Ex Parte ReauxDownload PDFBoard of Patent Appeals and InterferencesMar 13, 200810872034 (B.P.A.I. Mar. 13, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte BRIAN K. REAUX __________ Appeal 2008-0787 Application 10/872,034 Technology Center 3700 __________ DECIDED: March 13, 2008 __________ Before TONI R. SCHEINER, DEMETRA J. MILLS, and LORA M. GREEN, Administrative Patent Judges. SCHEINER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1-19 and 21. The claims stand rejected as obvious over the prior art. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2008-0787 Application 10/872,034 STATEMENT OF THE CASE The present invention is directed to a protective covering for the face and eyes (Spec. ¶ 2), essentially comprising an air permeable face mask (Spec. ¶ 14), a flexible eye shield, including a transparent lens (Spec. ¶ 17), and one or more releasably coupled transparent lens protectors (Spec. ¶ 22). The claims stand rejected as follows: 1. Claims 1-4, 6-9, and 21 under 35 U.S.C. § 103(a) as unpatentable over Reese (U.S. Patent 6,213,125 B1, April 10, 2001) in view of Wilson (U.S. Patent 6,536,045 B1, March 25, 2003). 2. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Reese in view of Wilson, and further in view of Hubbard (U.S. Patent 5,020,533, June 4, 1991). 3. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over Reese in view of Wilson, and further in view of Woods (U.S. Patent 5,592,698, January 14, 1997). 4. Claim 11 under 35 U.S.C. § 103(a) as unpatentable over Reese in view of Wilson, and further in view of Moretti (U.S. Patent 4,076,373, February 28, 1978). 5. Claims 12, 14, 15, 17, and 19 under 35 U.S.C. § 103(a) as unpatentable over Reese in view of Wilson, and further in view of Hubbard. 6. Claims 13 and 18 under 35 U.S.C. § 103(a) as unpatentable over Reese in view of Wilson and Hubbard, and further in view of Moretti. 7. Claim 16 under 35 U.S.C. § 103(a) as unpatentable over Reese in view of Wilson and Hubbard, and further in view of Woods. 2 Appeal 2008-0787 Application 10/872,034 Although there are seven separate rejections of the claims, the Examiner’s proposed combination of Reese and Wilson, as applied to claim 1, forms the basis of each rejection. Appellant does not present separate arguments for any particular claim or rejection on appeal. Therefore, we select claim 1 as representative of the claimed subject matter for the purpose of deciding this appeal, and the remaining claims will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2006). Claim 1 is representative, and reads as follows: 1. A face and eye covering device comprising: a face cover configured for covering the nose and mouth of a wearer, the face cover being air permeable to allow the passage of air therethrough to facilitate breathing when worn over the wearer’s nose or mouth; a flexible eye shield coupled to the face cover, the eye shield including a lens and a lens protector releasably coupled to the lens; and wherein at least a portion of the lens and lens protector are transparent to allow visual perception therethrough. FINDINGS OF FACT1 Reese 1. Reese describes a device “for protecting the face of a wearer . . . [which] includes a gas pervious mask body having dimensions to fit over the nose and mouth of the wearer. A shield, for example a transparent plastic member, may be coupled to the gas pervious mask and is dimensioned to extend over the eyes of the wearer and also to cover the gas pervious mask” (Reese, col. 2, ll. 8-14). 1 Abbreviated “FF”. 3 Appeal 2008-0787 Application 10/872,034 2. “The mask component . . . comprise[s] any conventional mask body” (Reese, col. 2, ll. 16-17). 3. The device is “designed to protect against splashed or sprayed liquids” (Reese, col. 1, ll. 27-28), “hazardous infectious pathogens . . . nasal and oral emissions, blood and the like” (Reese, col. 1, ll. 16-19), such as “medical and dental care professionals are exposed to . . . on a daily basis” (Reese, col. 1, ll. 15-16). 4. The shield “may be constructed of any transparent, liquid-impermeable and lightweight material, such as polyester, polycarbonate, and the like” (Reese, col. 6, ll. 25-27). It is “either entirely transparent or includes a transparent portion to allow a wearer to see through [the] shield” (Reese, col. 6, ll. 30-31), i.e., the shield includes a lens portion. 5. The shield may include two parts, with an upper portion overlapping a lower portion, and the upper and lower portions may be constructed from different materials (Reese, col. 6, ll. 61-66). For instance, the lower portion “may be constructed from a less rigid material for improved fit and more freedom of movement” (Reese, col. 7, ll. 1-4). 6. The shield “is preferably flat to facilitate ease of manufacture, shipping, storage, and disposal” (Reese, col. 6, ll. 23-25), but “is preferably scored or creased to allow flexible movement of . . . arcuate lobes . . . [which] may be folded back to protect the eyes of a wearer” (Reese, col. 6, ll. 54-57). 7. Reese does not describe “a lens protector releasably coupled to the lens” as required by claim 1 on appeal. 4 Appeal 2008-0787 Application 10/872,034 Wilson 8. Wilson teaches “[i]t is common practice to wear face shields in environments where injury of the eyes or face may occur from contamination. For example . . . in the operating room” (Wilson, col. 1, ll. 25-28). “In such environments . . . it is most likely that any face protection lens being worn will become covered with contaminants, which obscures the view” (Wilson, col. 1, ll. 37-39), and cleaning the lens “is not always an option, especially for a physician performing an operation who cannot stop for such cleaning” (Wilson, col. 1, ll. 41-43). 9. Wilson teaches that one way to solve this problem is to cover the lens portion of the face shield with multiple layers of releasable lens protectors. Specifically, Wilson describes “an optical stack of laminated removable lenses that may be affixed to a face shield. The stack includes . . . superposed removable lenses adhesively affixed to one another, wherein each of the removable lenses is held to each successive lens with a clear uninterrupted adhesive layer interposed between each lens . . . [and each] lens has a removal tab portion on one end . . . This allows the wearer of the face shield to quickly . . . remov[e] the top lens and expos[e] a clean lens directly underneath” (Wilson, col. 2, ll. 47-58). 10. “Although a particular face protector is depicted,” Wilson teaches that “all face protectors, goggles and the like are contemplated” (Wilson, col. 3, ll. 41-43), and the “multiply transparent optical stack . . . can be easily applied to any desired face protector” (Wilson, col. 4, ll. 59-61). 11. Combining a given face protector with removable lens protectors would have been within the technical grasp of one of ordinary skill in the art. 5 Appeal 2008-0787 Application 10/872,034 DISCUSSION The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) secondary considerations of nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). “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. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that is was obvious under § 103.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742 (2007). The principal issue raised by this appeal is whether it would have been obvious for one skilled in the art to apply Wilson’s laminated removable lenses protectors to Reese’s flexible face shield, given the scope and content of the prior art, the level of ordinary skill in the art, and the differences between the claimed invention and the prior art. We agree with the Examiner that “[i]t would have been obvious to one of ordinary skill in the art . . . to provide the eye shield of Reese et al. with the lens protector [ ] of Wilson et al. to achieve the advantage of maintaining the lens free of contaminants and with an unobscured view” (Ans. 3), given the fact that both Reese and Wilson are directed to face protectors used in the same environments to protect medical/dental personnel from sprayed or 6 Appeal 2008-0787 Application 10/872,034 spattered contaminants (FF 3, 8), while Wilson provides an instantaneous, on-the-spot solution to the problem of reduced visibility from contaminants (FF 8, 9), which can be applied to any face protector (FF 10). We have considered Appellant’s arguments, presented through the Reese Declaration,2 wherein Mr. Reese offers “several explanations as to why one of ordinary skill in the art would not combine the lens stack of Wilson et al. to the flexible face shield of Reese et al.” (Br. 7), but we are not persuaded otherwise. In particular, Mr. Reese argues that the face shields shown in Wilson’s illustrations are “very large, thick, heavy, rigid shields, which in an operating room environment, would be worn separately from any face mask” (Decl. ¶ 5), and which “provide[ ] ample and non-flexible support for applying several layers of the lens stack [ ] without adversely affecting the underlying shield or the lens stack” (Decl. ¶ 5). According to Mr. Reese, one skilled in the art would not have been motivated to apply the lens stack to Reese’s “thin, lightweight, relatively flexible and comparatively delicate” shield (Decl. ¶ 5), “[g]iven the number of film layers 30, 32, 34, 36, etc. shown ([in] Fig. 4) and the disclosed thicknesses . . . [which] would greatly exceed the thickness of the underlying shield, [and] which would be undesirable” (Decl. ¶ 5). We are not persuaded by this argument. First, Wilson teaches that his removable lens stack can be applied to any face protector (FF 10), without 2 Declaration of of Mr. George D. Reese. (hereinafter “Decl.”), dated February 22, 2006, submitted under the provisions of 37 C.F.R. § 1.132, and resubmitted with the Appeal Brief. 7 Appeal 2008-0787 Application 10/872,034 qualification, and one skilled in the art would have immediately recognized the general applicability of Wilson’s protective strategy to any transparent face protector. Second, the numerical designations 30, 32, 34, 36 in Wilson’s Figure 4 do not mean that there are thirty or more layers in the lens stack (as is evident from the fact that the “bottom-most film layer” is designated 30) (Wilson, col. 4, l. 38). Moreover, it would have been within the technical grasp of one skilled in the art to configure a stack of lens protectors to complement any given face protector (FF 11). Mr. Reese also argues that one skilled in the art would have been “deterred from applying the lens stack of Wilson et al. to the face shield of Reese et al. because of the temporary and disposable nature of the face shield itself . . . [since] the face mask and shield combination could merely be removed and disposed of when it became contaminated” (Decl. ¶ 5). We disagree. One of the advantages of covering the lens portion of a face shield with removable lens protectors is that it “allows the wearer of the face shield to quickly . . . remov[e] the top lens and expos[e] a clean lens directly underneath” (Wilson, col. 2, ll. 55-58; FF 9), without, for example, interrupting an operation to clean the face protector (FF 8), or to exchange it for another. Whether or not the face protector is discarded after an operation is irrelevant. Mr. Reese further argues that Reese’s face shield is “quite flexible compared to the rigid lens of Wilson et al. and one skilled in the art would not apply the lens stack [ ] of Wilson et al. to the shield [ ] of Reese et al. because of the potential difficulty that may be involved in removing the layers of the lens stack from such a flexible face shield” (Decl. ¶ 5). 8 Appeal 2008-0787 Application 10/872,034 This argument is not persuasive. The claims do not require any particular degree of flexibility - nor does Reese. Indeed, Reese teaches that the lens portions of the face protector, while flexible, may be more rigid than the lower part of the shield (FF 5). In any case, Wilson’s Figures show that the removable lens protectors need not cover the entire face shield. (see e.g., Wilson’s Figure 2). Again, it would have been within the technical grasp of one skilled in the art to configure a stack of lens protectors to complement any given face protector (FF 11). Finally, Mr. Reese argues that “application of the lens stack . . . would be more difficult with the flexible face shield of Reese et al. such that those skilled in the art . . . would be deterred from applying such a lens stack” and “flexing or bending of the shield of Reese et al. might interfere with the adherence of the lens stack [ ] on the shield” (Decl. ¶ 5). This argument is not persuasive. As discussed above, the shield is initially “preferably flat to facilitate ease of manufacture,” and “is preferably scored or creased to allow flexible movement of . . . arcuate lobes . . . [which] may be folded back to protect the eyes of a wearer” (Reese, col. 6, ll. 23-25 and ll. 54-57). Thus, the flexibility of the shield would have no effect on the application of the lens stack to the shield. Moreover, Mr. Reese has not explained why bending the arcuate lobes back to protect the wearers eyes from the sides would interfere with adhesion of the lens stack. We find that the Examiner has provided sufficient evidence to establish that the invention of claim 1 would have been obvious over the cited prior art, which Appellant has not overcome by argument or evidence. As discussed above, Appellant did not present separate arguments for any 9 Appeal 2008-0787 Application 10/872,034 particular claim or rejection on appeal. Therefore, we selected claim 1 as representative of the claimed subject matter for the purpose of deciding this appeal, and determined that remaining claims 2-19 and 21 would stand or fall accordingly. SUMMARY All seven of the Examiner’s rejections of the claims as unpatentable under 35 U.S.C. § 103(a) are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006). AFFIRMED Ssc: GRADY K. BERGEN 3333 LEE PARKWAY SUITE 600 DALLAS, TX 75219 10 Copy with citationCopy as parenthetical citation