Ex Parte Wilson

Patent Trial and Appeal Board

Jan 30, 2015

12405041 (P.T.A.B. Jan. 30, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARGARETT A. WILSON
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Appeal 2013-000434
Application 12/405,041
Technology Center 3700
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Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and
SCOTT A. DANIELS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Margarett A. Wilson (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision to reject under 35 U.S.C. § 103(a) claims 1–22
as unpatentable over de Cordova (US 6,088,836; iss. July 18, 2000),1 and
Carey (US 5,214,804; iss. June 1, 1993).2 We have jurisdiction under 35
U.S.C. § 6(b).

1 The Examiner refers to the de Cordova reference as “‘836.” See e.g., Ans.
5. Appellant refers to the de Cordova reference as the “‘836 patent.” See
e.g., Br. 4. Throughout this Opinion, we shall refer to the de Cordova
reference as “de Cordova.”
2 The Examiner refers to the Carey reference as “‘804.” See e.g., Ans. 7.
Appellant refers to the Carey reference as the “‘804 patent.” See e.g., Br. 4.
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We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
The claimed subject matter relates to “a sleep shield apparatus.”
Spec. para. 7; Figs. 1A, 1B, 3, 4. Claims 1 and 22 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A sleep shield apparatus comprising:
an eye shield portion;
at least one strap for securing the eye shield to the face;
and
a lower portion configured to cover a portion of the face.

ANALYSIS
Claims 1, 11–13, and 18–22
Appellant does not present arguments for dependent claims 11–13 and
18–21 separate from those presented for independent claim 1. Br. 4–5.
Appellant does not present arguments for independent claim 22 separate
from those presented for independent claim 1. Id. Accordingly, Appellant
has argued claims 1, 11–13, and 18–22 as a group for purposes of the
rejection of those claims under § 103(a). Claim 1 is representative of the
group and is selected for review, with claims 11–13 and 18–22 standing or
falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2013). We separately
address argued claims 2–10 and 14–17 below.
Independent claim 1 calls for a sleep shield apparatus including, inter
alia, “an eye shield portion” and “a lower portion configured to cover a
portion of the face.” See Br. 14, Claims App. The Examiner finds that eye

Throughout this Opinion, we shall refer to the Carey reference as “Carey.”

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cover 12 of de Cordova constitutes the claimed “eye shield portion” and
lower edge 28 of de Cordova constitutes the claimed “lower portion.” See
Ans. 5, 9. The Examiner further finds that lower edge 28 of de Cordova
covers a portion of a user’s face. See id.; see also de Cordova, Figs. 3, 4.
Appellant contends that
the lower edge 28 of [de Cordova] is part of the
eye cover 12 (see [de Cordova], col. 2, ll. 51 (“A
bottom area 28 of eye cover 12 . . . .”), which the
Examiner contends is the eye shield portion recited
in claim 1. The lower edge 28 of [de Cordova]
cannot cover both the eye shield portion and the
lower portion recited in claim 1.
Br. 4.3
Appellant’s argument is not persuasive. de Cordova discloses that
“[a] bottom area 28 of eye cover 12 is shaped to adapt to a user’s face.” de
Cordova, col. 2, ll. 51–52. We agree with the Examiner that “[t]here is no
requirement that the claimed lower portion be a separate discrete member of
the device.” Ans. 9. Bottom area (lower edge) 28 of eye cover 12 of de
Cordova is a lower portion of eye cover 12 and covers a portion of a user’s
face. See de Cordova, Figs. 3, 4.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of independent claim 1 as unpatentable over de Cordova and
Carey. We further sustain the Examiner’s rejection of claims 11–13 and 18–
22, which fall with claim 1.

3 Appellant acknowledges that the Examiner does not rely on Carey to reject
claim 1. See Br. 4.
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Claim 2
Dependent claim 2 calls for “the lower portion is configured to cover
a lower portion of the face.” See Br. 14, Claims App. The Examiner finds
that lower edge 28 of de Cordova “[constitutes the] claimed ‘lower portion’
which would cover a lower portion of the face.” See Ans. 5; see also id. at
9; de Cordova, Figs. 3, 4.
In addition to the arguments presented supra, which we have not
found persuasive, Appellant contends that
the lower edge 28 of [de Cordova] is part of the
eye cover 12 (see [de Cordova], col. 2, ll. 51 (“A
bottom area 28 of eye cover 12 . . . .”), which the
Examiner contends is the eye shield portion recited
in claim 1. The lower edge 28 of [de Cordova]
cannot cover both the eye shield portion and a
lower portion of the face recited in claim 2.
Br. 5.
Appellant’s argument is not persuasive. As discussed above, de
Cordova discloses that “[a] bottom area 28 of eye cover 12 is shaped to
adapt to a user’s face.” de Cordova, col. 2, ll. 51–52. As further discussed
above, we agree with the Examiner that “[t]here is no requirement that the
claimed lower portion be a separate discrete member of the device.” Ans. 9.
Bottom area (lower edge) 28 of eye cover 12 of de Cordova is a lower
portion of eye cover 12 and covers a lower portion of a user’s face relative to
eye cover 12. See de Cordova, Figs. 3, 4. Accordingly, for the foregoing
reasons, we sustain the Examiner’s rejection of dependent claim 2 as
unpatentable over de Cordova and Carey.

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Claims 3–74
Appellant does not present arguments for dependent claims 4–7
separate from those presented for dependent claim 3. See Br. 5–8.
Accordingly, Appellant has argued claims 3–7 as a group for purposes of the
rejection of those claims under § 103(a). Claim 3 is representative of the
group and is selected for review, with claims 4–7 standing or falling with
claim 3. See 37 C.F.R. § 41.37(c)(1)(iv) (2013).
Dependent claim 3 calls for “the lower portion is configured to cover
the mouth.” See Br. 14, Claims App. In addition to the arguments presented
supra, which we have not found persuasive, Appellant contends that the
Examiner relies on hindsight and fails to provide a reason with rational
underpinning to combine de Cordova and Carey. See id. at 6–8. Appellant
further contends that it is not clear how one would combine the meditation
and sleep enhancing device of de Cordova with the mask and scarf of Carey
and that the combination of de Cordova and Carey would change the
principle of operation of de Cordova. See id. at 7.
We are not persuaded by Appellant’s arguments because they are not
commensurate in scope with the Examiner’s proposed rejection. The
Examiner is not proposing to “[add the] scarf of [Carey] to the meditation
and sleep enhancing device [of de Cordova],” as Appellant contends. See
Br. 7. Rather, the Examiner is proposing “to simply add additional material
to the lower edges of [de Cordova], which already functions in the same
manner as a scarf.” See Ans. 10. The Examiner finds that de Cordova’s

4 Appellant lists claims 3–5 in the heading. See Br. 5. However, Appellant
includes claims 6 and 7 in the final paragraph under the heading in the brief.
See id. at 8. We consider Appellant’s omission of claims 6 and 7 in the
heading to be a typographical error.
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device “only needs additional material to meet all of the functional coverage
claims of the instant application.” Id. The Examiner states that
[Carey] is cited as it teaches explicitly, a
combination mask and scarf which does
functionally provide coverage of all claimed areas
and . . . does teach the variability of the size of the
scarf material to extend down and cover the upper
torso and arms of a wearer, at the very least of the
very young, very small wearer as no base of
reference is defined with respect to the size/age of
the wearer of the device and the coverage claims
are presented in functional language.
Id. at 10–11; see also id. at 7–8. The Examiner finds and concludes that
[the devices of de Cordova and Carey] are within
the same field of endeavor, the combination is only
cited to address the lower edge of [de Cordova]
needing additional material to cover the claimed
areas of coverage. [Carey] explicitly gives clear
motivation by stating that the combined mask scarf
would provide more effecting coverage of the face
and neck which is a similar coverage provided by
[de Cordova].

Id. at 11. The Examiner’s findings and stated reasoning are based on
rational underpinnings. Appellant has not shown that the Examiner’s
reasons for combining the teachings of the prior art references are in error.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of dependent claim 3 as unpatentable over de Cordova and Carey.
We further sustain the Examiner’s rejection of claims 4–7, which fall with
claim 3.

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Claim 8
Dependent claim 8 calls for “the lower portion is configured to cover
a portion of the upper torso.” See Br. 14, Claims App. In addition to the
arguments presented supra, which we have not found persuasive, Appellant
contends that “it would not have been obvious to modify [Carey] to include
a lower portion configured to cover a portion of the upper torso, as recited in
claim 8, because this would create uncomfortable bunching in the device of
[Carey].” See Br. 8–9.5
We are not persuaded by Appellant’s argument because it is not
commensurate in scope with the Examiner’s proposed rejection. The
Examiner is not proposing “to modify [Carey] to include a lower portion
configured to cover a portion of the upper torso,” as Appellant contends.
See Br. 8. Rather, as discussed above, the Examiner is proposing “to simply
add additional material to the lower edges of [de Cordova], which already
functions in the same manner as a scarf.” See Ans. 10. The Examiner finds
that de Cordova’s device “only needs additional material to meet all of the
functional coverage claims of the instant application.” Id. The Examiner
further finds that
[w]ith respect to the covering limitations,
[Carey] discloses a combination mask and scarf in
which the scarf is added to the mask to form a
single unit for providing protection the user from
the ambient environment, nearly verbatim to the
objective of the instant application. The scarf is

5 We note that Carey discloses that “[t]he total height may be several inches
longer (e.g. 1 to 2 inches) without creating uncomfortable bunching of
material in the shoulder area 46.” See Carey, col. 4, ll. 34–37 (emphasis
added); see also Ans. 7–8; Br. 8.
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explicitly shown covering mouth, chin, neck, and
upper torso.
Id. at 7. The Examiner also cites to Carey, col. 4, ll. 27–41, to demonstrate
that Carey “teaches variability in size of the scarf and certainly scarves are
known to cover any desired portions of the body.” Id. at 7–8. The Examiner
concludes that
it would have been obvious to one of ordinary skill
in the garment production and design arts, to vary
the size of [the lower edge of de Cordova] for it to
cover any desired body parts as scarves are known
to do, because [Carey] teaches variability in size
and therefore coverage.
See Ans. 9. The Examiner’s findings and stated reasoning are based on
rational underpinnings. Appellant has not shown that the Examiner’s
reasons for combining the teachings of the prior art references are in error.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of dependent claim 8 as unpatentable over de Cordova and Carey.

Claims 9 and 10

Appellant contends that the arguments regarding independent claim 1
and dependent claims 3 and 8 are incorporated by reference. See Br. 9. As
discussed above, these arguments are not persuasive. Appellant presents
similar arguments for claims 9 and 10 as those presented above in reference
to claim 8. See id. As discussed above, these arguments are not persuasive.
Accordingly, for similar reasons, we likewise sustain the Examiner’s
rejection of dependent claims 9 and 10 as unpatentable over de Cordova and
Carey.

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Claim 14
Dependent claim 14 calls for the sleep shield apparatus of claim 1,
“further comprising an eye cover attached to the eye shield portion.” See Br.
15, Claims App. The Examiner finds that “[t]he eye covers 22, 20 are
integral to the eye shield and therefore must be ‘attached’ to it.” Ans. 12;
see also id. at 5.
Appellant contends that the
[de Cordova] does not disclose that left eye cover
20 and right eye cover 22 “are attached to” eye
cover 12 as if they were separate items. Instead,
[de Cordova] discloses that “[e]ye cover 12 has a
left eye cover 20, a right eye cover 22, a top area
24, and a middle nose area 26.”
Br. 10 (citing de Cordova, col. 2, ll. 42–43).
Appellant’s argument is persuasive. The Specification describes that
[a]s shown in [Fig.] 1B, depending on the material
used for the outer and/or inner surface, it may be
desirable to add an additional eye cover 115 on
top of the eye shield portion 110 to further block
light. The eye cover 115 may be permanently
attached [to] or detachable from the sleep shield
100.
Spec. para. 18 (emphasis added); Fig. 1B. Claim 14 calls for an “eye cover
attached to the eye shield portion.” See Br. 15, Claims App. (emphasis
added).6 We agree with Appellant that left eye cover 20 and right eye cover
22 collectively make up eye cover (eye shield) 12 of de Cordova and that de
Cordova’s left eye cover 20 and right eye cover 22 are not separate elements

6 An ordinary and customary meaning of the term “attach” is “to fasten or
join one thing to another.” MERRIAM WEBSTER’S COLLEGIATE
DICTIONARY (11th ed. 2005).
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“attached to” eye cover (eye shield) 12. See Br. 10; see also de Cordova,
col. 2, ll. 42–43; Figs. 1, 2.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of dependent claim 14 as unpatentable over de
Cordova and Carey.

Claim 15
Dependent claim 15 calls for the sleep shield apparatus of claim 1,
“further comprising a nose opening between the eye shield portion and the
lower portion.” See Br. 15, Claims App. The Examiner finds that “[n]ose
opening 30 of [de Cordova] is between eye shield portions and lower edge
28.” See Ans. 6; see also id. at 12.
In addition to the arguments presented supra, which we have not
found persuasive, Appellant contends that “the ‘nose opening 30’ of [de
Cordova] is not ‘between’ the eye cover 12 (i.e., the alleged eye shield
portion recited in claim 1) and the lower edge 28 . . . (i.e., the alleged lower
portion recited in claim 1) as would be required by the claim 15.” See Br.
10.
Appellant’s argument is not persuasive. de Cordova discloses that
[a] bottom area 28 of eye cover 12 is shaped to
adapt to a user’s face, wherein the distance
between top area 24 and bottom area 28 is shorter
at middle area 26 than at bottom area 28 of left and
right eye covers 20 and 22. Thereby, a ridge of a
user’s nose may be inserted into a basin 30 defined
by bottom area 28 at middle area 26.
See de Cordova, col. 2, ll. 51–56; Figs. 3, 4. Nose opening 30 of de Cordova
is between (in the space that separates) eye cover (eye shield portion) 12 and
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bottom area 28.7
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of dependent claim 15 as unpatentable over de Cordova and Carey.

Claim 16
Dependent claim 16 calls for the sleep shield apparatus of claim 15,
“further comprising a nose cover.” See Br. 15, Claims App. In addition to
the arguments presented supra, which we have not found persuasive,
Appellant contends that “[n]either [de Cordova nor Carey] disclose[s] ‘a
nose cover’ as recited in claim 16. The Examiner does not cite to where this
element is disclosed in either of the cited references.” See Br. 11.
Appellant’s argument is not persuasive. The Examiner relies on de
Cordova for disclosure of a nose cover. See Ans. 6. The Examiner correctly
finds that
[n]ose opening 30 is between eye shield portions
and lower edge 28, and can be considered in the
scope of a nose bridge and will cover some part of
some human’s nose.
Ans. 6; see also id. at 12.8 Appellant has not apprised us of error in the
Examiner’s findings or conclusions.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of dependent claim 16 as unpatentable over de Cordova and Carey.

7 An ordinary and customary meaning of the term “between” is “2 a : in the
time, space, or interval that separates.” MERRIAM WEBSTER’S
COLLEGIATE DICTIONARY (11th ed. 2005).
8 We note that de Cordova discloses that “a ridge of a user’s nose may be
inserted into a basin 30 defined by bottom area 28 at middle area 26.” See
de Cordova, col. 2, ll. 54–56 (emphasis added); Figs. 3, 4
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Claim 17
Dependent claim 17 calls for the sleep shield apparatus of claim 15,
“further comprising a nose bridge.” See Br. 15, Claims App. In addition to
the arguments presented supra, which we have not found persuasive,
Appellant contends that de Cordova fails to disclose “a nose bridge,” as
recited in claim 17. See Br. 11.
Appellant’s reliance on a passage in the Specification (see id.),
describing that “[a]s shown in FIGS. 1 and 3, a nose bridge 130 may be
added to shape and maintain the nose opening into a comfortable position
for the user” and “may be made from a malleable material such as aluminum
or other metal or material” (Spec. para. 17), is unavailing. Appellant merely
claims “a nose bridge.” See Br. 15, Claims App. Appellant’s claimed nose
bridge is devoid of any structural limitations that would impliedly require
the nose bridge “to shape and maintain the nose opening” or “[to] be made
from a malleable material.” See id. As such, Appellant’s argument is not
commensurate in scope with claim 17 and is directed to an embodiment (i.e.,
figures 1 and 3) of the invention to which instant claim 17 is not limited.
We decline to, indeed cannot, narrow the scope of the claim by interpreting
it to be limited to any particular disclosed embodiment that is not required
by the language that Appellant has chosen in setting out the metes and
bounds of the claimed invention. See SuperGuide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim.”). Here, the Examiner correctly
finds that
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[n]ose opening 30 is between eye shield portions
and lower edge 28, and can be considered in the
scope of a nose bridge and will cover some part of
some human’s nose.
Ans. 6; see also id. at 12.9 Appellant has not apprised us of error in the
Examiner’s findings or conclusions.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of dependent claim 17 as unpatentable over de Cordova and Carey.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1–13 and
15–22 as unpatentable over de Cordova and Carey.
We REVERSE the decision of the Examiner to reject claim 14 as
unpatentable over de Cordova and Carey.
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).

AFFIRMED-IN-PART

Klh

9 We note that de Cordova discloses that “a ridge of a user’s nose may be
inserted into a basin 30 defined by bottom area 28 at middle area 26.” See
de Cordova, col. 2, ll. 54–56 (emphasis added); Figs. 3, 4