Ex Parte Clegg et al

Patent Trial and Appeal Board

Aug 25, 2017

13141997 (P.T.A.B. Aug. 25, 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.
13/141,997 06/24/2011 William Edwin Clegg 2008P01833WOUS 8766
24737 7590 08/29/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue LUKJAN, SEBASTIAN X
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Valhalla, NY 10595 ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
08/29/2017 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):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM EDWIN CLEGG
and MICHAEL EDWARD COLBAUGH
Appeal 2015-003818
Application 13/141,997
Technology Center 3700
Before JENNIFER D. BAHR, JAMES P. CALVE, and
ARTHUR M. PESLAK, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Action
rejecting claims 1—3, 5—10, 12, and 13. Appeal Br. 2. Claims 4, 11, and 14—
20 have been cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-003818
Application 13/141,997
CLAIMED SUBJECT MATTER
Appellants’ claims are directed to providing light therapy to a subject
to ameliorate light deficient disorders such as circadian sleep disorders and
circadian disruptions associated with jet lag and shift work. Spec. 3^4.
Claims 1 and 8 are independent. Claim 1 is reproduced below.
1. A sleep mask configured to provide light therapy to a
subject, the sleep mask comprising:
a shield configured to cover the eyes of a subject wearing
the sleep mask such that the shield provides a barrier between
ambient radiation and the eyes of the subject;
one or more radiation sources configured to emit
electromagnetic radiation, the one or more radiation sources
being carried by the shield, the one or more radiation sources
being directional and arranged on the shield such that, while the
sleep mask is installed in place on the head of the subject, the
one or more radiation sources emit radiation in one or more
beams directed in directions that are askew from the eyes of the
subject, the one or more radiation sources being side firing
sources; and
one or more radiation diffusers configured to receive the
one or more beams of radiation emitted by the one or more
radiation sources, and to diffuse the radiation emitted by the
one or more radiation sources to form one or more fields of
radiation, wherein the one or more radiation diffusers are
carried by the shield, and are positioned on the shield such that
the one or more fields of radiation are directed to the eyes of the
subject wearing the sleep mask.
REJECTION
Claims 1—3, 5—10, 12, and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hilburg (US 2006/0259100 Al, pub. Nov. 16, 2006) and
Goldman (US 5,923,398, iss. July 13, 1999).
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Appeal 2015-003818
Application 13/141,997
ANALYSIS
Appellants argue claims 1—3, 5—10, 12, and 13 as a group. See Appeal
Br. 4—14. We select claim 1 as representative, with claims 2, 3, 5—10, 12,
and 13 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that Hilburg teaches a sleep mask, substantially
as recited in claim 1, except for side firing radiation sources. Final Act. 4—5.
The Examiner found that Goldman teaches side firing radiation sources. Id.
at 5—6. The Examiner determined that it would have been obvious to modify
Hilburg by positioning radiation sources at 360 degrees around the periphery
of the eye, as Goldman teaches, to stimulate effects on the internal biological
clocks and achieve greater biological stimulus. Id. at 6; Ans. 11—12.
Appellants raise two principal arguments. First, Appellants argue that
Goldman is non-analogous art to the claimed invention. Appeal Br. 10. In
this regard, Appellants argue that the field of endeavor relates to sleep masks
configured to provide light therapy to a user while the user sleeps. Id. at 11.
Appellants argue that Goldman describes a pair of glasses to be worn while
the user is awake and active and therefore is not within Appellants’ field of
endeavor. Id. Appellants further argue that Goldman is not reasonably
pertinent to the problem addressed by Appellants of delivering light therapy
to a user while the user is asleep, going to sleep, or waking up because
Goldman is concerned with adjusting the circadian rhythm of a user while a
user is awake and active without interrupting the user’s normal daily activity
for therapy. Id. at 12. Asa result, Appellants argue that Goldman’s use of
light sources positioned perpendicularly from the periphery of the pupil is
not reasonably pertinent to the problem that Appellants were solving. Id.
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Application 13/141,997
We agree with the Examiner that Goldman is in the same field of
endeavor and reasonably pertinent to the problem confronted by Appellants.
Appellants disclose their field of endeavor as “the provision of light therapy
to a subject.” Spec. 13. As such, their device provides light therapy to a
subject. Id. J/f 4—12. Light therapy includes “shining light directly towards
a patient’s eyes while the patient is awake to alleviate or cure light deficient
disorders involving Seasonal Affective Disorder (SAD), circadian sleep
disorders and circadian disruptions associated with jet-lag and shift-work.”
Id. 14. The light therapy affects the circadian rhythms of subjects. Id. | 51.
Goldman provides light therapy by directing light into a user’s pupils
to stimulate a biological response without impairing the user’s vision.
Goldman, 1:16—19, 2:1—21, 3:56—63. Like Appellants, Goldman does so to
adjust or maintain the user’s circadian rhythm. Id. at 1:65—66, 3:56—59.
Like Appellants, Goldman uses light therapy to treat detrimental effects of
shift work, circadian shifting from jet travel, and SAD. Id. at 8:50-9:22.
Appellants describe the field of light therapy as including two types of
devices: (1) large floor or desk-mountable; and (2) head mountable devices.
Spec. 1 5. Appellants describe the problems with head mountable devices as
including the appearance when worn, a lack of features that allow them to be
used during sleep, and their emission of light beams at the eyes of a user in a
way that impacts the user’s comfort. Id. Tflf 5—6. Appellants use an opaque
barrier that excludes ambient radiation and radiation diffusors to address
these problems. Id. 7—10. Goldman teaches devices that can be worn
easily or included in eye wear with illumination elements that emit light
beams at an angle to a user’s eyes to enhance comfort and provoke a
biological response. Goldman, 2:10-37, 3:56—59, 4:7—13, figs. 2, 4.
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Appeal 2015-003818
Application 13/141,997
Appellants claim a sleep mask, but Appellants disclose that the sleep
mask is used while a user is asleep, in the process of going to sleep, and/or
waking from sleep. Spec. 126. As a result, Appellants’ sleep mask 10 may
include apertures 50 formed in shield 12 to enable the user to see through
shield 12 because “there may still be times when the subject would like to be
able to see (at least in some limited fashion) while wearing sleep mask 10.”
Id. 1 50, Fig. 7—9. Apertures 50 may provide limited sight to the subject. Id.
We find no clear intention by Appellants to exclude an embodiment
with apertures from the scope of claim 1, e.g., by reciting that the shield
provides a complete barrier to all ambient radiation. Providing such a light
therapy device that allows a user to see is a problem that Goldman addresses
with a head mountable device that allows users to see as they receive light
therapy and engage in daily activities. Goldman’s head mountable device
also treats circadian rhythm problems and enhances a user’s comfort as
discussed above. Goldman thus addresses the problems that Appellants
confronted and is reasonably pertinent to those problems.
Appellants also argue that it would not have been obvious to combine
Hilburg and Goldman because Goldman’s light treatment glasses are worn
while a person is awake to produce a color sensation that impacts a user’s
body clock and suppresses melatonin to keep a user awake, whereas Hilburg
obscures a user’s vision with an opaque structure of the sleep mask that does
not need to provide light to the user’s eyes as Goldman does. Appeal Br. 8—
9. Appellants argue that there is no reason to add Goldman’s features to
Hilburg so a user can see when a user is awake and active, because a user of
Hilburg’s device does not view the ambient environment through lenses as
in Goldman. Id. at 9; Reply Br. 5—6.
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Application 13/141,997
The Examiner’s reason for modifying Hilburg to include the side
firing radiation sources of Goldman is supported by rational underpinnings.
The Examiner proposes to do so in order to improve Hilburg’s device so it
will stimulate an effect on the internal biological clock. Final Act. 6. The
Examiner reasons that including Goldman’s side firing radiation sources on
Hilburg’s device will allow Hilburg to achieve a greater biological stimulus.
Ans. 11—12. These reasons are supported by express teachings in Goldman,
which teaches that the peripheral rays emitted by the side firing light sources
20 enter the cone’s inner segments obliquely to produce a color sensation
that stimulates biological signals to the internal biological clock and results
in melatonin suppression among other things. Goldman, 3:56—63, 4:7—29,
8:14—29. The improved biological stimulus can ameliorate the detrimental
effects of shift work, jet travel, and SAD. Id. at 8:50-9:22.
Appellants’ arguments that there is no reason to consider Goldman
absent hindsight (Appeal Br. 10) or that a skilled artisan would not have
been motivated to position light rays perpendicularly from the periphery of
the pupil (Reply Br. 5—6) are not persuasive because they do not address the
Examiner’s reasons for combining the teachings of Hilburg and Goldman as
set forth in the Final Action and Answer, which we have summarized above.
Thus, Appellants’ arguments do not apprise us of error in the Examiner’s
stated findings and determination of obviousness. See In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) (approving of Board’s practice as set forth in Ex
Parte Frye of requiring appellants to identify error in a rejection); Ex Parte
Frye, 94 USPQ 2d 1072, 1075—76 (BPAI 2010) (precedential) (a panel
reviews rejections for error based on the issues identified by an appellant).
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Moreover, Hilburg teaches a device that delivers light and color
therapies that can be combined very effectively with other therapies that
promote a patient’s welfare. Hilburg 19. Because Hilburg’s device is light,
portable, and fixable directly to a user’s head like snow goggles, it “can be
used in conjunction with any other therapeutic devices and in any physical
posture of the user.” Id. 110.
The Examiner proposes to do just that by adding Goldman’s side
firing radiation sources to Hilburg’s opaque mask to enhance the biological
stimulus that is achieved. Goldman teaches that this configuration allows
light to enter the eyes directly without impairing visual acuity. Goldman,
2:10-21, 3:64-4:6. Therefore, Goldman’s peripheral radiation sources can
be combined with Hilburg’s light therapy device without interfering with the
operation of Hilburg’s light therapy sources, which are oriented directly in
front of a user’s eyes. Hilburg || 31—33, Figs. 2—5. Hilburg thus provides
motivation to include other devices and treatment therapies, and Goldman
teaches how to do so without impeding operation of Hilburg’s device. In the
alternative, modifying Hilburg’s LEDs 13—15 to be side firing as taught by
Goldman would improve the ability of Hilburg’s device to stimulate greater
biological response as Goldman teaches. A skilled artisan does not have to
combine teachings of the prior art for the same reasons as an inventor in
order to render obvious a claimed invention. See KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418—19, 420 (2007) (it is error to look “only to the
problem the patentee was trying to solve”); In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006) (a skilled artisan need not be motivated to combine the prior
art for the same reason as an inventor).
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Application 13/141,997
Appellants also argue that the proposed combination would not
provide the alleged advantages of the light sources of Goldman because a
user would not be able to see through the mask of Hilburg and is asleep.
Reply Br. 5; Appeal Br. 9. This argument is not persuasive because the
effectiveness of Goldman’s device does not depend on the user’s ability to
see through the lenses. Rather, the effectiveness of Goldman’s device in
provoking enhanced biological responses depends on the Stiles-Crawford
effect of the second kind where peripheral rays enter the eye obliquely to
stimulate biological signals in the internal biological clock, as Appellants
recognize. Goldman, 4:7—13; see Appeal Br. 8. We find no requirement in
Hilburg that Hilburg’s device must be used only when a user sleeps or has
their eyes closed, and Appellants have not identified any such teaching. See
Appeal Br. 9. Instead, Hilburg teaches that light is directed to the eyes of a
user who can be in any physical posture. Hilburg || 3, 10. Thus, we are not
persuaded that Hilburg’s device must be used when a user sleeps or has their
eyes closed. As a result, Goldman’s side firing radiation sources would
enter a user’s eyes obliquely and stimulate their internal biological clock
while the user receives light therapy from Hilburg’s device. Goldman would
provide stimulation without impairing the user’s ability to receive light from
Hilburg’s LEDs 13—15. See Goldman, 5:4—17, 6:14—17, 8:26—33, Fig. 4.
Thus, we sustain the rejection of claims 1—3, 5—10, 12, and 13.
DECISION
We affirm the rejection of claims 1—3, 5—10, 12, and 13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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