Ex Parte Manstein

Patent Trial and Appeal Board

May 26, 2017

12752497 (P.T.A.B. May. 26, 2017)

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.
12/752,497 04/01/2010 Dieter MANSTEIN 191223.US.02-32865-215733 2586
120944 7590 05/31/2017
ANDREWS KURTH KENYON LLP
Attention: Intellectual Property - Patent Docket
EXAMINER
JACKSON, GARY
450 Lexington Avenue
New York, NY 10017 ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
05/31/2017 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):
ptony @ andrewskurth. com
ny docket @ andrewskurth .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIETER MANSTEIN
Appeal 2015-001878
Application 12/752,497
Technology Center 3700
Before LINDA E. HORNER, JASON W. MELVIN, and
BRENT M. DOUGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dieter Manstein (Appellant)1 seeks our review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated August 1, 2013 [hereinafter “Final Act.”], rejecting claims 1-10.2
Appellant’s representative presented arguments at an oral hearing on May
23, 2017. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies General Hospital Corporation of Boston,
Massachusetts as the real party in interest. Appeal Brief 2 (July 24, 2014)
[hereinafter “Appeal Br.”].
2 Claims 11-20 are withdrawn from consideration. Final Act. 1.
Appeal 2015-001878
Application 12/752,497
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to an “apparatus for
treatment of fatty tissue, including thermal damage and/or removal of fatty
tissue, by ablating holes in skin tissue that can extend down to a
subcutaneous fat layer.” Spec., para. 2. Claim 1 is the sole independent
claim on appeal and is reproduced below.
1. An apparatus for removing subcutaneous fat,
comprising:
a radiation source arrangement configured to provide at
least one pulse of ablative radiation;
a control arrangement configured to control at least one
property of the at least one radiation pulse; and
an optical arrangement configured to direct the at least one
radiation pulse onto a skin tissue,
wherein the at least one radiation pulse has an energy
greater than about 0.35 J and a focal diameter that is less than
about 0.5 mm, and
wherein at least one of the control arrangement or the
optical arrangement is configured to (i) at least one of control or
direct the at least one radiation pulse to ablate a hole through an
entire dermal layer of the skin tissue and (ii) at least one of heat
or vaporize at least one portion of the subcutaneous fat, such that
the at least one portion of the subcutaneous fat exits the skin
tissue through the hole.
Appeal Br. A-l (Claims Appendix) [hereinafter “Claims App.”].
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Application 12/752,497
EVIDENCE
The Examiner relies upon the following evidence in the Final Office
Action:
Anderson et al. US 6,529,543 B1 Mar. 4, 2003
(“Anderson”)
Altshuler et al. US 2008/0294150 Al Nov. 27, 2008
(“Altshuler ’150”)
Altshuler et al. US 2009/0248004 Al Oct. 1, 2009
(“Altshuler ’004”)
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1-3 and 7-10 stand rejected under 35 U.S.C. § 103 as
unpatentable over Altshuler ’004 and Altshuler ’150. Final Act. 2-
5.
2. Claims 4-6 stand rejected under 35 U.S.C. § 103 as unpatentable
over Altshuler ’004, Altshuler ’150, and Anderson. Id. at 6-8.
ANALYSIS
First Ground of Rejection
Appellant argues the claims subject to the first ground of rejection as a
group. Appeal Br. 10-16. We select claim 1 as representative of the group,
with claims 2, 3, and 7-10 standing or falling with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellant and the Examiner appear to agree that Altshuler ’004
discloses an apparatus for laser-assisted lipolysis wherein a waveguide is
inserted into the body, electromagnetic non-ablative radiation is emitted
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Application 12/752,497
from the waveguide within the fatty tissue to melt the fatty tissue around the
tip of the waveguide, and ablative radiation is emitted to ablate a hole
through the skin from below and to push some of the melted fat out of the
body. Appeal Br. 6; Ans. 9-10. The Examiner and Appellant disagree as to
whether claim 1 requires the use of ablative radiation to melt the fatty tissue
and whether claim 1 requires that a hole is ablated from the exterior surface
of the skin. Appeal Br. 15-16; Ans. 9-10.
We agree with the Examiner that claim 1 does not recite that the
control arrangement or optical arrangement must control or direct “the at
least one radiation pulse” to heat or vaporize the subcutaneous fat. Ans. 9.
Rather, claim 1 specifies the use of “the at least one radiation pulse” only in
the context of ablating a hole through the dermal layer. The claim uses the
open-ended transitional phrase “comprising” and, thus, does not constrain,
for example, the control arrangement to control only at least one property of
the at least one radiation pulse or constrain the apparatus to be limited to a
single radiation source. For example, the control arrangement recitation in
claim 1 does not preclude that arrangement from also being configured to
control non-ablative energy from another source. As such, the claim as
written is broad enough to encompass some other type of radiation
(e.g., non-ablative radiation) being used to heat or vaporize the subcutaneous
fat. This understanding is not inconsistent with Appellant’s Specification.
Although the Specification describes using an ablative laser to form a
plurality of holes through the skin and using the radiation pulse(s) from the
ablative laser to heat and/or vaporize fatty tissue, it describes the use of the
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Application 12/752,497
ablative laser to melt the fatty tissue as an “exemplary embodiment.” Spec.,
paras. 11, 12, 16, 18, 33-34, 47, 53. For example, the Specification
describes “it is possible to ablate a skin tissue through an entire dermal layer
thereof via at least one hole” and “it is possible to heat and/or vaporize fatty
tissue that is provided below the dermal layer and proximal to the hole(s)
using the radiation pulse(s).” Id., para 17. We do not understand the
Specification to indicate the use of ablative radiation is necessary to melt the
fatty tissue. See id. at para. 8 (describing that non-invasive heating of fatty
tissues to disrupt tissue structures can be performed by applying
concentrated beams of light or other radiation below the skin tissue or by
focusing ultrasound waves into the fatty tissue).
We further agree with the Examiner that claim 1 does not recite that
the optical arrangement must be configured to direct the radiation pulse onto
an exterior surface of the skin. See, e.g., Ans. 9-10 (Examiner noting that
the skin tissue has several layers, including the dermis and epidermis).
Rather, claim 1 recites the optical arrangement is configured to direct the
radiation pulse “onto a skin tissue.” Directing the radiation pulse onto the
skin tissue from beneath these layers would meet the broad language of
claim 1.
Further, the last “wherein” clause of claim 1 does not recite that a hole
is ablated in the skin tissue prior to heating or vaporizing the subcutaneous
fat, or otherwise imply or require that the ablation be directed onto the
surface of the skin from above the skin. Rather, we read claim 1 to require
that the apparatus is configured to perform the ablation of a hole through the
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Application 12/752,497
skin tissue and is configured to heat or vaporize at least one portion of the
subcutaneous fat. The claim language allows for these functions to be
performed in any sequence (or simultaneously). Notably, the last “such
that” clause is preceded by a comma, indicating that “at least one portion of
the subcutaneous fat exits the skin tissue through the hole” as a result of the
performance of both functions, regardless of the order of performance.
As noted by the Examiner, and uncontested by Appellant,
Altshuler ’004 discloses directing energy of a first wavelength range to
liquefy adipose tissue and then directing energy of a second wavelength
range from beneath the skin layer to ablate the patient’s skin (e.g., the
dermis and the epidermis) so that all or a portion of the liquefied adipose
tissue is removed via one of more holes created by ablating the patient’s
skin. Altshuler ’004, paras. 227, 234-237, Fig. 8B. This disclosure meets
the limitations of claim 1 as interpreted supra.
Appellant further argues that Altshuler ’004 “relates to an invasive
method and apparatus for bulk heating/melting of subcutaneous fat. . . and .
. . ablating tissue upward from beneath the tissue surface to allow some
melted fat to escape” while Altshuler ’150 “relates to a non-invasive method
and apparatus for delivering electromagnetic radiation onto a surface of a
biological tissue.” Appeal Br. 11-12. As such, Appellant contends that “a
person of ordinary skill in the art would not be motivated to look to the
Altshuler ’ 150 Publication for using particular beam parameters to be used
with the invasive irradiation device of the Altshuler ’004 Publication, as the
Examiner suggests” because the references “describe very different
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Application 12/752,497
approaches to irradiating biological tissue and are directed to solving
different problems.” Id. at 13.
We agree with the Examiner’s findings that Altshuler ’150 teaches
“ablating a hole through an entire dermal layer of skin tissue.” Final Act. 3
(citing Altshuler ’150, para. 61). In particular Altshuler ’150 discloses that
its apparatus can be used to create “islets spanning portions of the epidermis,
dermis and subcutaneous tissue.” Altshuler ’150, para. 61. As such,
Appellant’s attempt to limit the teachings of Altshuler ’150 non-invasive
methods and apparatus is an unduly narrow reading of the prior art.
The Examiner responds to Appellant’s argument by stating that
“creation of holes/islets through dermal tissues still will require the same
considerations when selecting optical parameters. The fact that the holes are
created before or after removal of fat is not [a] pertinent consideration]
when determining whether these two references should be combined.”
Ans. 8; id. at 9 (“Any reference that instructs one of ordinary skill in the art
in how to accomplish ablation in the dermal tissues could have been
reasonably relied upon as a relevant teaching.”)
We agree with the Examiner. We fail to see, and Appellant has failed
to explain persuasively, why delivering electromagnetic radiation to ablate
tissue from above the skin is meaningfully different from delivering
electromagnetic radiation to ablate tissue from beneath the skin such that one
having ordinary skill in the art would not have looked to Altshuler ’150
when selecting optical parameters. Simply stating the two approaches differ
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does not demonstrate persuasively why the Examiner’s reasoning is
incorrect.
Second Ground of Rejection
Appellant argues the claims subject to the second ground of rejection
as a group. Br. 16-19. We select claim 4 as representative of the group,
with claims 5 and 6 standing or falling with claim 4. 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellant argues, akin to the arguments made against the combination
relied upon in the first ground of rejection, that because Altshuler ’004
irradiates tissue from beneath the skin layer, whereas Anderson directs
radiation onto the surface of a tissue from outside the tissue, “a person of
ordinary skill in the art would not be motivated to look to the Anderson
Patent for particular beam parameters to be used with the internal irradiation
device of [Altshuler ’004].” Appeal Br. 18 (arguing that these references
“describe very different approaches to irradiating biological tissue and are
directed to solving different problems”). We agree with the Examiner’s
findings (Final Act. 6) that Anderson teaches specifically using its optical
coupler device for “ablation of dermal and epidermal layers of skin and
subcutaneous fat” (Anderson, col. 13,11. 21-24) and teaches ablating tissue
utilizing a pulsed laser source providing energy of two joules per pulse
(Anderson, col. 12,11. 48-53). As noted by the Examiner, “Anderson, like
Altshuler ’150, is merely used as evidence for providing particular optical
parameters that were previously known to adequately and safely ablate
through those dermal layers.” Ans. 10.
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For the same reasons discussed above in addressing Appellant’s
arguments against the combination of Altshuler ’004 and Altshuler ’150, we
similarly find Appellant’s arguments against the further combination with
Anderson, fail to demonstrate error in the rejection of claim 4.
DECISION
The rejection of claims 1-3 and 7-10 under 35 U.S.C. § 103(a) as
unpatentable over Altshuler ’004 and Altshuler ’150 is affirmed.
The rejection of claims 4-6 under 35 U.S.C. § 103(a) as unpatentable
over Altshuler ’004, Altshuler ’150, and Anderson 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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