PTO rejects
Proposed underwear patent;
“Borat” was there first

The U.S. Patent and Trademark Office has rejected a patent application for a type of male underwear on the grounds that a swimsuit worn by Sacha Baron Cohen’s “Borat” character constitutes prior art.

US Pat. Application 12071878 was filed in February 2008 for the following invention:

The scrotal support garment includes a fabric material that forms a cup to support a wearer’s scrotal sack and contents thereof. The cup has a wide upper end that tapers to a narrow lower end. An elongated thong extends from the lower end of the cup.

The invention is described as a medical device, intended to address the following conditions:

Diseases such as penile cancer, testicular cancer, or the like and medical conditions resulting from a vasectomy, penectomy, or similar surgery can cause the male scrotum to swell or enlarge to an abnormal size. An enlarged or swollen scrotum is usually very painful and can render such simple activities as walking unbearable.

In the non-final Office Action, the patent examiner provided annotated front and rear views of “Borat” wearing a garment remarkably similar to the drawing of the claimed invention, albeit without the invention’s “length adjusting means” – e.g., buckles.

The annotations included a label to show that the “bifurcated junction” claimed by the invention also appears on the Borat garment.

The non-final rejection occurred last fall, but the applicant recently requested an extension of time to respond.

According to the Manual of Patent Examining Procedure (MPEP) 2122, “In order to constitute anticipatory prior art, a reference must identically disclose the claimed [invention], but no utility need be disclosed by the reference.”

Further, MPEP 2125 states:

Drawings and pictures can anticipate claims if they clearly show the structure which is claimed… The origin of the drawing is immaterial… The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art.

Since the Borat film (the full title of which is Borat:  Cultural Learnings of America for Make Benefit Glorious Nation of Kazakhstan) was released in 2006, more that 12 months before the filing date of the “scrotal support” patent application, it qualifies as prior art.

This is not the first time Hollywood had been used as prior art: as previously reported in this blog, Samsung has argued that Apple’s iPad was similarly anticipated by a tablet shown in the 1969 movie 2001:  A Space Odyssey.

The rejected underwear patent application is available here.

Borat swimsuit shots can be found here and here.

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