Ex Parte Hazut et alDownload PDFPatent Trial and Appeal BoardNov 30, 201510560063 (P.T.A.B. Nov. 30, 2015) Copy Citation 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. 10/560,063 12/08/2005 Aharon Hazut LUZ085PU 9653 22948 7590 12/01/2015 MARSTELLER & ASSOCIATES P O BOX 803302 DALLAS, TX 75380-3302 EXAMINER MCEVOY, THOMAS M ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 12/01/2015 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 AHARON HAZUT and GOLAN FREDI HOK ____________ Appeal 2013-004758 Application 10/560,063 Technology Center 3700 ____________ Before JOHN C. KERINS, GEORGE R. HOSKINS, and LEE L. STEPINA, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Aharon Hazut and Golan Fredi Hok (“Appellants”)1 appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–7, 9, 14–24, 27, 28, and 31 in this application. The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 The Appeal Brief identifies Hawk Medical Technologies LTD as the real party in interest. Appeal Br. 2. Appeal 2013-004758 Application 10/560,063 2 CLAIMED SUBJECT MATTER The presently claimed invention relates to the field of pigment removal, particularly removing tattoo pigments from skin. Spec. 1, ll. 4–7. Claim 1 illustrates the subject matter on appeal: 1. A method for removing pigments from a pigmented section of skin, comprising: a) puncturing the skin at said pigmented section with a skin-puncturing device provided with at least one needle, thereby liberating pigments and cellular fluids from within cells containing said pigments; and b) bandaging said punctured skin with a pad adapted to absorb said pigments and said cellular fluids, said pad containing one or more materials capable of accelerating a process of migration of said pigments toward an outer layer of the skin, wherein said one or more materials is a salt-based granular paste. Appeal Br. 26 (Claims App.). REJECTIONS ON APPEAL Claim 17 is rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1–5, 9, 14–16, 18, 21–24, 27,2 28, and 31 are rejected under 35 U.S.C. § 103(a) as unpatentable over Malodobry (US 2004/0111107 A1, pub. June 10, 2004) and Bogart (US 5,271,943, iss. Dec. 21, 1993). Claims 6, 7, 19, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Malodobry, Bogart, and Garitano (US 2004/0158196 A1, pub. Aug. 12, 2004). 2 The Examiner’s statement of rejection (Final Act. 2) does not include claim 27, but the underlying analysis does (id. at 6–7), so we include it here. Appeal 2013-004758 Application 10/560,063 3 Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over Malodobry, Bogart, and Dosch (US 7,012,096 B2, iss. Mar. 14, 2006). ANALYSIS A. Written Description Rejection Appellants “do[] not wish to argue against” the written description rejection of claim 17. Appeal Br. 18. This rejection is, therefore, summarily sustained. B. Obviousness Rejection based on Malodobry and Bogart Claims 1–5, 9, 14–16, 18, 21–24, and 27 Appellants argue these claims together as a group. See Appeal Br. 5– 15. We select claim 1 to decide the appeal as to these claims, with the other claims standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner determines Malodobry discloses the entire “puncturing” step (a) of claim 1, except for liberating pigments “from within cells,” which would have been obvious. Final Act. 3 (citing Malodobry ¶¶ 43–48). Appellants do not challenge this determination. The Examiner next finds Malodobry fails to disclose the “bandaging” step (b) of claim 1. Final Act. 3. However, as pertinent to step (b), the Examiner finds Malodobry discloses “using irritants such as sodium chloride to increase exudate and thereby increase the amount of pigments migrating towards the outer layer” of skin. Id. (citing Malodobry ¶¶ 49–52). The Examiner then finds Bogart discloses “bandaging a wound with a pad containing a sodium chloride based granular paste . . . to accelerate a process of skin exudate and bacteria migration to an outer layer of skin.” Id. at 3–4 (citations to Bogart omitted). The Examiner determines it would have been Appeal 2013-004758 Application 10/560,063 4 obvious to use Bogart’s pad and salt-based granular paste within the tattoo removal method of Malodobry, thereby meeting step (b) of claim 1, for several different reasons. Id. at 4–5. Appellants argue the Examiner errs in finding Malodobry uses skin irritants to “accelerat[e]” tattoo pigment migration, as recited in claim 1. Appeal Br. 8; Rosenberg Decl.3 § 17(A). According to Appellants, Malodobry’s skin irritants implement a “passive approach” to tattoo removal, which merely keeps the needle pin pricks open longer than natural, to allow more time for natural wound healing to convey pigments to the skin surface. Appeal Br. 8; Rosenberg Decl. § 17(A). Appellants contrast that with an “active approach” allegedly recited in claim 1, which involves “the use of a salt-based granular paste to accelerate the upward movement of the pigment particles.” Id. (emphasis added). These arguments are not persuasive, for the following reasons. We disagree with Appellants’ interpretation of claim 1. Claim 1 recites bandaging the punctured skin with a pad containing a material “capable of accelerating” pigment migration. The method of claim 1 does not require that the material actually accelerates pigment migration when the pad is applied to the skin. The Examiner’s burden is thus to establish it would have been obvious to apply, in connection with Malodobry’s tattoo removal method, a pad containing a salt-based granular paste capable of accelerating tattoo pigment migration. In this regard it is important to note two things. First, Malodobry indicates it is beneficial to apply “skin irritants . . . to the skin surface . . . before, during or after” the needle 3 The Declaration of Lior Rosenberg, MD, is attached to the Appeal Brief as part of Appendix B. Appeal 2013-004758 Application 10/560,063 5 puncturing step (Malodobry ¶ 50), and diluted aqueous solutions or dispersions of “kitchen salt” comprise such a skin irritant (id. ¶ 52). Second, according to the Specification, “saline” and “salt-based granular paste” are both “suitable to cause the pigments . . . to migrate.” Spec. 7:8–8:3. Further, even if pigment acceleration is required by claim 1, we are not persuaded of Examiner error in finding Malodobry’s application of salt- based skin irritants would result in pigment acceleration. In this regard, the Examiner states Malodobry’s salt-based skin irritants “increase [wound] exudate and thereby increase the amount of pigments migrating towards the outer layer.” Final Act. 3 (citing Malodobry ¶¶ 49–52); see also Ans. 9 (“Malodobry intends to irritate the skin and this would cause excessive exudate production.”). Appellants respond to those findings with the Rosenberg Declaration. Appeal Br. 8–9 (citing Rosenberg Decl. § 17(A)). Dr. Rosenberg testifies: Malodobry . . . does not teach any suggestion of adding a pad with a salt based paste “capable of accelerating a process of migration of said pigments toward an outer layer of the skin”. . . . I think that Malodobry only teaches using a skin irritant to keep the skin inflamed and therefore to slow the process of healing, i.e. sealing of the holes made by the needles. Prolonging the period of time that exudates can exit the wound is not the same as actively causing exudates outflow and actively increasing the rate of exudation to speed up and complete the process of removing the pigments from the dermis in less time. . . . Rosenberg Decl. § 17(A). According to Dr. Rosenberg, the wound acceleration of claim 1 will complete the pigment migration process in less Appeal 2013-004758 Application 10/560,063 6 time than simply keeping the needle holes open as in Malodobry. Id.; see Reply Br. 3. We determine that a preponderance of the evidence supports the Examiner’s finding that, if pigment acceleration is required by claim 1, it is disclosed by Malodobry’s application of salt-based skin irritants resulting in increased and excessive wound exudate traveling to the skin surface. Final Act. 3; Ans. 9. Dr. Rosenberg’s testimony does not explain sufficiently how application of a salt-based granular paste (as recited in claim 1) differs from application of a salt-based skin irritant (as disclosed by Malodobry), such that the former would accelerate pigment migration, but the latter would not. Thus, considering the evidence of record as a whole, we are not persuaded by Appellants’ arguments on this point. Appellants also argue a person of ordinary skill in the art, desiring to improve upon the Malodobry tattoo removal method, would not have found Bogart using normal searching methods. Appeal Br. 10–11; Reply Br. 8–9; Rosenberg Decl. §§ 7–12. However, “we presume full knowledge” by a person of ordinary skill in the art of all analogous art. In re Wood, 599 F.2d 1032, 1036 (CCPA 1979); Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1453–54 (Fed. Cir. 1984). Whether normal searching methods would have led a person of ordinary skill in the art to find Bogart is not the pertinent inquiry under 35 U.S.C. § 103. The pertinent inquiry is simply whether Bogart is analogous art. A prior art reference is analogous to an application if it is reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). A prior art reference is reasonably pertinent if it is one which, because of the matter with which it Appeal 2013-004758 Application 10/560,063 7 deals, logically would have commended itself to an inventor’s attention in considering his or her invention as a whole. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007). Appellants suggest Bogart is not analogous to the present application’s and Malodobry’s tattoo removal methods, because they both use salt to “encourag[e] infection-inflammation by irritating the wound,” whereas Bogart uses salt to “promote the healing of wounds.” Appeal Br. 19; Rosenberg Decl. § 12. We are not persuaded that Bogart is non-analogous art. We determine that an inventor seeking to apply salt to a patient’s skin as part of a tattoo removal process, as proposed by the present application and as disclosed in Malodobry, would consider Bogart’s application of salt to a skin wound with a pad to be reasonably pertinent to the invention as a whole. The Examiner’s first proffered reason for why it would have been obvious to use Bogart’s pad and salt-based granular paste within Malodobry’s tattoo removal method is: Malodobry suggests using a sodium chloride irritant but does not give a specific method for applying it. The device and method of Bogart et al. would provide one of ordinary skill in the art with a specific device and method for implementing Malodobry’s suggestion of using a sodium chloride irritant to increase wound exudate or drainage. Final Act. 4, ll. 6–10. The Examiner adds that, while Malodobry discloses application of salt within a “dispersion,” Malodobry does not fully disclose how to formulate the dispersion. Final Act. 9 (citing Malodobry ¶ 52). The Examiner finds Bogart discloses how to formulate salt as a dispersion in a gel matrix so that it can be applied to a wound, such that the formulation will be prevented from running out of the wound. Id. at 4–5, 9 (citing Bogart, 2:47–65, 3:10–18). Appeal 2013-004758 Application 10/560,063 8 Appellants argue the Examiner’s rationale is faulty because Malodobry discloses at least two methods of applying a salt-based irritant: application to the skin surface by simply spreading it on the surface, and injection into the pigments below the skin surface by using needles. Appeal Br. 11–12, 20–21; Reply Br. 9–10; Rosenberg Decl. § 17(C), (E)(i). Appellants particularly contend a person of ordinary skill in the art would have no need of looking for methods of application to the skin surface, when Malodobry already discloses sub-surface application. Appeal Br. 12, 20–21; Reply Br. 9–10; Rosenberg Decl. ¶ 17(E)(i). Appellants’ arguments do not persuade us of Examiner error. Malodobry discloses “the application of so-called skin irritants introduction to the skin surface or the direct introduction thereof into the [tattoo pigment] agglomerates.” Malodobry ¶ 50 (emphases added); see also id. ¶ 52 (substantially similar disclosure). We agree with the Examiner that Malodobry does not give a “specific method” for skin surface application, even if Malodobry also discloses using a needle for sub-surface application. Final Act. 4, 9; Ans. 12. We also agree with the Examiner’s finding that Malodobry does not fully disclose how to formulate a salt-based dispersion, and Bogart advantageously provides a salt-based gel that may be applied to a skin wound using a pad. Final Act. 4–5, 9; Ans. 12. Appellants moreover argue that Malodobry and Bogart teach away from their combination. Appeal Br. 18–19. In particular, according to Appellants, Malodobry teaches using salt-based skin irritants to keep the skin inflamed and therefore slow the process of healing, whereas Bogart teaches salt-based gels that promote the healing of wounds. Id. at 19; Rosenberg Decl. §§ 12, 17A. Appeal 2013-004758 Application 10/560,063 9 We are not persuaded of any teaching away between Malodobry and Bogart in relation to the Examiner’s first reason for the combination. Final Act. 4, ll. 4–10. Appellants’ argument overlooks the fact that Malodobry teaches the application of salt to the skin during a tattoo removal procedure. Thus, the issue presented is not whether it would have been obvious to apply salt during Malodobry’s procedure, but rather how one of ordinary skill would have chosen to apply salt. Bogart teaches a useful procedure for applying salt to the skin. That the reason for applying salt to the skin in Bogart is potentially different from the reason in Malodobry does not negate that both references teach applying salt to the skin. For the foregoing reasons, we are not persuaded of Examiner error in determining that claim 1 would have been obvious over Malodobry and Bogart, based on the first reason provided in the Final Office Action. See Final Act. 4, ll. 4–10. We therefore need not address the Examiner’s other reasons for the combination. See id. at 4, ll. 10–18. We sustain the rejection of claims 1–5, 9, 14–16, 18, 21–24, and 27 as unpatentable over Malodobry and Bogart. Claims 28 and 31 Appellants argue independent claim 28 and its dependent claim 31 are patentable over Malodobry and Bogart because the Examiner errs in finding Bogart discloses “the one or more materials contained in the pad have direct contact with the surface of the punctured skin but remain contained within the pad,” as recited in claim 28 (emphases added). Appeal Br. 16–17; Reply Br. 6–7. For the following reasons, this argument is persuasive. The Examiner, in the Final Office Action, pertinently states only that Bogart “disclose[s] bandaging the wound with a pad impregnated with the Appeal 2013-004758 Application 10/560,063 10 paste (col. 3, lines 43–53; col. 13, lines 4–6).” Final Act. 7. The Examiner expounds upon that finding in the Answer: Appellant . . . appears to be asserting that the composition of Bogart et al. would completely flow out of the gauze and into a wound; that none would remain in the gauze or at the interface of the gauze and wound. This would be very unlikely if not physically impossible. Examiner asserts that some of the composition must remain in the gauze and in contact with the wound as claimed. Capillary forces or gravity would not be enough to completely suck the composition out of a gauze; especially when treating an already moist wound. Ans. 11. There is no dispute that some of the gel in Bogart exits the pad to enter the underlying wound in the skin, and some of the gel also remains behind in the pad. See Bogart, 3:36–53, 13:3–8. The issue presented is whether that disclosure satisfies the limitation in claim 28 for the materials contained in the pad to remain contained within the pad. We determine, even under a broadest reasonable construction, that it does not. We instead agree with Appellants that a person of ordinary skill in the art would read claim 28 to require that none of the paste flows out of the pad. Reply Br. 7. Therefore, we do not sustain the rejection of claims 28 and 31 as unpatentable over Malodobry and Bogart. C. Obviousness Rejection based on Malodobry, Bogart, and Garitano Appellants argue for the patentability of claims 6, 7, 19, and 20 over Malodobry, Bogart, and Garitano based solely on the arguments presented above for the respective parent claims. Appeal Br. 17. We are not persuaded of Examiner error in rejecting the parent claims for reasons Appeal 2013-004758 Application 10/560,063 11 provided above, and we likewise sustain the rejection of claims 6, 7, 19, and 20. D. Obviousness Rejection based on Malodobry, Bogart, and Dosch Appellants do not argue against the obviousness rejection of claim 17. Appeal Br. 18. This rejection is, therefore, summarily sustained. DECISION The rejection of claim 17 as failing to comply with the written description requirement is affirmed. The rejection of claims 1–5, 9, 14–16, 18, 21–24, 27, 28, and 31 as unpatentable over Malodobry and Bogart is affirmed as to claims 1–5, 9, 14– 16, 18, 21–24, and 27, and reversed as to claims 28 and 31. The rejection of claims 6, 7, 19, and 20 as unpatentable over Malodobry, Bogart, and Garitano is affirmed. The rejection of claim 17 as unpatentable over Malodobry, Bogart, and Dosch is 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). AFFIRMED-IN-PART tkl Copy with citationCopy as parenthetical citation