Lorelei Fay

Patent Trials and Appeals Board

Dec 30, 2019

14746622 - (D) (P.T.A.B. Dec. 30, 2019)

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.
14/746,622 06/22/2015 LORELEI FAY MISS101 4388
21658 7590 12/30/2019
SHAVER & SWANSON, LLP
P.O. BOX 877
BOISE, ID 83701-0877
EXAMINER
BRAVO, JOCELYN MARY
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
12/30/2019 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):
amy@shaverswanson.com
bob@shaverswanson.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LORELEI FAY

Appeal 2018-002532
Application 14/746,622
Technology Center 3700
____________

Before BIBHU R. MOHANTY, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–18. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appeal Brief does not identify a real party in interest,
per 37 C.F.R. § 41.37(c)(1)(i). The Specification identifies Lowen & Sons,
LLC, DBA Miss Concealed as the “Applicant.” Spec. 1.
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ILLUSTRATIVE CLAIM
1. A garment having a support pocket, said garment
comprising:
a clothing garment;
two lengths of rigid boning affixed to said garment
wherein said two lengths of boning comprise a first length of
boning and a second length of boning, wherein said first length
of boning and said second length of boning are affixed to said
garment and comprise a width between said first length of
boning and said second length of boning;
a length of material attached to said garment proximate to
said first length of boning and extending between said first and
said second boning and attached to said garment proximate to
said second length of boning, wherein said length of material
defines a pocket between said material and said garment.
REFERENCES
Name Reference Date
Yewer, Jr. (“Yewer”) US 5,591,122 Jan.7, 1997
Bass US 6,585,673 B1 July 1, 2003
Anquetil US 2009/0292230 A1 Nov. 26, 2009
Leyva US 2012/0255098 A1 Oct. 11, 2012

REJECTIONS
I. Claims 1–6, 8–10, and 16 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Yewer.
II. Claims 7, 13, and 14 are rejected under 35 U.S.C. § 103 as
unpatentable over Yewer and Levya.
III. Claims 11, 12, and 15 are rejected under 35 U.S.C. § 103 as
unpatentable over Yewer and Anquetil.
IV. Claims 17 and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over Yewer and Bass.
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FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
The Appellant argues that the Examiner erred in rejecting independent
claim 1, because Yewer does not teach the claimed “lengths of rigid
boning.” See Appeal Br. 5–6.2
For the disclosure of the claimed “lengths of rigid boning,” the
Examiner relies upon Yewer’s “strips of batting 32” that “provide vertical
stiffness in the body 16” of an abdominal support belt. See Final Action 4
(citing Yewer, col. 3, ll. 17–22, Figs. 2–3).
According to the Appellant, “boning” and “batting” are familiar terms
in the art of garment design and manufacture, having distinct and different
meanings:
In Yewer, what the examiner sets forth as being “rigid boning”
is in fact batting and not boning. Applicant’s claims
specifically include the term, “rigid boning.” According to the
Merriam-Webster online dictionary, batting is “layers or sheets
of raw cotton or wool or of synthetic fibrous material used for
lining quilts or for stuffing, or packaging; also: a blanket of
thermal insulation (as fiberglass)”; whereas boning is defined as
“a strip of material (as whalebone or steel) used to stiffen a
garment (as a corset).” This difference is fundamental to the
function of the garment, as batting is not rigid as required by
the term “rigid boning”.
Id. at 5. The Appellant further argues that a person of ordinary skill in the
art would not equate “rigid boning” with “batting,” because these two terms

2 We regard the page bearing the title “Appeal Brief” as the first page
thereof, with the following pages numbered consecutively thereafter.
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“have different meaning[s].” Id. at 6. More particularly, “[r]igid boning is
stiff, . . . while batting is not stiff.” Id.
In response, the Examiner states:
Appellant's disclosure may suggest a different structure or
material for the strips of boning; however, Appellant has not
defined the structure of the rigid boning in the claims over that
of Yewer’s, such that one of ordinary skill in the art would not
include both traditional whalebone or steel boning and the
stiffening strips taught by Yewer within the scope of the claims
as currently presented. The claims do not restrict the scope of
the rigid boning to merely encompass traditional whalebone or
steel strips.
Ans. 5. The Examiner further states:
[A]s the disclosures and claims are written in English, and part
of the beauty of the English language is that there are many
different ways to describe the same thing. Furthermore, it is not
the Office’s position that the batting strips are absolutely and
exactly identical to the boning as disclosed by Appellant, but
rather that the Yewer’s batting strips, explicitly disclosed to act
as stiffening members and provide vertical stiffness to the
garment, are considered to be rigid boning, inasmuch as
claimed by Appellant. See at least pages 2-4 of the Final
Rejection mailed 2/9/17.
Id. at 6.
Taking issue with the Examiner’s position, the Appellant responds:
“words have meaning.” Reply Br. 2. “If all language in the English
language was capable of being substituted,” the Appellant contends, “then
words would be rendered either meaningless or their specific meaning would
be diluted”; “[i]ndeed, the beauty of the English language is that words do in
fact have meaning.” Id.
A dispute, such as the present one, involves matters of claim
construction. “During examination, ‘claims . . . are to be given their
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broadest reasonable interpretation consistent with the specification, and . . .
claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)). As the Federal Circuit has explained:
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is
not simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is “consistent with the
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997) (citation and internal quotation marks omitted); see also
In re Suitco Surface, 603 F.3d 1255, 1259–60 (Fed. Cir. 2010).
In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017). Sources for
claim construction may include intrinsic sources (such as the claims
themselves and the Specification), as well as extrinsic sources (such as
technical treatises and dictionaries). See Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582–84 & n.6 (Fed. Cir. 1996). Yet, “there is no magic
formula or catechism for conducting claim construction,” nor is there any
requirement to “consider[ ] any particular sources” or to “analyze sources in
any specific sequence, as long as those sources are not used to contradict
claim meaning that is unambiguous in light of the intrinsic evidence.”
Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005) (en banc).
Because “[t]he specification contains a written description of the invention
which must be clear and complete enough to enable those of ordinary skill in
the art to make and use it,” “the specification is always highly relevant to the
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claim construction analysis.” Vitronics, 90 F.3d at 1352. “Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.” Id.
The Appellant’s interpretation of the term “boning” is reinforced by
the intrinsic materials of claim construction. The Specification, for example,
states:
The stiffener used in this disclosure is also known to those
within the fabric industry as ‘boning’. . . . The bones can be
made of materials such as Plastic, German Plastic, Hoop Steel,
Spring Steel, Spiral Steel, Galvanized wire, Nylon, Polyester,
Polyester Webbing or other preferably non corrosive, thin,
flexible but ridged [sic, “rigid”] material. In specific detail, in a
preferred embodiment the bones structure used in a current
product for this disclosure is made of nylon.
Spec. ¶ 16.
Prior art references considered by the Examiner also constitute
intrinsic evidence that is available to aid in the construction of claim terms.
See V-Formation, Inc. v. Benetton Grp. SpA, 401 F.3d 1307, 1311–12 (Fed.
Cir. 2005) (construing claim language, in view of a prior art reference that
was of record in the prosecution of the patent-in-suit). In this regard, the
Levya and Anquetil references employ the term “boning” in the same
manner as the Specification. Levya describes a “boning segment” as being
“a plastic, nylon, polyester (e.g., polyester rods, such as Rigilene™) or steel
(e.g., steel spiral), or other flexibly rigid length.” Levya ¶ 27. Anquetil
describes “posterior boning element[s]” in a “lumbar support belt,” having
“two parallel bones” that “are flat elements made of an elastic material of the
spring steel type or composite material and are fitted into casings which, in
the example depicted, are stitched to the strip of elastic textile.” Anquetil
¶ 34.
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Although “boning” may employ a variety of materials, in addition to
bone, from which the term originates,3 all of the materials identified as
“boning” in the intrinsic evidence discussed above, as well as the dictionary
definition cited by the Appellant (see Appeal Br. 5) relate to rigid elongate
elements possessing a slight amount of elasticity. By contrast, “batting” —
as indicated by the dictionary definition cited (see id.) is characterized by its
softness, loft, and compressibility.
Further, even though Yewer employs “batting” to “provide vertical
stiffness” (Yewer col. 3, ll. 19–21), this implementation does not persuade
us that Yewer teaches the claimed “rigid boning” — particularly as the
nature of Yewer’s “vertical stiffness” is not described in a manner that can
be compared with the behavior of the materials identified as “boning.”
In view of the foregoing, we do not sustain the rejection of
independent claim 1, or any of claims 2–6, 8–10, and 16, depending
therefrom, under 35 U.S.C. § 102(a)(1). Likewise, we do not sustain the
rejection of dependent claims 7, 11–15, 17, and 18 under 35 U.S.C. § 103.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–10,
16
102(a)(1) Yewer 1–6, 8–10,
16
7, 13, 14 103 Yewer, Levya 7, 13, 14

3 “In the sixteenth century, bodices were sometimes made more rigid by
inserting whalebones along the front and sides.” Kara W. Swanson, Getting
a Grip on the Corset: Gender, Sexuality, and Patent Law, 23 Yale J.L. &
Feminism 57, 73 (2011).
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Application 14/746,622

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11, 12, 15 103 Yewer, Anquetil 11, 12, 15
17, 18 103 Yewer, Bass 17, 18
Overall Outcome 1–18

REVERSED