Ex Parte Roersma et alDownload PDFPatent Trial and Appeal BoardFeb 19, 201511165987 (P.T.A.B. Feb. 19, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte MICHIEL ERRIT ROERSMA, ANTONIUS MAARTEN NUIJS, GUIDO ROOSEN, PAUL ANTON JOSEF ACKERMANS, RIEKO VERHAGEN, GERALD LUCASSEN, and JAN VAN HERK1 __________ Appeal 2012-008721 Application 11/165,987 Technology Center 3700 __________ Before DONALD E. ADAMS, ERIC B. GRIMES, and ULRIKE W. JENKS, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a device for reducing hair growth, all of which have been rejected as obvious and one of which has been rejected as lacking adequate written description and indefinite. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the Real Party in Interest is Koninklijke Philips Electronics N.V. (Appeal Br. 2). Appeal 2012-008721 Application 11/165,987 2 STATEMENT OF THE CASE The Specification states that “it is known to use electromagnetic radiation to remove hairs from the human skin. This is called photoepilation.” (Spec. 1.) “However, these known methods of photoepilation are rather painful” because they use “high energy densities of up to 40J/cm2” (id.). The Specification discloses “a method for reducing growth of hairs on human skin . . . [in which] the energy density of the electromagnetic radiation delivered to the skin is selected to be between 1 and 12J/cm [sic, cm2] . . . such that anagen follicles of said hairs are induced to a resting phase in their growth cycle” (id. at 3). Claims 13–20 and 22 are on appeal. Claims 16 is illustrative and reads as follows: 16. A device for reducing growth of hairs on human skin, the device comprising: a head having a cavity for placement on skin; a power unit for continuously generating electromagnetic radiation in a wavelength range between 550 and 1200 nm; a control unit for limiting energy density of the electromagnetic radiation on the skin to a maximum value between 1 and 12 J/cm2, the maximum value is selected in accordance with a color of the skin and the hair to be treated, dark hair and light skin color requiring higher energy density than light hair and dark skin color; a detector to measure a velocity with which the head is moved over the skin to be treated, the electromagnetic radiation is generated as a function of the measured velocity, such that the energy density of the electromagnetic radiation delivered to an area of the skin being treated is at most equal to the maximum value; and a velocity measuring unit for measuring velocity with which the head is moved across the skin. Appeal 2012-008721 Application 11/165,987 3 The claims stand rejected as follows: Claims 16–19 under 35 U.S.C. § 103(a) as obvious based on Anderson,2 Altshuler,3 and Tobinick4 (Ans. 6); Claims 13–15 and 22 under 35 U.S.C. § 103(a) as obvious based on Anderson, Altshuler, Tobinick, and Lepselter5 (Ans. 8); Claim 20 under 35 U.S.C. § 103(a) as obvious based on Anderson, Altshuler, Tobinick, and Mukai6 (Ans. 10); Claim 20 under 35 U.S.C. § 112, first paragraph, for lack of adequate written description (Ans. 4–5); and Claim 20 under 35 U.S.C. § 112, second paragraph, as indefinite (Ans. 5). I. Issue The Examiner has rejected all of the claims on appeal as obvious based on Anderson, Altshuler, and Tobinick, by themselves or combined with either Lepselter or Mukai. Appellants have waived arguments directed to Lepselter or Mukai (Appeal Br. 16), so the same issue is dispositive for all of the § 103 rejections. The Examiner finds that Anderson discloses a device that meets all of the limitations of claim 16 except that it does not include (a) a velocity 2 Anderson et al., US 2004/0034319 A1, published Feb. 19, 2004. 3 Altshuler et al., US 2003/0032950 A1, published Feb. 13, 2003. 4 Tobinick, US 6,595,985 B1, issued July 22, 2003. 5 J. Lepselter & M. Elman, Biological and clinical aspects in laser hair removal, 15 J. DERMATOL. TREAT. 72–83 (2004). 6 Mukai, US 2002/0049432 A1, published Apr. 25, 2002. Appeal 2012-008721 Application 11/165,987 4 measuring unit or (b) a control unit that limits energy density to a maximum value based on skin color and hair color (Ans. 6–7). The Examiner finds that Altshuler discloses a device similar to Anderson’s, which includes a motion sensor, and concludes that it would have been obvious to include this element in Anderson’s device (id. at 7). The Examiner finds that Tobinick discloses a similar device that allows a user to control, among other parameters, the power level or fluence per pulse depending on skin color, hair color, and hair texture (id.) and concludes that it would be obvious to include such a control in Anderson’s device (id. at 8). Appellants contend that the cited references do not disclose or suggest a control unit that limits energy density to a maximum value based on the color of skin and hair, where dark hair and light skin color require higher energy density than light hair and dark skin color (Appeal Br. 13–15). Appellants argue that a control unit that allows a user to select the maximum value does not meet the claim limitation because “[i]n accordance with the claims recitation, the maximum value is selected by the claimed device” (Reply Br. 3). The issue with respect to the § 103 rejections is whether the cited references would have made obvious a control unit meeting the limitations of claim 16. Findings of Fact 1. Appellants’ Specification states that “the device comprises control means for limiting the deliverable energy density of the radiation on the skin to a maximum value between 1 and 12 J/cm2” (Spec. 3). Appeal 2012-008721 Application 11/165,987 5 2. Appellants’ Specification states that “[a] particular embodiment of a device according to the invention is characterized in that, during operation, the control means selects the maximum value in accordance with selected properties of the skin to be treated. Said selected properties may be skin color and color of the hairs to be treated.” (Id. at 4.) 3. Appellants’ Specification states that “[s]aid maximum value of the energy density delivered to the skin may be adjustable, for instance by a dermatologist” (id.). 4. Appellants’ Specification states that “said maximum value may be selectable from a number of preset values, in order to allow the device to be used by or for persons with different requirements. A maximum value selection knob may be provided for that purpose.” (Id.) 5. Anderson discloses a “method of hair growth management [that] may also involve applying optical radiation to hair follicles in a treatment area of a wavelength, power density and duration sufficient to drive the follicles into a transitional growth arrested state” (Anderson 1 ¶ 6). 6. Anderson discloses an apparatus for practicing its method (id. at 1 ¶ 7). 7. Anderson’s apparatus includes (a) a head to be contacted with a patient’s skin and containing a continuous wave (CW) radiation source, (b) a power supply, and (c) a control box containing control electronics (id. at 7 ¶ 70). 8. Anderson discloses a “[r]ange of fluence J/cm2 for low power photoepilation, minimum for dark hair and maximum for dark/dirty blonde Appeal 2012-008721 Application 11/165,987 6 hair or blonde hair” that includes maximum values of 9.9 J/cm2 or less using a “600–1200 [nm] lamp” (id. at 6, Table 2). 9. Altshuler discloses “a photocosmetic device for use on an area of a patient’s skin comprising a treatment head for use in close proximity to the patient’s skin, [and] at least one source of electromagnetic radiation positioned within the treatment head and configured to project radiation onto the area of skin” (Altshuler 1 ¶ 6). 10. Altshuler discloses that its device can be used for, among other things, light-based hair removal (id. at 1 ¶ 3). 11. Altshuler discloses that one embodiment of its device includes a handpiece with a motion sensor for determining handpiece speed (id. at 13 ¶ 152). 12. Altshuler discloses that the motion sensor “may be used to prevent injury to skin 1810 by providing feedback control to a treatment source . . . , such that if the handpiece remains motionless or if the movement across the skin 1810 is too slow or too fast, the intensity of source may be decreased or increased, respectively, or the source may be turned off” (id.). 13. Tobinick discloses “a laser apparatus for removal of hair from patients, based upon the patients’ type of skin color, hair color and hair texture” (Tobinick 1:12–14). 14. Tobinick discloses that its “laser apparatus 10 is designed and operated such that the laser operator can easily and quickly vary the following four laser parameters of: 1) fluence (power level) per pulse, . . . . Appeal 2012-008721 Application 11/165,987 7 These four parameters can be changed individually or in any combination.” (Id. at 18:40–47.) 15. Tobinick states that “[f]or any given combination of skin color, hair color, and hair diameter . . . one pre-set combination is found in the matrix of 35 regimens R1 to R35. Each regimen specifies each of the four laser parameters to be set.” (Id. at 23:41–45.) Principles of Law “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). “[W]hile it is true that claims are to be interpreted in light of the specification . . . , it does not follow that limitations from the specification may be read into the claims. . . . [T]he claims define the invention.” Sjolund v. Musland, 847 F.2d 1573, 1581–82 (Fed. Cir. 1988). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Analysis We agree with the Examiner that it would have been obvious to modify Anderson’s device to include Altshuler’s motion sensor, because Altshuler states that the motion sensor can prevent injury to the skin by adjusting the intensity of the radiation source depending on how fast the handpiece is being moved over the skin (FF12). We also agree with the Examiner that it would have been obvious to modify Anderson’s device to Appeal 2012-008721 Application 11/165,987 8 include a control for adjusting fluence (power level) (FF14) because Anderson similarly teaches that the range of fluence used for photoepilation varies with hair color (FF8) and Tobinick discloses that fluence is one of the parameters that is changed based on a patient’s skin color, hair color, and hair texture (FF13, FF15). Thus, it would have been obvious to allow the user to easily and quickly vary the fluence, as taught by Tobinick (FF14). Appellants argue, however, that Anderson does not teach that “‘the maximum value is selected in accordance with a color of the skin and the hair to be treated, dark hair and light skin color requiring higher energy density than light hair and dark skin color’, as recited for example in claim 16” (Appeal Br. 13). Appellants argue that Tobinick does not make up for this deficiency because its pre-set parameters include either the same total fluence for light and dark hair or higher total fluence for light hair than for dark hair (id. at 13–14). We agree with the Examiner, however, that “[t]he limitation ‘dark hair and light skin color requiring higher energy density than light hair and dark skin color’ is considered intended use of the device” (Ans. 8). That is, “[t]he prior art is required to teach [a] control unit that is capable of limiting the energy density of the electromagnetic radiation on the skin to a maximum value between 1 and 12 J/cm2” (id. at 11) but the factors considered by the user in selecting a maximum value do not limit the claimed device. “[A]s long as a user can select a value within the range claimed by applicant for the energy density and the control unit limits the laser to only this value, then the control unit reads on the claim language. How the user selects the Appeal 2012-008721 Application 11/165,987 9 value to be emitted does not pose a meaningful limitation on the controller.” (Id.). Appellants dispute this interpretation of the claim language, arguing that “[i]n claim 16 the selection of the maximum value is attributed to the control unit” (Reply Br. 3). Appellants argue that the claim language requires that “the maximum value is selected by the claimed device” (id.) and that “there is indeed a ‘requirement that the controller be programmed to select a maximum value based on the claimed parameters’” (id. at 4). These arguments are not persuasive. Claim 16 does not recite a control unit that automatically sets a maximum energy density value, or programming that carries out that function. Claim 16 recites “a control unit for limiting energy density . . . ,” and the broadest reasonable interpretation of that limitation reads on a control unit that a user can manually adjust based on any desired parameters. This interpretation is consistent with the Specification, which describes “a particular embodiment” in which the control means selects the maximum value (FF2) but also states that the maximum value can be adjustable by a user (FF3) and can take the form of a selection knob (FF4). Properly interpreted, claim 16 does not require selection of a maximum value by the control unit. The same is true of the “selection unit for selecting the maximum value” recited in claim 19, which Appellants also point to as requiring more than manual selection of the maximum value (Reply Br. 3–4). Conclusion of Law The cited references would have made obvious a control unit meeting the limitations of claim 16. We affirm the rejection of claims 16 and 19 Appeal 2012-008721 Application 11/165,987 10 under 35 U.S.C. § 103(a) based on Anderson, Altshuler, and Tobinick. Claims 17 and 18 have not been argued separately and therefore fall with claim 16. 37 C.F.R. § 41.37(c)(1)(vii). As noted previously, Appellants have waived arguments directed to Lepselter or Mukai. Therefore, we also affirm the rejection of claims 13–15 and 22 under 35 U.S.C. § 103(a) based on Anderson, Altshuler, Tobinick, and Lepselter, and the rejection of claim 20 under 35 U.S.C. § 103(a) based on Anderson, Altshuler, Tobinick, and Mukai. II. The Examiner has rejected claim 20 under 35 U.S.C. § 112, first paragraph, on the basis that the Specification does not disclose a sensor for measuring skin and hair color: “Sensor 14 is only discussed in reference to measuring skin color (Par 0069); there is no mention of a sensor that measures hair color and no mention of a sensor that measures both skin and hair color” (Ans. 5). Appellants argue that the Specification states that Said selected properties may be skin color and color of the hairs to be treated. For example, for a person with dark hairs but a light-colored skin, a higher energy density may be selected than in the case of a dark skin and pale hairs. and Advantageously, the wavelength range is adapted to the skin type and hair color of the person being treated. (Appeal Br. 12.) Appellants argue that these passages make clear “that the color of both the skin and hair is being measured. Moreover, sensors for measuring Appeal 2012-008721 Application 11/165,987 11 biophysical properties, such as skin and hair color are well known.” (Id. at 13.) We agree with the Examiner that the Specification does not show that Appellants were in possession of the disputed limitation as of its filing date. It is true, as Appellants point out, that the Specification describes adjusting a maximum value of energy density based on both skin color and hair color. However, when describing a sensor that measures color, the Specification consistently refers only to skin color. The Specification states, for example, that “[p]referably, the device comprises a sensor for measuring the biophysical skin properties, such as skin color” (Spec. 10). The Specification also states that “a sensor 14 may be used for measuring biophysical properties of the skin 12. The sensor 14 measures for example the color and darkness of the skin 12, by analyzing the light reflected off the skin 12.” (Id. at 13–14.) Original claim 20, as well, recites a sensor but only mentions skin color, not hair color. A description adequate to satisfy 35 U.S.C. § 112, first paragraph, must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” In other words, the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citation omitted, alteration in original). Appellants’ Specification does not describe a sensor that measures both skin color and hair color, and therefore does not show possession of the disputed limitation as of this application’s filing date. Appellants’ argument Appeal 2012-008721 Application 11/165,987 12 that such sensors were well-known fails for two reasons. First, Appellants point to no evidence in the record to support the assertion. “Attorney’s argument in a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Second, even if sensors that measure both hair color and skin color were well-known as of this application’s filing date, they would at best make the disputed limitation obvious, which is not sufficient to satisfy the written description requirement. Ariad, 598 F.3d at 1352 (“[I]t is the specification itself that must demonstrate possession. . . . [A] description that merely renders the invention obvious does not satisfy the requirement.”). III. The Examiner has rejected claim 20 on the basis that “the phrase ‘such as’ renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention” (Ans. 5). Appellants argue that “at first opportunity the Applicants will replace the term ‘such as’ in claim 20 with the term ‘including’ or similarly” (Reply Br. 2). Because Appellants do not dispute that claim 20 as written is indefinite, we affirm the rejection of that claim under 35 U.S.C. § 112, second paragraph. Appeal 2012-008721 Application 11/165,987 13 SUMMARY We affirm all of the rejections on appeal. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cdc Copy with citationCopy as parenthetical citation