UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`PANTIES PLUS, INC.,
`Petitioner,
`v.
`
`BRAGEL INTERNATIONAL, INC.
`Patent Owner.
`
`U.S. Patent No. 7,144,296
`Issue Date: December 5, 2006
`Inventors: David E. Chen, Jasper Chang, Alice Chang
`
`Title: ATTACHABLE BREAST FORM ENHANCEMENT SYSTEM
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`
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`Case Number: To Be Assigned
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,144,296 PURSUANT TO 35 U.S.C. §§ 311 ET SEQ.
`AND 37 C.F.R. § 42.100 ET SEQ.
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`I. NOTICE OF REAL-PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(B)(1) .......... 1
`II. NOTICE OF RELATED MATTERS UNDER 37 C.F.R. § 42.8(B)(2) ........................ 1
`III. NOTICE UNDER 37 C.F.R. § 42.8(B)(3) AND (B)(4) ................................................... 2
`IV. PAYMENT OF FILING FEE UNDER 37 C.F.R. § 42.103 .......................................... 2
`V. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) .................................... 2
`VI. STATEMENT OF PRECISE RELIEF REQUESTED PER 37 C.F.R. § 42.104(B)(1)-
`(2) 3
`VII. INTRODUCTION ............................................................................................................ 3
`VIII.
`BACKGROUND ....................................................................................................... 5
`A. THE ‘296 PATENT ........................................................................................................ 5
`1.
`The Specification of the ‘296 Patent ............................................................................................................ 5
`2.
`Challenged Claims of the ‘296 Patent ......................................................................................................... 9
`B. PROSECUTION HISTORY OF THE ‘296 PATENT AND ITS PARENT ................ 10
`C. NEW QUESTIONS OF PATENTABILITY ............................................................... 17
`D. THE SCOPE AND CONTENT OF THE PRIOR ART ............................................... 18
`1.
`Backless, strapless bras with connectors were known. .................................................................... 18
`2.
`Silicone breast forms with pressure sensitive adhesive were known ......................................... 21
`3.
`Bra Center Connectors Were Known ........................................................................................................ 23
`E. PERSON OF ORDINARY SKILL IN THE ART (“POSITA”) .................................. 23
`IX. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) .................................. 24
`X. ANALYSIS ...................................................................................................................... 26
`A. GROUND 1: CLAIMS 1, 2 AND 5 ARE RENDERED OBVIOUS UNDER 35 U.S.C.
`§ 103 OVER LUCKMAN IN VIEW OF DAVIS. ............................................................... 26
`1.
`Claim 1 is invalid. .............................................................................................................................................. 26
`2.
`Claim 2 is invalid. .............................................................................................................................................. 30
`3.
`Claim 5 is invalid. .............................................................................................................................................. 32
`4.
`Combination of Luckman and Davis is Obvious .................................................................................. 33
`B. GROUND 2: CLAIMS 1, 2, AND 5 ARE RENDERED OBVIOUS UNDER 35 U.S.C.
`§ 103 OVER VALENTIN IN VIEW OF CHEN. ................................................................ 37
`1.
`Claim 1 is invalid. .............................................................................................................................................. 37
`2.
`Claim 2 is invalid. .............................................................................................................................................. 41
`3.
`Claim 5 is invalid. .............................................................................................................................................. 42
`4.
`Combination of Valentin with Chen is Obvious .................................................................................... 42
`C. GROUND 3: CLAIMS 1, 2 AND 5 ARE RENDERED OBVIOUS UNDER 35 U.S.C.
`§ 103 OVER NOBLE IN VIEW OF MULLIGAN AND HEDU. ....................................... 46
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`TABLE OF CONTENTS
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`Claim 1 is invalid. .............................................................................................................................................. 46
`1.
`Claim 2 is invalid. .............................................................................................................................................. 50
`2.
`Claim 5 is invalid. .............................................................................................................................................. 51
`3.
`Combination of Noble with Mulligan and Hedu is Obvious ............................................................ 52
`4.
`XI. SECONDARY CONSIDERATIONS ............................................................................ 55
`XII. CONCLUSION ............................................................................................................... 61
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`1.
`2.
`3.
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`4.
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`Claim 1 is invalid. ..............................................................................................................................................46
`Claim 2 is invalid. .............................................................................................................................................. 50
`Claim 5 is invalid. .............................................................................................................................................. 51
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`Combination ofNoble with Mulligan and Hedu is Obvious............................................................ 52
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`XI. SECONDARY CONSIDERATIONS .......................................................................... ..55
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`XII. CONCLUSION ............................................................................................................. ..61
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`Exhibit
`1001
`1002
`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
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`1018
`1019
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`1020
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`1021
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`EXHIBIT LIST
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`
`Description
`U.S. Patent No. 7,144,296 (“the ‘296 Patent”)
`Declaration of Karin Yngvesdotter (“Karin Dec.”)
`Prosecution History of the ‘296 Patent (App. Ser. No. 11/053,211),
`11/1/2005 Office Action
`Prosecution History of the ‘296 Patent (App. Ser. No. 11/053,211),
`1/23/2006 Amendment
`Prosecution History of the ‘296 Patent (App. Ser. No. 11/053,211),
`4/21/2006 Notice of Allowance
`Prosecution History of the ‘720 Patent (App. Ser. No. 10/159,251),
`12/31/2003 Final Office Action
`Prosecution History of the ‘720 Patent (App. Ser. No. 10/159,251),
`2/10/2004 Declaration of Commercial Success, Long Felt Need, and
`Copying Under 37 C.F.R. §1.132.
`Prosecution History of the ‘720 Patent (App. Ser. No. 10/159,251),
`2/5/2004 Amendment
`Prosecution History of the ‘720 Patent (App. Ser. No. 10/159,251),
`2/27/2004 Notice of Allowance
`CA Application No. 2,101,509 (“Luckman”)
`U.S. Patent No. 6,645,042 (“Davis”)
`U.S. Patent No. 6,231,424 (“Valentin”)
`U.S. Patent No. 5,755,611 (“Noble”)
`U.S. Patent No. 6,857,932 (“Chen”)
`U.S. Patent No. 5,922,023 (“Mulligan”)
`U.S. Patent No. 3,196,878 (“Hedu”)
`Memorandum of Points and Authorities in Support of Bragel
`International, Inc.’s Motion for Summary Judgment of Infringement,
`Bragel International, Inc. v. Styles For Less, Inc., et al., 8:15-cv-01756-R
`(8/11/2016).
`BLANK
`Select Portions from VideoTaped Deposition Transcript of Frances
`Harder, Bragel International, Inc. v. Charlotte Russe, Inc., et al., 2:15-cv-
`08364-R (9/21/2016).
`Claim Construction Order in Bragel International, Inc. v. Telebrands
`Corporation, Case No. 05-01141, Jan. 18, 2007.
`Memorandum Opinion and Order, Randi Black v. Ce Soir Lingerie Co.,
`iv
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`1022
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`1023
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`1024
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`Inc., Case No. 2:06-cv-544 (8/15/2008).
`Prosecution History of the ‘720 Patent (App. Ser. No. 10/159,251),
`2/26/2004 Interview Summary
`Prosecution History of the ‘296 Patent (App. Ser. No. 11/053,211),
`5/3/2005 Office Action
`Prosecution History of the ‘296 Patent (App. Ser. No. 11/053,211),
`7/12/2005 Patent Owner’s Response and Terminal Disclaimer
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`Notice of Real-Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
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`The real-party-in-interest for this Petition is Panties Plus, Inc. d/b/a PPI
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`I.
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`Apparel Group (“Petitioner”). No other entities or persons other than the
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`Petitioner has authority to direct or control Petitioner’s actions or decisions
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`relating to this petition. Petitioner is funding all of the fees and costs of this
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`petition.
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`II. Notice of Related Matters Under 37 C.F.R. § 42.8(b)(2)
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`Bragel International, Inc. (“Patent Owner”) filed a complaint alleging
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`infringement of the U.S. Patent No. 7,144,296 (“the ‘296 Patent”) in a lawsuit
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`against Petitioner in the following District Court cases: Bragel International, Inc.
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`v. Charlotte Russe, Inc. et al., 2:15-cv-08364 (CACD) and Bragel International,
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`Inc. v. Styles For Less, Inc. et al., 2:15-cv-01756 (CACD) (“Current Litigations”).
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`PPI was not added to these cases until January 26, 2016 (15-cv-08364) and March
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`2, 2016 (15-cv-01756).
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` The ‘296 Patent has also been asserted in at least the following lawsuits:
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`Bragel International, Inc. v. AGaci LLC, 2:15-cv-08439 (CACD); Bragel
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`International, Inc. v. E-Retail Society d/b/a Bra Society et al., 2:15-cv-07148
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`(CACD); Bragel International, Inc. v. Charlotte Russe, Inc., 2:14-cv-07691
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`(CACD); Bragel International, Inc. v. Remi Collections, LLC, 2:14-cv-02946
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`(CACD); Bragel International, Inc. v. Love Culture, Inc., 2:11-cv-04336 (CACD).
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`Other than the 2:15-cv-08364 (CACD) and 2:15-cv-01756 (CACD) civil actions,
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`Petitioner was not a party to any of these proceedings.
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`Petitioner submits that the grounds presented in this Petition are not
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`redundant. The Petition contains arguments regarding the patentability of the ‘296
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`Patent not previously presented to the United States Patent and Trademark Office.
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`III. Notice Under 37 C.F.R. § 42.8(b)(3) and (b)(4)
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`
`Lead Counsel
`
`Backup Counsel
`
`
`Sergey Kolmykov
`Kroub, Silbersher & Kolmykov PLLC
`305 Broadway 7th Fl.
`New York, NY 10007
`Tel: (212) 323-7442
`Email: skolmykov@kskiplaw.com
`(Reg. No. 47,713)
`
`Gaston Kroub
`Kroub, Silbersher & Kolmykov PLLC
`305 Broadway 7th Fl.
`New York, NY 10007
`Tel: (212) 323-7442
`Email: gkroub@kskiplaw.com
`(Reg. No. 51,903)
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`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney has been filed with
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`this Petition. Petitioner consents to electronic service by email at:
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`skolmykov@kskiplaw.com, gkroub@kskiplaw.com, info@kskiplaw.com.
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`IV. Payment of Filing Fee Under 37 C.F.R. § 42.103
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`A fee set forth in 37 C.F.R. § 42.15(a) accompanies this petition.
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`V. Grounds For Standing Under 37 C.F.R. § 42.104(a)
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`Petitioner hereby certifies that the patent for which review is sought is
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`available for inter partes review and that the Petitioner is not barred or estopped
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`from requesting an inter partes review challenging the patent claims on the
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`grounds identified in the petition. Petitioner was served with a complaint in Case
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`No. 2:15-cv-08364 on April 5, 2016, and Petitioner was served with the complaint
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`in Case No. 2:15-cv-01756 on March 17, 2016.
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`VI. Statement of Precise Relief Requested Per 37 C.F.R. § 42.104(b)(1)-(2)
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`Petitioner respectfully requests that claims 1, 2, and 5 of the ‘296 Patent be
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`cancelled based upon the following grounds of unpatentability:
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`Ground
`Ground 1
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`‘296 Claims
`1, 2 and 5
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`Ground 2
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`1, 2 and 5
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`Ground 3
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`1, 2 and 5
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`Basis
`Rendered obvious under 35 U.S.C. §103 over
`Luckman, in view of Davis.
`Rendered obvious under 35 U.S.C. §103 over
`Valentin in view of Chen.
`Rendered obvious under 35 U.S.C. §103 over
`Noble in view of Mulligan and Hedu.
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`VII. INTRODUCTION
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`This is a textbook obviousness case, where the prior art teachings neatly fit
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`together like pieces of a puzzle to construct a predictable solution. The purported
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`solution is trivial and the Patent Owner has admitted that “the claims do not
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`contain complicated, technical language.” (Ex. 1017 at 7).
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`The ’296 Patent is directed to an alleged improvement to existing backless,
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`strapless bras. The purported invention of the ‘296 Patent, which was issued prior
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`to the Supreme Court’s KSR decision on obviousness, aims to solve a well-
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`recognized need in the prior art – to add breast cleavage and push-up enhancement
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`to a known “backless, strapless bra” – a problem that has a finite number of
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`specifically identified predictable solutions, and more particularly, the single most
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`simplistic solution of them all – to push breasts closer together, thus leading to a
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`predictable result of adding cleavage and push-up.
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`The purported invention consists of three trivial and familiar claimed
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`elements: a pair of silicone breast forms, a pressure sensitive adhesive layer and a
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`connector. All three elements were well known in the prior art before the priority
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`date of the ‘296 Patent and the Patent Owner admits this fact. All three elements
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`were utilized in existing designs of women’s bras or brassieres, with each
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`performing their intended function. All three elements were specifically utilized to
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`enhance the natural look and feel of a woman’s breast. The purported claimed
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`invention of the ‘296 Patent simply combines those familiar prior art elements with
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`each performing the same exact function they had been known to perform, thus
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`yielding no more than one would expect from such a combination. (Ex. 1002, ¶56)
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`That is why the Patent Owner was left with only one choice during
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`prosecution – to bring forward secondary considerations of non-obviousness. As
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`the evidence will show, the alleged secondary considerations have no nexus to the
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`claimed features, but are at best tied to the features long known in the prior art.
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`In sum, as the Petition will show, the state of the prior art, the simplicity and
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`availability of the components making up the claimed invention, and an explicit
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`need in the prior art for a backless, strapless bra with cleavage and push-up
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`support, compels a conclusion of obviousness as to the subject matter of each of
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`the challenged claims.
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`VIII. BACKGROUND
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`A. The ‘296 Patent
`1.
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`The Specification of the ‘296 Patent
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`The ‘296 Patent relates generally to an “attachable breast form enhancement
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`system”, and more specifically, to a “pair of breast forms” which “have a re-usable
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`pressure sensitive adhesive layer for adjoining to the user’s skin and are adjustably
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`adjoined together by a connector”. (Ex. 1001, 1:16-22). The connector allows the
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`user to “customize the amount of breast cleavage” and to provide a desired push-
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`up enhancement effect. (Id., 1:21-23). The patent explains that “women who…
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`desire larger, more shapely breasts” typically choose between two options: 1)
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`“using rudimentary externally worn articles, such as foam pads” or 2) “undergoing
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`a surgical operation to be fitted with a breast implant.” (Id., 1:27-33). Because of
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`the risks of surgery and the health dangers associated with silicone breast implants
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`themselves, “women…opt to use one of the many types of externally worn
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`articles” known in the prior art. (Id., 1:33-41). These “articles” can be “worn for
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`the purpose of either enhancing or replacing human breasts” that have been
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`removed as part of medical treatment, and are referred to as “breast forms.” (Id.,
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`1:45-49).
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`The specification of the ‘296 Patent acknowledges that breast forms in the
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`prior art included a “wide range of breast enhancers, breast inserts, and breast
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`prostheses.” (Id., 1:49-51). Breast forms “made from a silicone gel material that is
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`completely encased by plastic film material” were known to “look[] like a natural
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`human breast” when worn and to “feel natural to the user” and were thus
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`“popular”. (Id., 1:51-56).
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`At the same time as women desired breast forms for their enhancement
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`qualities, there were shortcomings with traditional bras, particularly when wearing
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`a “backless dress or a halter top,” for example. (Id., 1:63-65). Thus, as the
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`specification makes clear, there were “backless, strapless bras” in the prior art,
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`including those that “used non-permanent adhesives, such as a disposable double-
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`sided tape, to secure the bra to the user”. (Id., 1:65 – 2:1).
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`But the “known backless, strapless bras … provided limited means for
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`enhancing breast size and shape,” and suffered from two purported problems: 1)
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`those with “full-size cups” were “not designed to easily accommodate a breast
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`form” and 2) they did not “use an adhesive that allows the user to easily remove
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`and re-use the bra”. (Id., 2:1-7).
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`In response to these purported problems with known backless, strapless
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`bras, the ‘296 Patent suggests a “system that provides the benefits of a breast form,
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`yet also the benefits of a backless, strapless bra”. (Id., 2:9-10). To improve
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`performance, the system would include a “permanent and re-usable adhesive that
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`allows the user to position the breast forms…without concern of…shifting from
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`that position”. (Id., 2:12-14). Additionally, the “system should have means for
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`pushing-up the breasts and enhancing breast cleavage”. (Id., 2:14-16).
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`The ‘296 Patent describes breast forms that ostensibly incorporates those
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`suggested improvements. Fig. 1 illustrates a “breast form system having a pair of
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`breast forms adjoined by a connector” according to the purported invention of the
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`‘296 Patent (Id., 2:34-35; Fig. 1):
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`The ‘296 Patent teaches that the “breast forms have an interior surface with
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`a pressure sensitive adhesive layer that adjoins to the user’s breasts”. (Id., 2:66-
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`3:1). This adhesive layer “can be a permanently grown pressure sensitive
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`adhesive” that adheres more strongly to the breast forms than they cohere to the
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`user’s breasts when worn. (Id., 3:1-4). A connector, which “adjoins the separated
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`breast forms by attaching to the inner sides of the breast forms” can be used to pull
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`together the user’s breasts to create the desired cleavage effect. (Id., 3:4-5). By
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`adding the “pressure sensitive adhesive layer” and the “connector”, the “breast
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`forms system allows a user to eliminate the use of traditional bras”. (Id., 3:10-11).
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`Instead, the patent teaches that the user can attach the breast forms directly to their
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`breasts and use the connector to both adjoin them and create a cleavage effect as
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`desired. (Id., 3:10-25). The ‘296 Patent further suggests “the placement of the
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`connector…will impact the degree of cleavage and push up enhancement.” (Id.,
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`3:54-56). The ‘296 Patent acknowledges that “silicone gel encased between
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`thermoplastic film material” is not a novel feature and provides alternative breast
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`form materials, including “any liquid, air, or gel encased by any foam, plastic,
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`rubber, fabric or molded unwoven fiber material,” expressly stating that “a wide
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`range of materials, structures, and sizes are within the scope of the breast forms 12
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`for purposes of this invention.” (Id., 4:1-8; 1:51-53).
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`Ultimately, the ‘296 Patent purports to provide “a replacement for the
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`traditional bra”, where users are able “to customize the shape and size of their
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`breasts, as well as their breast cleavage and push-up enhancement”. (Id., 7:49-52;
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`3:21-24). The ‘296 Patent’s “breast forms system” can be worn by the user
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`“without needing any other type of bra”. (Id., 7:55-57). What purportedly
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`distinguishes the invention from then “currently available bras and enhancement
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`systems” is “[t]he presence of both the pressure sensitive adhesive layer and the
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`connector” on the breast forms. (Id., 7:57-60). But those two purportedly novel
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`characteristics were well-known in the prior art, and one of ordinary skill in the art
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`would have found their inclusion on existing breast forms an obvious approach to
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`addressing the purported and well recognized problems in the prior art.
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`2.
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`Challenged Claims of the ‘296 Patent
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`Claim 1 recites:
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`[1.a] An improved backless, strapless breast form system to be worn in
`place of a traditional bra, comprising:
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`[1.b] a pair of breast forms, wherein each breast form comprises: a volume
`of silicone gel encased between thermoplastic film material;
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`[1.c] a concave interior surface facing towards a user's breast having a
`pressure sensitive adhesive layer for securing the breast form to the user's
`breast; and
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`[1.d] a connector adapted to adjoin the breast forms together, wherein the
`connector is positioned between inner sides of each of the breast forms.
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`The challenged claims of the ‘296 Patent are directed to “a pair of breast
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`forms,” comprising “a volume of silicone gel encased between thermoplastic film
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`material,” with “a pressure sensitive adhesive layer” on “a concave interior
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`surface” of the breast form to secure the breast form to the user’s breast, and a
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`“connector … positioned between inner sides of each of the breast forms” so that
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`the breast forms can be adjoined together. (Ex. 1001, Claim 1). Challenged claims
`9
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`2 and 5 depend from independent challenged claim 1, and add that the connectors
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`“are adapted to cooperatively engage” and “are permanently attached to the breast
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`forms,” respectively. (Id., Claims 2, 5).
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`As will be shown in this petition, any purported novel features of the
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`claimed breast forms were expressly disclosed in the prior art, and including those
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`features in the claimed breast forms was obvious. As such, the challenged claims
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`of the ‘296 Patent, which were allowed prior to the KSR decision on obviousness,
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`should never have been issued in the first place.
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`B.
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`Prosecution History of the ‘296 Patent and Its Parent
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`The ‘296 Patent issued from U.S. Patent Application No. 11/053,211 (“the
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`’211 Application”), filed February 7, 2005. The ‘211 Application purports to be a
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`continuation of U.S. App. No. 10/801,901, filed on March 15, 2004 and issued as
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`Patent No. 6,852,001 (“the ‘001 Patent”), which purports to be a continuation of
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`the U.S. App. No. 10/159,251, filed on May 31, 2002, and issued as Patent No.
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`6,758,720 (“the ‘720 Patent”). Thus, the earliest priority date for the ‘296 Patent is
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`not earlier than May 31, 2002.
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`Prosecution History of the ‘720 Patent
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`The prosecution record of the parent, the ‘720 Patent, is pertinent to the
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`discussion of the allowance of the ‘296 Patent. During the prosecution of the ‘720
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`Patent, the USPTO issued a Final Rejection on December 31, 2003, rejecting
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`multiple claims under 35 U.S.C. 102(b) as being anticipated by Noble (U.S. Patent
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`No. 5,755,611) (“Noble”). The Examiner stated:
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`In regard to claims 1, 2, 7, 16, 20-23, 26, 28 and 29 Noble et al. discloses a
`backless, strapless bra (22) comprising a pair of bra cups (22) with an
`interior surface (38) which comprises pressure sensitive adhesive layer
`(46, 48) to adhere the bra to the user’s skin and the connector (50) as
`broadly claimed. The adhesive of the adhesive layer would inherently seep
`into the crevices of the fabric used (i.e. within the knit of the tricot fabric)
`and would therefore be incorporated within the interior surface or fabric
`which contracts the skin of the wearer. (See Noble et al, figures 18-21; col.
`5, line 51-col. 6, line 22). In regard to claim 2, Noble et al discloses the
`connector with the first and second portions decorative laced tying
`bands (5) as seen in figure 18 and col. 6, lines 3-6. In regard to claims 7
`and 26 the adhesive is permanently given as broadly claimed and defined
`in the specification since the adhesive would seep into the fabric covering
`layer next to the wearer’s skin and when removed from the wearers body
`remains on the pad and would therefore have the level of adhesion as
`claimed. Applicant’s own specification on pages 4-6 states that any type
`of padding material structure and adhesive attachment can be used.
`The preferred method being the silicone pad with adhesive “permanently
`grown” into the surface of the pad adjacent the skin of the wearer.”
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`(Ex. 1006 at 4-5; emphasis added)
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`The above mentioned rejected claims included all of the same features of the
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`challenged claims except the “volume of silicone gel encased between
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`thermoplastic film material” limitation. However, the Examiner took
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`Official Notice that it is well known that silicone gel materials are used in
`bra pads to add bulk to the wearer’s breasts. Accordingly, it would have
`been obvious to one having ordinary skill in the art at the time the invention
`was made to use a breast form of thermoplastic and fabric with silicone as
`disclosed in Huang [U.S. Pat. No. 6,823,820] and which is well known in
`the art.
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`11
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`(Ex. 1006 at 7; emphasis added).
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`The Examiner went out of her way to address the newly added claims and
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`stated that:
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`It is noted that the substitution of the Noble et al pad structure with the pad
`structure seen in the Dr. Leonard’s catalog, page 15, a copy of which is
`included in the present action, would also have been obvious, especially in
`view of applicant’s statements on pages 4-6 of the specification which
`indicate that any type of known pad can be used. It also would have been
`obvious to one of ordinary skill in the art at the time the invention was
`made to use silicone pad as seen in the Dr. Leonard’s catalog which is a
`silicone pad with a polyurethane film covering since the pad is well
`known in the prior art and known to give a desired aesthetic effect such as
`smoothness, a certain density and the replication of the texture of a human
`breast.”
`
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`(Ex. 1006 at 10; emphasis added).
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`Significantly, in response to the final rejection, the Patent Owner did not
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`challenge a single statement mentioned above by the Examiner, but instead
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`cancelled all rejected claims and submitted a Declaration of Commercial Success,
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`Long Felt Need, and Copying Under 37 C.F.R. §1.132. (Ex. 1007). The Patent
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`Owner also added new claim 30 which added two new limitations: (1) “a volume
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`of silicone gel encased between thermoplastic film material;” and (2)
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`“substantially the entire interior surface comprises a pressure sensitive adhesive
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`layer disposed thereon for adjoining the breast forms to the user’s breast.” (Ex.
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`1008). Notably, the second limitation is much narrower than the similar limitation
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`in the ‘296 Patent, which states “a concave interior surface facing towards a user’s
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`breast having a pressure sensitive adhesive layer for securing the breast form to the
`12
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`user’s breast.” Following a telephonic interview on February 26, 2004, (Ex.
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`1022), an agreement with respect to the new claim 30 with the new limitation was
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`reached and Notice of Allowance followed on February 27, 2004:
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`None of the cited references, alone or in combination, disclose a backless,
`strapless breast form system including a volume of silicone encased between
`thermoplastic film material with the concave interior surface facing the
`breasts of the wearer with substantially the entire interior surface having
`a pressure sensitive adhesive disposed from edge to edge and with
`connector positioned on the inner sides of the breast forms to connect the
`breast forms together as claimed in claim 30.
`
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`(Ex. 1009; emphasis added).
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`Of course, the new limitation of the adhesive substantially covering the
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`entire surface is absent from the presently challenged claims of the ‘296 Patent.
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`Furthermore, the Reasons for Allowance were silent as to the Secondary
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`Considerations of Non-Obviousness Declaration submitted by the Patent Owner.
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`(Ex. 1007).
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`Prosecution History of the ‘296 Patent
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`During the prosecution of the ‘296 Patent, the USPTO issued a first Office
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`Action on May 3, 2005, rejecting claims 1-9 under the doctrine of obviousness-
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`type double patenting over claims 1-7 of the ‘720 Patent and claim 1 of the ‘001
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`Patent. (Ex. 1023). In response, to obviate the rejections, on July 12, 2005, the
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`Patent Owner submitted a Terminal Disclaimer. (Ex. 1024).
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`On November 1, 2005, the USPTO issued a second Office Action rejecting
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`claims 1-9 as unpatentable under 35 U.S.C. §103(a). (Ex. 1003). Specifically,
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`challenged claims 1, 2 and 5 were rejected as being obvious over Noble et al. (U.S.
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`Pat. No. 5,755,611) in view of Mulligan (U.S. Pat. No. 5,922,023). (Id. at 2). The
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`Examiner stated that Noble disclosed a dual breast form brasserie system with a
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`connector and the forms were adhesively connected to the wearer’s breasts. (Id. at
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`2). The only feature that was missing from Noble, according to the Examiner, was
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`the volume of silicone gel encased between a thermoplastic film material. (Id. at
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`2). Mulligan, however, did disclose a breast form of silicone gel encased between
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`thermoplastic film material, and Examiner concluded that,
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`it would have been obvious to one having ordinary skill in the art at the time
`the invention was made to modify the specific breast form structure of
`Noble et al. with the teaching of Mulligan to construct it of known silicone
`and thermoplastic film structures in order to provide the breast structure and
`aesthetic appeal of the Mulligan form.
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`(Id. at 2).
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`With respect to claims 2 and 5, the Examiner also noted that the “connector
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`of Noble comprises a first tie portion and a second tie portion that cooperatively
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`engage and wherein the first and second portions are permanently attached to the
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`beast forms.” (Id. at 3).
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`In response, the Patent Owner submitted an Amendment, modifying the
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`term “a concave interior surface” to read “an interior surface shaped to fit over a
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`14
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`natural female breast.” (Ex. 1004 at 4). In remarks, the Patent Owner did not
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`dispute that all the elements of the pending claims were disclosed in the prior art.
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`Instead, the Patent Owner argued that “there is no motivation to combine” Noble
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`and Mulligan since the two “are directed to two very different purposes.” (Ex.
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`1004 at 4). Specifically, Patent Owner noted that because Mulligan relates to a
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`breast prosthesis, it was designed to replace a single surgically removed breast,
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`rather than both breasts and “[t]here is no suggestion in Mulligan et al. that its
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`prosthesis could be used as part of a bra.” (Id. at 4-5). As such, the Patent Owner
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`concluded that “there would be no motivation for one skilled in the art to modify
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`said breast prosthesis to include two prostheses linked together with a connector.”
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`(Id. at 5).
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`Patent Owner further argued that Noble’s bra cup covers only a portion of a
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`woman’s breast, and Mulligan was intended to replace an entire breast. As such,
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`Patent Owner argued, “Mulligan provides no guidance on how its prosthesis could
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`be modified to accomplish such a configuration.” (Ex. 1004 at 5-6).
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`The Examiner accepted Patent Owner’s arguments, but amended the claim
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`back to the originally filed language, and issued an Allowance. (Ex. 1005,
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`Examiner’s Amendment). Significantly, the Examiner applied the old “teaching,
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`suggestion, motivation” test in determining whether the invention was obvious in
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`15
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`view of the prior art. Such “rigid application” of the test was explicitly overruled
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`in the Supreme Court’s KSR decision:
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`The diversity of inventive pursuits and of modern technology counsels
`against confining the obviousness analysis by a formalistic conception of the
`words teaching, suggestion, and motivation, or by overemphasizing the
`importance of published articles and the explicit content of issued patents.
`In many fields there may be little discussion of obvious techniques or
`combinatio