated
contours and curves of the human female genitalia” as claimed. The
placement location of the enhancer in “the outer crotch layer and inner
cloth layer of the human female garments’ crotch” or “on the body
facing side of the female garment crotch by sewing or mechanical
means or by adhesive means” or by “Securing the separate and integral
human female enhancer volume” is not clearly seen in the photos
whether enlarged by the computer or not. Therefore, the nexus between
what is shown in the Declaration photos and what is claimed is not seen.
The written explanation on page 1 of the Declaration describes a
garment with an enhancer article that provides the exaggerated contours
and curves of a human female genitalia that is attached to an outer or
undergarment by different attachment means listed therein. However,
even though appellant then refers to the photos/figures on the second
page of the Declaration as showing such structure, this structure is not
clearly seen in the photos/figures and is not properly described in the
3 A second § 131 Declaration, filed June 10, 2014, intended to correct format
issues in the first Declaration was not entered because the Examiner stated,
even if the format were correct, it was not proper to overcome the prior art
rejections. Advisory Act. 2.
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Appeal 2015-005927
Application 10/331,790
photos/figures in enough detail so that a person viewing it can see what
is claimed in appellant’s claims.
Therefore, the Declaration does not show the “conception” of the
invention or its reduction to practice as testified by appellant in their
Declaration.
Ans. 3—5.
Since Appellant has not been able to nullity the date of the Camel Toe
Cup Advertisement reference, has also not shown a proper reduction to
practice or clear conception of their invention on a date prior to the
Camel Toe Cup Advertisement reference date, the affirmed rejections
still stand.
Id. at 6—7.
The Examiner finds Appellants’ arguments that the wayback machine
is incorrect or does not properly show the dates that the Camel Toe Cup
Advertisment was placed on the web are unsupported by evidence, and notes
that the Examiner’s findings are affirmed by the Prior Board decision. Ans.
5—6 (citing Prior Board Decision; Appellants’ submission of May 2, 2013;
Non-final Rejection 3—8). In particular, based on the wayback machine, the
Examiner finds October 24, 2002 as the date of the Camel Toe Cup
Advertisment (prior to Appellants’ filing date of December 30, 2002), and
the Board affirms this finding. See Prior Board Decision 3—5.
We agree with the findings of the Examiner and adopt the Prior Board
Decision regarding the effective date of the Camel Toe Cup Advertisment as
October 24, 2002, and find Appellants’ arguments unpersuasive.
Regarding the Examiner’s use of the term “prosthetic,” we adopt the
Prior Board Decision finding Appellants’ argument unpersuasive and agree
with the Examiner’s finding “that when Appellants’ device is placed within
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Application 10/331,790
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.”
Prior Board Decision 5—6 (citing Parent Application Ans. 6).
Regarding claims 21, 23, and 25, we are persuaded the combination of
Declaration handwritten text and photos shows the reduction to practice of
the claimed invention. In particular, the Declaration sets forth a showing of
facts that, in character and weight, establish prior to the effective date of the
Camel Toe Advertisment (October 24, 2002), reduction to practice of the
invention. See 37 CFR § 1.131 (b). Specifically, the handwritten text
describes the claim elements, the photos additionally show the various
articles of clothing, and the photo identified as “Panty” shows the claimed
“female genitalia crotch enhancer volume is structured . . . .” See
Declaration (handwritten text and also typewritten text); App. Br. 73—74.
The Declaration is dated May 15, 2001, signed by the named inventors, and
includes an acknowledgment by Indian authority, dated May 15, 2001.
In view of the above, the Camel Toe Cup Advertisment is not a proper
reference and, therefore, we do not sustain the rejection of claims 21, 23, and
25.
Regarding claims 24, 26, 28, 30, 31, and 32, we are not persuaded by
Appellants’ arguments regarding the Declaration and agree, instead, with the
findings of the Examiner. These claims recite additional limitations that are
not adequately shown in the Declaration text and photos, discussed supra,
and Appellants do not present arguments that the Declaration supports these
claims. For example: claim 24 recites the crotch enhancer volume has “a
soft absorbent material;” claim 26 recites “the crotch enhancer volume is
formed of a colored material;” independent claim 28 recites the crotch
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Appeal 2015-005927
Application 10/331,790
enhancer volume “without the pudendal clef;” claims 30 and 32 depend from
claim 28, and dependent claim 31 specifies the crotch enhancer volume
material. The Declaration is inadequate for these claims as it does not set
forth a showing of facts that, in character and weight, establish prior to the
effective date of the Camel Toe Cup Advertisment, reduction to practice of
the invention, or conception of the invention prior to the effective date of the
Advertisment coupled with due diligence prior to the effective date to a
subsequent reduction to practice or to filing of the application. See 37 CFR
§ 1.131(b).
In view of the above, we agree with the Examiner that the Camel Toe
Cup Advertisement is prior art to these claims and we adopt the Prior Board
Decision 35 U.S.C § 103(a) affirmance of the rejection of claims 24, 26, 28,
and 30—32. Prior Board Decision 10—14.
Therefore, we sustain the rejection of claims 24, 26, 28, and 30-32.
DECISION
We affirm the Examiner’s decision rejecting claims 24, 26, 28, and
30-32.
We reverse the Examiner’s decision rejecting claims 21, 23, and 25.
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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