Ex Parte Pritts

Patent Trial and Appeal Board

Jul 28, 2017

13551341 (P.T.A.B. Jul. 28, 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.
SPYNO-390A 7638
EXAMINER
MANIKEU, DANIELE
ART UNIT PAPER NUMBER
2872
MAIL DATE DELIVERY MODE
13/551,341 07/17/2012 James E. Pritts
7663 7590 07/28/2017
STETINA BRUNDA GARRED & BRUCKER
75 ENTERPRISE, SUITE 250
ALISO VIEJO, CA 92656
07/28/2017 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 JAMES E. PRITTS1
Appeal 2016-006175
Application 13/551,341
Technology Center 2800
Before LINDA M. GAUDETTE, MONTE T. SQUIRE, and
BRIAN D. RANGE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL2
Appellant appeals the Examiner’s decision to finally reject claims 1,
4, 6, 7, and 11—15. 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
1 Appellant identifies Spy Optic, Inc. as the real party in interest.
App. Br. 3.
2 In our Decision, we refer to the Specification filed July 17, 2017
(“Spec.”); the Final Office Action mailed September 3, 2015 (“Final Act.”);
the Appeal Brief filed December 4, 2015 (“App. Br.”); the Examiner’s
Answer to the Appeal Brief mailed April 6, 2016 (“Ans.”); and the Reply
Brief filed May 19, 2016 (“Reply Br.”).
Appeal 2016-006175
Application 13/551,341
The Claimed Invention
Appellant’s disclosure relates to an eyewear which disposes a
transparent material (e.g., lens or shield) in front of a person’s eyes to
provide protection and/or vision enhancement to the person. Spec. 2;
Abstract. The eyewear is said to selectively allow certain wavelengths of
light through the transparent material to preserve the therapeutic benefits
(i.e., possible physiological benefits) of sunlight to the person while
enhancing the colors humans are predisposed to prefer. Spec. 2.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief (App. Br.
13) (key disputed claim language italicized and bolded):
1. An eyewear for providing therapeutic effects while being
worn in sunlight, the eyewear comprising:
a lens which allows two ranges of therapeutic wavelengths
of light therethrough;
wherein an average light transmittance of the lens at the
wavelength range of 460nm to 510nm is 3 or more times the
average light transmittance of the lens at the wavelength range of
400nm to 450nm for therapeutically affecting a wearer’s
circadian rhythm;
wherein the average light transmittance of the lens for the
range of 460-5 lOnm is 30% or more than an average light
transmittance for the range of 520nm— 560nm, a maximum light
transmittance within the range of 460 nm to 510 nm being at
470nm to 495 nm to facilitate transmittance of a therapeutic
portion of the blue light through the lens and a minimum light
transmittance within the range of 540nm to 600nm being no less
than 0.2 luminous transmittance, light transmittance of the lens
starts to increase at or below 600 nm to facilitate transmittance
of a full spectrum of red light through the lens, and an average
light transmittance for the range between 650nm to 850mn is 2
or more times an average overall light transmittance of the lens
for perceptively darkening a scene viewed through the lens and
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Appeal 2016-006175
Application 13/551,341
stimulating cells of the wearer with red and near-infrared
wavelengths of light.
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Iori et al., US 2006/0033851 A1 Feb. 16,2006
(hereinafter “Iori”)
Nesty US 2011/0141432 Al June 16,2011
The Rejection
On appeal, the Examiner maintains the following rejection: Claims 1,
4, 6, 7, and 11—15 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Nesty in view of Iori. Ans. 2; see also Final Act. 3.
OPINION
The Examiner determines that the combination of Nesty and Iori
suggests eyewear satisfying all of the limitations of claim 1 and that the
combination would have rendered claim 1 obvious. Final Act. 4—5.
The Examiner finds that Nesty discloses the majority of the
limitations of claim 1, but that the reference fails to disclose wherein “light
transmittance of the lens starts to increase at or below 600 nm to facilitate
transmittance of a full spectrum of red light through the lens” and “an
average light transmittance for the range between 650nm to 850nm is 2 or
more times an average overall light transmittance of the lens for perceptively
darkening a scene viewed through the lens and stimulating cells of the
wearer with red and near-infrared wavelengths of light,” as recited in the
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Application 13/551,341
claim. Final Act. 4 (citing Nesty || 66, 68, Figs. 1 and 3). The Examiner,
however, relies on Iori for disclosing these missing limitations. Id.
In particular, the Examiner finds that Iori’s Figure 5 discloses a violet
lens wherein the light transmittance of the lens starts to increase at or below
600 nm and an average light transmittance for the range between 650 nm to
850 nm is 2 or more times an average overall light transmittance of the lens.
Id. at 4—5.
Based on the above findings, the Examiner concludes that:
It would have been obvious to one having an ordinary skill in
the art at the time of invention to combine the polarized optical
element of Iori with the eyewear structure of Nesty for the
purpose of providing an optical element which is both polarized
to reduce glare and the associated eye fatigue and blurred vision
when high intensity reflected light is present and which
provides at the same time the wearer with enhanced visual
acuity, especially an increased sensitivity to the red and blue
colors.
Final Act. 5 (citing Iori 131).
Appellant argues that the Examiner’s rejection of claim 1 should be
reversed because there would have been no motivation for one of ordinary
skill to incorporate the teachings of Iori into Nesty’s eyewear device. App.
Br. 8. In particular, relying on the Declaration of James E. Pritts,3 Appellant
argues that one of ordinary skill would have had no motivation to modify the
lens transmittance profile depicted in Figure 3 of Nesty so that light
transmittance starts to increase at or below 600 nm as suggested by Iori
because doing so would result in Nesty’s lens losing its aqua color tint and
3 Declaration of James E. Pritts (“Pritts Decl.”) dated July 28, 2015.
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Application 13/551,341
render the lens unsatisfactory for its intended purpose of highlighting yellow
tennis balls. Id. at 8—10.
Appellant’s argument in this regard is persuasive because the
Examiner has not provided adequate technical reasoning or identified by a
preponderance of the evidence why one of skill in the art would have had
reason to modify Nesty’s lens based on Iori’s teachings to arrive at the
claimed invention. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(holding that the examiner bears the initial burden of establishing a prima
facie case of obviousness.).
On the record before us, we concur with Appellant’s argument that
one of ordinary skill in the art would not have been motivated to combine
the teachings of Nesty and Iori because doing so would actually destroy the
intended purpose of Nesty of highlighting the appearance of yellow tennis
balls.
As the Appellant explains (App. Br. 7), Nesty’s eyewear device is
used to highlight the appearance of yellow objects (i.e., tennis balls) and
applies an aqua colored tint to the lens. Nesty, Abstract, || 1, 11, 14. In
particular, Nesty discloses that “an aqua colored tint is applied to the lens
body for highlighting an appearance of yellow colored objects to the user”
(Nesty, Abstract) and the “use of an aqua tinted lens helps the tennis player
to facilitate his game by increasing the intensity of, and hence, increasing the
tennis player’s perception and vision of a tennis ball and of boundary lines”
(id. in).
Nesty further discloses that the addition of the aqua tint to highlight
the ball and court marking lines, and the ability of the darker tint to reduce
glare from overhead light, improves the user’s ability to see the ball and
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Application 13/551,341
lines. Nesty | 55; see also id. 117 (disclosing that the aqua tinted lens “has
the advantage of both highlighting the tennis court marking lines and
brightening the intensity of the yellow tennis ball, while also being more
effective at blocking out glare and reducing the intensity of the brightness of
the sun in the sky when looking up”).
Moreover, we find that the analysis and testimony provided in the
Pritts Declaration further supports the Appellant’s argument (App. Br. 8—
10). See Pritts Decl. 7—11, Exhibits A, B, and C. In particular, as
evidenced by Exhibit B of the Pritts Declaration, we are persuaded that the
modified Nesty lens would not have an aqua color tint and, thus, would be
ineffective at highlighting the appearance of yellow tennis balls. As
Appellant explains (App. Br. 9—10), the modified Nesty lens’ transmittance
profile coordinates coincide with the center portion of the chromaticity
diagram, which represents the absence of tint or color (i.e., no aqua color
tint).
The Examiner also does not adequately discuss or provide a sufficient
technical explanation to refute Appellant’s proffered evidence that the
proposed modification would result in Nesty’s lens losing its aqua color tint
and render the lens unsatisfactory for its intended purpose of highlighting
yellow tennis balls. The fact that paragraph 51 of Iori mentions that
“reducing the amount of transmitted light within a relatively ample range
around [550 nm] will not significantly reduce the visibility of the
corresponding colors (green-yellow)” (Ans. 5), without more, does not
persuade us that one of ordinary skill would have had reason to combine the
teachings of Nesty and Iori to arrive at the claimed invention. See KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring “reasoning with
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Application 13/551,341
some rational underpinning to support the legal conclusion of obviousness”)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner’s assertion that “enhancing the transmittance rate of
Nesty at or below 600 nm . . . will not in any way destroy the teaching of
Nesty” (Ans. 3 4) is largely conclusory and, without more, insufficient to
sustain the Examiner’s rejection. Kahn, 441 F.3d at 988 (holding “rejections
on obviousness grounds cannot be sustained by mere conclusory
statements”).
We, therefore, cannot sustain the Examiner’s determination that the
combination of Nesty and Iori suggests eyewear satisfying all of the
limitations of claim 1 and that the combination would have rendered claim 1
obvious. Because each of claims 4, 6, 7, and 11—15 depends from claim 1,
we also cannot sustain the Examiner’s rejection of these claims.
Accordingly, we reverse the Examiner’s rejection of claims 1, 4, 6, 7,
and 11—15 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Nesty and Iori.
DECISION
The Examiner’s rejection of claims 1, 4, 6, 7, and 11—15 is reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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