Ex Parte MansteinDownload PDFPatent Trial and Appeal BoardMay 26, 201712752497 (P.T.A.B. May. 26, 2017) 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. 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 Appeal Brief 2 (July 24, 2014) [hereinafter “Appeal Br.”]. 2 Claims 11-20 are withdrawn from consideration.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.”]. 2 Appeal 2015-001878 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 3 Appeal 2015-001878 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 4 Appeal 2015-001878 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 5 Appeal 2015-001878 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 6 Appeal 2015-001878 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 7 Appeal 2015-001878 Application 12/752,497 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. 8 Appeal 2015-001878 Application 12/752,497 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 9 Copy with citationCopy as parenthetical citation