Ex Parte Colbaugh

Patent Trial and Appeal Board

Dec 11, 2018

13696450 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/696,450 11/06/2012 Michael Edward Colbaugh
24737 7590 12/13/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2010P00247WOUS 1044
EXAMINER
PATEL, NATASHA
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
12/13/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL EDWARD COLBAUGH
Appeal2017-004523
Application 13/696,450
Technology Center 3700
Before JAMES A. WORTH, ELIZABETH A. LA VIER, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 submits this appeal under 35 U.S.C. § 134 involving
claims to a sleep mask, as well as a related method and system for providing
light therapy. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellant identifies the Real Party in Interest as Koninklijke Philips
Electronics N.V. App. Br. 2.
Appeal2017-004523
Application 13/696,450
STATEMENT OF THE CASE
Appellant's "invention relates to the delivery of light therapy to a
subject through eyelids of the subject using a sleep mask delivery
mechanism." Spec. ,r 1. 2
"The direction of radiation on a subject to impact the Circadian
rhythms and/or to address disorders of the subject related to melatonin
and/or serotonin levels in the subject are known." Spec. ,r 2. According to
the Specification, however, known treatments "involve shining light directly
towards a patient's eyes while the patient is awake .... " Id. Moreover, the
Specification explains, although "some systems may be configured to
administer phototherapy to a subject as the subject sleeps, these systems tend
to only emit electromagnetic radiation in a single wavelength band." Id. ,r 3.
With conventional light therapy, "provid[ing] electromagnetic radiation to
the open eyes of the subject in a non-varying manner tend[ s] to become less
effective over time" as the "intrinsically photosensitive Retinal Ganglion
Cells become de-sensitized to the electromagnetic radiation during
prolonged, unbroken exposure." Id. ,r 32. 3 "To compensate for this effect in
conventional, open eye light therapy, electromagnetic radiation at or near
450 nm [i.e., blue light] may be provided to the open eye of the subject in a
pulsed manner." Id.
2 We herein refer to the Specification, filed Nov. 6, 2012 ("Spec."); Final
Office Action, mailed Jan. 19, 2016 ("Final Act."); Appeal Brief, filed May
16, 2016 ("App. Br."); Examiner's Answer, mailed Nov. 30, 2016 ("Ans.");
and the Reply Brief, filed Jan. 24, 2017 ("Reply Br.").
3 "The intrinsically photosensitive Retinal Ganglion Cells are a type of nerve
cell in the retina that do not participate directly in vision." Spec. ,r 25.
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Application 13/696,450
Appellant's invention aims, among other things, "to further reduce de-
sensitization" of the Retinal Ganglion Cells to therapeutically effective
electromagnetic radiation by employing a second set of radiation sources
that emit radiation "in a second wavelength band that is different from the
first wavelength band." Spec. ,r 33. "[T]he second wavelength band may
include electromagnetic radiation with a longer wavelength ( e.g., yellow-
green or red electromagnetic radiation) that is applied to the eye of the
subject between pulses of the therapeutically effective electromagnetic
radiation." Id. As explained in the Specification, "[t]he longer wavelength
... in the second wavelength band may precondition the intrinsically
photosensitive Retinal Ganglion Cells for the therapeutically effective
radiation ... [ and] reset the sensitivity of [ those cells] to electromagnetic
radiation in the first wavelength band." Id.
Accordingly, the sleep mask of Appellant's invention includes, inter
alia, a shield, first and second sets of radiation sources, and a controller that
controls the radiation sources in particular ways. Spec. ,r 4. The shield
covers a subject's eyes and provides a barrier to ambient radiation. Id. The
shield carries the first set of radiation sources, which set is configured ( via
the controller) to emit radiation in pulses in a first wavelength band into the
subject's eyelids and this first band includes wavelengths that impact the
subject's sleep cycle. Id. The shield also carries the second set of radiation
sources, which is configured to emit radiation in a second wavelength band
into the subject's eyelids and this second band includes wavelengths that
precondition the subject's non-visual system for reception of radiation in the
first wavelength band. Id. The controller controls the second set of
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Application 13/696,450
radiation sources so that the second wavelength band is emitted between
pulses of radiation emitted by the first set of radiation sources. Id. ff 4---6.
Claims 1-15 are on appeal. Claims 1 and 6 are illustrative:
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;
a first set of one or more radiation sources carried by the
shield, the first set of radiation sources being configured to emit
radiation in a first wavelength band onto the eyelid of the subject
if the subject is wearing the sleep mask, wherein the first
wavelength band includes wavelengths of electromagnetic
radiation that impact a sleep cycle of the subject after attenuation
by the eyelid of the subject;
a second set of one or more radiation sources carried by
the shield, the second set of radiation sources being configured
to emit radiation in a second wavelength band onto the eyelid of
the subject if the subject is wearing the sleep mask, wherein the
second wavelength band includes wavelengths of
electromagnetic radiation that, after attenuation by the eyelid of
the subject, precondition the non-visual system of the subject for
reception of electromagnetic radiation in the first wavelength
band;and
a controller configured (i) to control emission of radiation
by the first set of radiation sources such that the first set of
radiation sources emit radiation in pulses, and (ii) to control
emission of radiation by the second set of radiation sources such
that the second set of radiation sources emit radiation between
the pulses of radiation emitted by the first set of radiation sources
that, after attenuation by the eyelid of the subject, preconditions
the non-visual system of the subject for reception of
electromagnetic radiation in the first wavelength band during the
pulses of radiation emitted by the first set of radiation sources.
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Application 13/696,450
6. A method of providing light therapy to a subject, the method
compnsmg:
emitting pulses of electromagnetic radiation in a first
wavelength band onto the closed eyelid of the subject, wherein
the first wavelength band includes wavelengths of
electromagnetic radiation that impact a sleep cycle of the subject
after attenuation by the eyelid of the subject; and
emitting electromagnetic radiation in a second
wavelength band onto the closed eyelid of the subject between
the pulses of radiation emitted by the first set of radiation
sources,[4 ] wherein the second wavelength band includes
wavelengths of electromagnetic radiation that, after attenuation
by the eyelid of the subject, precondition the non-visual system
of the subject for reception of electromagnetic radiation in the
first wavelength band, and wherein emission of electromagnetic
radiation in the second wavelength band onto the closed eyelid
of the subject preconditions the non-visual system of the subject
for reception of electromagnetic radiation in the first wavelength
band during the pulses of electromagnetic radiation in the first
wavelength band.
App. Br. 20-21 (Claims App'x) (emphases added). Claim 11, the only other
independent claim on appeal, is directed a system and requires various
"means for," in effect, providing the functions recited in method claim 6.
The claims stand rejected under 35 U.S.C. § I03(a) as obvious over
Ashdown5 and Evans. 6 See Final Act. 3-5.
4 Claim 6 ( and claim 11) presently lacks antecedent basis for the phrase "the
first set of radiation sources." For purposes of this appeal, however, we
interpret the claim as requiring the first "emitting" step be carried out by "a
first set of radiation sources" and "a second set of radiation sources." In
other words, "emitting, by a first set of radiation sources, pulses .... "
5 Ashdown, US 2010/0174345 Al, published July 8, 2010.
6 Evans, US 2004/0225340 Al, published Nov. 11, 2004.
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Application 13/696,450
DISCUSSION
Issue
The Examiner addressed independent claims 1, 6, and 11 as a group in
making the rejection over Ashdown and Evans. Final Act. 3--4; Ans. 2--4.
Appellant does not separately argue the patentability of claims 1, 6, and 11
(or the dependent claims). App. Br. 11-17. We similarly address the
independent claims as a group, and consider claim 1 to be representative of
the claims on appeal. The dispositive issue here is whether a preponderance
of the evidence relied upon by the Examiner supports the conclusion that
claim 1 would have been obvious over Ashdown and Evans.
Analysis
The Examiner finds that "Ashdown discloses frames configured to
provide light therapy to a subject." Final Act. 3. The Examiner further finds
that such frames include sets of first and second radiation sources and a
controller having all the features and configured as required by claim 1. Id.
at 3--4.7 More specifically, the Examiner finds that Ashdown's light-
emitting elements, "LEEs 1" and "LEEs 2," satisfy the claimed first and
second sets of radiation sources. Id. at 3 (citing Ashdown, claims 1 and 2).
According to the Examiner, Ashdown further discloses a controller
configured to control emissions of the sets of radiation sources, including
control of the first set to emit radiation in pulses and control of the second
7 Ashdown does not specifically describe frames that include Ashdown's
system as suggested by the Examiner; eyeglass frames that include LEDs for
illumination of the retina are discussed as background ( among several other
devices) in Ashdown's disclosure. Ashdown ,r 6.
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Application 13/696,450
set to emit radiation between the pulses of radiation emitted by the first set.
Id. at 4 ( citing Ashdown ,r,r 56, 68). 8 Regarding the claim language reciting
"attenuation by the eyelid" of the emitted wavelengths, the Examiner
reasons that "[i]t is inherent that a user wearing glasses/frames has to blink
and therefore, the light sources are inherently applied to the eyelid of the
user ( during blinking)." Final Act. 2.
The Examiner finds that "Ashdown does not disclose a shield for
ambient light." So, the Examiner turns to Evans, which the Examiner finds
"discloses a similar stimulator for sleep therapy that is integrated into frames
that block a portion of ambient light (see par. 29)." Final Act. 4.
The Examiner concludes "[i]t would have been obvious" to combine
the cited teachings of Ashdown and Evans "to block out ambient light so
that irradiation benefits can be uninterrupted." Final Act. 4.
Appellant argues that the combination of Ashdown and Evans does
not teach the claimed emission of radiation in first and second wavelength
bands that impacts a sleep cycle or preconditions a non-visual system after
eyelid attenuation. App. Br. 11-15. Appellant contends Ashdown does not
describe "anything ... related to sleep" and "does not describe shining light
onto closed eyelids." App. Br. 11. Moreover, according to Appellant, even
if a subject "can be expected to blink," Ashdown "does not mention what
different effect the emitted light may have after it passes through the
subject's momentarily closed eye." Id. at 11-12. For those reasons,
8 The Examiner states that "Ashdown discloses broadening of bandwidth of
the LEEs (see par. 56). The Examiner considers certain wavelengths are
applied before others (preconditioning) to allow for this drift." Final Act. 4.
The relevance of these assertions to claim 1 's specific limitations is unclear.
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Appellant argues Ashdown does not teach or suggest the claimed "first set of
one or more radiation sources ... configured to emit radiation in a first
wavelength band onto the eyelid of the subject" or that such a "wavelength
band includes wavelengths that impact a sleep cycle of the subject after
attenuation by the eyelid." Id. at 12. For similar reasons - no description
in Ashdown of an effect on a "non-visual system" following "attenuation by
eyelids" - Appellant argues Ashdown does not teach the emission in a
second wavelength band precisely as claimed. Id. at 13-14.
The above arguments from Appellant are unpersuasive. As an initial
matter, Appellant's contention that Ashdown describes nothing related to
sleep is incorrect. Quite the opposite, Ashdown expressly discloses that its
system may provide "sleep control" and stimulate "circadian effects."
Ashdown, claim 2; see id. ,r 25 (describing light induced physiological
stimulus as including wake-sleep cycles and melatonin metabolization).
Moreover, claim 1 is for an apparatus, and Ashdown need not have
disclosed the sleep-related effects on the subject of administering certain
wavelength bands or wavelengths in those bands if Ashdown discloses an
apparatus configured to emit such wavelengths. 9 The Examiner found, and
Appellant did not dispute, that Ashdown teaches emission of wavelength
bands in the ranges of blue, red, and green light. Final Act. 5; see also
Ashdown ,r 58 ( describing a light source system that employs red, green, and
9 We acknowledge that claim 6 and its dependents are method claims.
However, as noted above, Appellant argues the claims together, making no
distinctions among independent claims 1, 6, and 11. In any case, our
disposition of this appeal does not tum on the "sleep-related effects" issue,
for the reasons described below, as applied to any of the claims.
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Application 13/696,450
blue LEEs). Hence, as the Examiner points out, Ashdown teaches emission
of wavelength bands and wavelengths that overlap with ranges recited in
Appellant's dependent claims for the respective first (475-530 nm) and
second (530-700 nm) wavelength bands. App. Br. 21 (Claims App'x
(claims 4 and 5)). Final Act. 2; Ans. 5.
As the Examiner further notes, the claims do not require "a sleeping
subject" and, in any event, "a recitation of the intended use of the claimed
[apparatus] invention must result in a structural difference" compared to the
prior art. Catalina Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
809 (Fed. Cir. 2002) ("[T]he patentability of apparatus or composition
claims depends on the claimed structure, not on the use or purpose of that
structure."). Appellant responds that Ashdown "does not describe a sleep
mask or a shield" and that "is a structural difference." Reply Br. 6. But
those structures are taught or suggested in Evans, and Appellant's response
fails to grapple with the art's combined teachings.
Appellant makes an additional argument: Appellant argues Ashdown
does not describe a controller configured to pulse light in the first
wavelength band, and to emit light in a second wavelength band between the
pulses. App. Br. 16; Reply Br. 5-6. To the contrary, Appellant contends,
Ashdown describes "light emitted from ... groups of chromatic light
emitting elements is delivered as part of the mixture of light delivered to the
subject (e.g., at the same time)." Reply Br. 5; App. Br. 14. As for the
Examiner's assertion in the Final Rejection that "Ashdown clearly discloses
the pulsing of LED's (see par. 38)" (Final Act. 2), Appellant argues that
Ashdown merely discloses that the light elements together may be rapidly
turned on and off (i.e., "flickering") so that the turning on/off of the lights is
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Application 13/696,450
imperceptible to the user. App. Br. 16. Appellant contends such
"flickering" is "not the same as pulsed light" and, even if it is, Ashdown
remains deficient for not disclosing a controller configured to cause a second
set of radiation sources to deliver another specific "second wavelength band
between flickers." Id.
Appellant's additional argument is persuasive. Ashdown appears to
describe and exemplify a system configured to control the several LEEs to
provide a "mixed light" emission, controlled for a desired stimuli. See, e.g.,
Ashdown, Abstract, ,r,r 21, 33 ("The optical system 120 is designed to
efficiently capture and mix light emitted by the multi-colour LEEs"), 62
("light from a white light LEE, a green LEE, and two blue LEEs is
combined to yield a resultant light"), Fig. 6. Ashdown does disclose that
many differently-colored LEEs can be used to design Ashdown's light-
source system (e.g., red, green, and blue in one example system; in a
different example, multiple blue LEEs with different nominal dominant
wavelengths, in combination with green, and white light LEEs ). See id.
,r,r 3 3, 5 8, 60-61. But the Examiner does not adequately identify, on this
record, any teaching or suggestion in Ashdown of a system that is
configured to pulse light of certain LEEs at a certain wavelength band ( e.g.,
blue light) and, between those pulses, to cause a second set of radiation
sources ( e.g., red LEEs) to emit light. A system configured to mix light
from all the LEEs ( e.g., red, green, blue) emitted at the same time - with or
without "flickering" or "pulsing" of the entire group of LEEs - is not the
same as the apparatus claimed. Indeed, if all the wavelength bands are
emitted together with each alleged pulse, no emission is occurring "between
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Application 13/696,450
the pulses of radiation emitted by [a] first set of radiation sources" much less
emission of a "second wavelength band" between the pulses. 10
In response to Appellant's argument related to pulses and emissions
between the pulses, the Examiner states that "[a]s for the pulsing, Ashland
[sic] discloses providing stimuli altematingly." Ans. 5. 11 The Examiner's
response is insufficient to show how Ashdown's disclosure specifically
meets Appellant's claim language. The portions of Ashdown cited by the
Examiner provide a high-level description of controlling the lighting system
to provide simultaneous or alternating physiological and luminous stimuli.
Ashdown ,r,r 34, 53. Such system control in Ashdown may, however,
involve simply varying light intensities to achieve or emphasize particular
stimuli as described in Ashdown's examples. See, e.g., Ashdown ,r,r 60-65.
We remain unpersuaded that Ashdown discloses a controller
configured as claimed - to control and cause a first set of radiation sources
to emit pulsed radiation in a first wavelength band, and to cause emissions
by a second set of radiation sources in a second wavelength band between
the pulses of the radiation emitted by the first set of radiation sources. These
limitations are more than merely non-distinguishing functional features of an
apparatus claim. Indeed, claim language such as "configured to" can denote
structure if used in the context of an electronic circuit, a controller, or
programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376,
10 The Specification repeatedly describes periods between the pulses, during
which a different second wavelength band is emitted, as being "rest periods"
relative to emission of the first wavelength band. Spec. ,r,r 46-49, Fig. 8.
11 The Examiner appears to have abandoned, in the Answer, Ashdown's
paragraph 3 8 as purportedly disclosing the pulsing as claimed. Compare
Ans. 5 (citing Ashdown ,r,r 34, 53) with Final Act. 2 (citing Ashdown ,r 38).
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1380 (Fed. Cir. 2001) (analyzing Microprocessor Enhancement Corp. v.
Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). 12 The phrase
"configured to," when used as it is here, requires that "the apparatus as
provided must be 'capable' of performing the recited function, not that it
might later be modified to perform that function." Typhoon Touch, 659 F.3d
at 13 80. Yet the Examiner has not demonstrated adequately on this record
that Ashdown's unmodified system is capable of performing the recited
functions. Whether, how, and why Ashdown's system might be further
configured to operate like the claimed sleep mask relative to the specific
pulsed emissions of claim 1 is beyond the scope of this appeal.
SUMMARY
We reverse the rejections under § 103 for obviousness.
REVERSED
12 In re Noll, 545 F.2d 141, 148 (CCPA 1976) ("[T]he claimed invention ...
comprises physical structure, including storage devices and electrical
components uniquely configured to perform specified functions through the
physical properties of electrical circuits to achieve controlled results.
Appellant's programmed machine is structurally different from a machine
without that program.").
12