BROWNMED, INC.,

Patent Trials and Appeals Board

Feb 13, 2020

14464762 - (D) (P.T.A.B. Feb. 13, 2020)

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.
14/464,762 08/21/2014 Ivan E. Brown P11149US00 8420
22885 7590 02/13/2020
MCKEE, VOORHEES & SEASE, P.L.C.
801 GRAND AVENUE
SUITE 3200
DES MOINES, IA 50309-2721
EXAMINER
DOUGLAS, STEVEN O
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
02/13/2020 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):
michelle.woods@ipmvs.com
patatty@ipmvs.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IVAN E. BROWN, TERYLE L. KOUNKEL, and
BRANDON RODRIGUEZ
____________

Appeal 2019-003586
Application 14/464,762
Technology Center 3600
____________

Before BIBHU R. MOHANTY, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.

MOHANTY, 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 to reject claims 1–6, 8, 9, and 12. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Brownmed, Inc.
(Appeal Br. 1).
Appeal 2019-003586
Application 14/464,762

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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to a therapeutic eyes mask
that provides pain relief with the application of vibratory therapeutics
(Spec., para. 1). Claim 1, reproduced below, is representative of the subject
matter on appeal.

1. A deformable compression eye mask, comprising:
a pair of fabric panels one of which contacts the periphery of a
user's eye cavity during use, each having an interior surface and an
exterior surface, joined to form a closed pouch;
a plurality of beads loosely filling said pouch; and
a plurality of electro-vibration motors mounted on the interior
surface of at least one of said panels, positioned to amplify vibration
generated by the motors around the periphery of the eye cavity of a
user's eyes during use, in the beads loosely filling said pouch.

THE REJECTIONS
The following rejections are before us for review:
1. Claim 12 is rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement and show
possession of the claimed invention.
2. Claims 1–6, 8, and 9 are rejected under 35 U.S.C. § 103 as
unpatentable over Koby (US 7,601,168 B2, iss. Oct. 13, 2009) and Lin
(US 2005/0256433 A1, pub. Nov. 17, 2005).
3. Claims 1–6, 8, 9, and 12 are rejected under 35 U.S.C. § 103 as
unpatentable over Koby and Barbera (US 2015/0224019 A1, pub. Aug. 13,
2015).

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Application 14/464,762

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FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

ANALYSIS
Rejection under 35 U.S.C. § 112, first paragraph
The Examiner has determined that claim fails to meet the
requirements of 35 U.S.C. § 112, first paragraph (Final Act. 2, 3, Ans. 6, 7).
Specifically the Examiner has determined that in claim 12 that the limitation
of “coin motors” is considered new matter (Final Act. 3).
In contrast, the Appellant argues that support is provided for the coin
motors in the drawings at lead lines 26–34 of Figure 3 (Appeal Br. 17, Reply
Br. 2). The Appellant also cites to the Specification disclosing using a 3.7 V
lithium battery (Appeal Br. 17). The Appellant also provides a Declaration
by Brandon Rodriguez which states that one of ordinary skill in the art
would recognize that the lead lines represent coin motors (Appeal Br. 17,
Reply Br. 3). The Appellant also argues that the Barbera reference at
paragraphs 50–52 specifically discloses using coin motors and that Figures 2
and 9 show similar circles (Appeal Br. 17).
We agree with the Examiner. An applicant shows possession of the
claimed invention by describing the claimed invention with all of its
limitations using such descriptive means as words, structures, figures,

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 14/464,762

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diagrams, and formulas that fully set forth the claimed invention. Lockwood
v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Here, it has not been shown that one of ordinary skill in the art would
recognize that the motors in lead lines 26–34 specifically included coin
motors. The Specification at page 3 for example only refers generally to
“motors 26–34” and not specifically to “coin motors”. Further, the drawings
at Figure 3 do disclose motors 26–34 as having a circular shape, but it is not
specifically disclosed that these are coin motors. The specific battery in the
cited in the Specification, the Shenzhen Jingkefka Electronics Co. Limited
3.7 volt lithium battery, has not been shown to be coin motor. While the
Appellant cites to the Barbera reference as disclosing coin motors in the
drawings at Figures 2 and 9, that Specification, in contrast to Appellant’s
Specification, also specifically disclosed in paragraphs 50–52 that coin
motors were used. The Declaration provided has been fully considered but
is not deemed persuasive, because it provides only opinion evidence that
does not overcome the deficiencies in what the Specification actually
discloses. The Declaration does not provide sufficient evidence that circles
specifically represent coin motors, and not merely motors in a generic
manner. For these above reasons, this rejection is sustained.

Rejection 35 U.S.C. § 103 under
Koby and Barbera
The Appellant argues that the rejection of claim 1 under 35 U.S.C. §
103 as unpatentable over Koby and Barbera is improper (Appeal Br. 5–9,
Reply Br. 1, 2). The Appellant argues that the prior art fails to show: a
motor mounted on the interior surface of eye mask, a plurality of beads
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loosely fitting in the pouch, and the motor positioned to amplify the
vibration, and the Appellant further argues that there is no motivation for the
cited combination (Appeal Br. 5–9).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 4–6, Ans. 3, 4).
We agree with the Examiner. Koby in Figure 1 has disclosed an eye
pillow 2 that is filled with beads 30 to provide relief to the eye and sinus
region. Barbera in Figure 9 and paragraphs 87–93 discloses an eye mask
with motors 30 that vibrate to provide therapeutic relief to the region. Here,
it would have been a predictable combination of familiar elements and
obvious to one of ordinary skill in the art to modify the eye mask of Barbera
to include the motors of Koby to provide vibratory therapeutic relief to those
regions. Further, in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
the Court stated that when considering obviousness that “the analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” When there
is a design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp.
See id. at 421. Here, one of ordinary skill in the art readily would have
inferred that the amount of beads used could be varied based on the desired
amount of vibration to be transferred. Similarly, one of ordinary skill in the
art would have readily inferred that mounting the motors closer to the inner
liner would transfer more vibrations if desired. For these above reasons, the
rejection of record for claim 1 under this grounds is sustained.
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With regard to the Appellant’s arguments regarding claim 3, the
location of the motors on the eye region would have been an obvious
modification if desired and readily inferred by one of ordinary skill in the art
if vibration to that region was desired. Accordingly, the rejection of this
claim is sustained.
With regards to the Appellant’s arguments regarding claim 6, the use
of a material, such as stretchable fabric in the device, would have been an
obvious modification and readily inferred by one of ordinary skill in the art
if the properties of a breathable, washable, fabric were desired in the
combination. Accordingly, the rejection of this claim is sustained.
The Appellant has provided the same arguments for the remaining
claims and the rejections of these claims is sustained as well as no specific
arguments have been presented for them.

Rejection 35 U.S.C. § 103 under
Koby and Lin
The Appellant argues that the rejection of claim 1 under 35 U.S.C.
§ 103 as unpatentable over Koby and Lin is improper (Appeal Br. 9–12,
Reply Br. 2). The Appellant argues that prior art fails to show: a plurality
of beads loosely fitting in the pouch, and the motor positioned to amplify the
vibration, and the Appellant further argues that there is no adequate rationale
for the cited combination, and that the combination would not be operational
(Appeal Br. 9–12).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 3, 4, Ans. 4–7).
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We agree with the Examiner. Koby in Figure 1 has disclosed an eye
pillow 2 that is filled with beads 30 to provide relief to the eye and sinus
region. Lin in Figures 5–13, discloses an eye mask 20 with motors 10 that
vibrate to provide therapeutic relief to the region. Here, it would have been
a predictable combination of familiar elements and obvious to one of
ordinary skill in the art to modify the eye mask of Koby to include the
motors of Lin to provide vibratory therapeutic relief to those regions. Here,
one of ordinary skill in the art would have readily inferred that the amount of
beads used could be varied based on the desired amount of vibration to be
transferred. Here, the amount of beads could be reduced to still provide
room for the motors attached swinging element 13 to move and have an
operating device. For these above reasons the rejection of record for claim 1
under this grounds is sustained.
With regard to the Appellant’s arguments regarding claim 3, the
location of the motors on the eye region would have been an obvious
modification if desired, and readily inferred by one of ordinary skill in the
art if vibration to that region was desired. Accordingly, the rejection of this
claim is sustained.
With regard to the Appellant’s arguments regarding claim 6, the use
of a material such as stretchable fabric in the device would have been an
obvious modification and readily inferred by one of ordinary skill in the art
if the properties of a breathable, washable, fabric were desired in the
combination. Accordingly, the rejection of this claim is sustained.
The Appellant has provided the same arguments for the remaining
claims and the rejections of these claims is sustained as well as no specific
arguments have been presented for them.
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Application 14/464,762

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CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting the claims as listed in the Rejections section above.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
12 112(a) Written
Description
12
1–6, 8, 9 103 Koby, Lin 1–6, 8, 9
1–6, 8, 9, 12 103 Koby, Barbera 1–6, 8, 9, 12
Overall
Outcome
1–6, 8, 9, 12

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED