Ex Parte Solomon et al

Patent Trial and Appeal Board

Oct 14, 2016

13265872 (P.T.A.B. Oct. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/265,872 10/23/2011 Philip Solomon
55890 7590 10/18/2016
SIMON KAHN - PYI Tech, Ltd,
c/o PURRFECT PATENTS LLC
2001 Jefferson Davis Highway
Suite 207
Arlington, VA 22202
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RAD-002-US 8013
EXAMINER
DOWNEY, JOHN R
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
10/18/2016 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):
Simon@pyi.co.il
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP SOLOMON, DO LEV RAF AELI, and IF AT GERTLER
Appeal2014-008142
Application 13/265,872
Technology Center 3700
Before CHARLES N. GREENHUT, JILL D. HILL, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Philip Solomon et al. (Appellants) seek review, under 35 U.S.C.
§ 134(a), of the Examiner's decision, as set forth in the Final Office Action
dated November 22, 2013 ("Final Act."), rejecting claims 1-3, 5-18, 21, 22,
and 24--34. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, designating our affirmances as NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellants identify Radiancy Inc. as the real party in interest.
Appeal Br. 3.
Appeal2014-008142
Application 13/265,872
BACKGROUND
The disclosed subject matter "relates generally to the field of
dermatological devices and in particular to a device exhibiting a
combination of a temperature adjusting element and a light element arranged
to irradiate the target skin." Spec. i-f 1. Claims 1 and 21 are independent.
Claim 1 is reproduced below, with emphasis added:
1. A hand held device for treatment of a skin
treatment area, the device comprising:
a housing exhibiting an opening therein;
a temperature adjusting element secured to
an end of said housing, one end of said
temperature adjusting element arranged to contact
the skin treatment area, said temperature adjusting
element exhibiting at least one aperture passing
there through;
a light source secured to said housing;
a light path arranged to pass light energy
from said light source to at least a portion of the
skin treatment area via said at least one aperture;
and
a control and driving circuitry in electrical
communication with each of said light source and
said temperature adjusting element, said control
and driving circuitry arranged to:
output a first train of pulses to said
light source thereby providing pulsed light
energy to said portion of the skin treatment
area from said light source proceeding
through said aperture, the pulses of said
output first train of pulses having a
frequency of between 0.25 and 5 Hertz, the
first train of pulses having an on-time
during which said light source outputs the
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light energy to said portions of the skin
treatment area and an off-time during which
said light source is quiescent, said on-time
of said first train exhibiting a duty cycle of
up to 5 0%; and
output a second train of pulses to said
temperature adjusting element so as to
adjust the temperature of the skin treatment
area, said second train of pulses having an
on-time during which said temperature
adjusting element is powered and an off-
time during which said temperature
adjusting element is quiescent,
said on-time of said pulses of said
first train being output alternatingly with
said on-time of said pulses of said second
train, such that during said o.fftime of said
pulses of said first train said temperature
adjusting element is powered by a respective
pulse of said second train and during said
on-time of said pulses of said first train said
temperature adjusting element is quiescent.
REJECTIONS
1. Claims 1-3, 9-12, 15-18, 21, 22, 24--28, and 31-34 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Altshuler '042 (US
2004/0093042 Al, published May 13, 2004) and Neev (US 7,981,112 Bl,
issued July 19, 2011).2
2 Both the Examiner and Appellants identify Neev as US Patent No.
7,981,122. See Final Act. 2; Appeal Br. 9. The correct number is actually
7,981,112. See Notice of References Cited (dated Nov. 22, 2013).
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2. Claim 5 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Altshuler '042, Neev, and Muller (US 5,830,208, issued
Nov. 3, 1998).
3. Claims 6-8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Altshuler '042, Neev, and Debenedictis (US
2003/0216719 Al, published Nov. 20, 2003).
4. Claims 13, 14, 29, and 30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Altshuler '042, Neev, and Altshuler '080 (US
6,605,080 Bl, issued Aug. 12, 2003).
DISCUSSION
Rejection 1 - The rejection of claims 1-3, 9-12, 15-18, 21,
22, 24-28, and 31-34 under 35 U.S.C. § 103(a)
Appellants argue the patentability of the two independent claims-
claims 1 and 21-together and do not provide separate arguments for any
dependent claims. Appeal Br. 10-12. We select independent claim 1 as
representative, with the remaining claims standing or falling with claim 1.
See 37 C.F.R. § 41.37 (c)(l)(iv) (2013). To address claim 1, the Examiner
relied primarily on Altshuler '042, but stated that Altshuler '042 does not
disclose (among other limitations) the claim language shown with emphasis
above. The Examiner first stated that:
Neev teaches active cooling can be applied during repeated
heating cycles (see col. 7, line 59 to col. 8, line 6). This allows
for the temperature of the heating element and/ or treatment
surface to be controlled during treatment (see col. 8, lines 7-
18). At the time the invention was made, it would have been
obvious to a person having ordinary skill in the art to combine
to modify the invention of Altshuler '042 with the teachings of
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Application 13/265,872
Neev for the benefit of controlling the temperature of the
heating element and/ or skin during treatment.
Final Act. 3--4. The Examiner also stated that:
Furthermore, N eev recommends spacing heating cycles by
several seconds and limiting the heating step to less than 30
seconds (see col. 7, line 59 to col. 8, line 6), which
encompasses embodiments which fall between 0.25 and 5 Hertz
with a duty cycle of up to 50%. For example, using a spacing
of 2 seconds between cycles and a heating step of 1 second, one
would arrive at 0.5 Hertz and a duty cycle of 33.3%. At the
time the invention was made, it would have been obvious to a
person having ordinary skill in the art to select parameters from
the ranges taught by Neev, to arrive at the claimed ranges, for
the benefit of optimization through prior art conditions.
Final Act. 4.
First, Appellants argue that the invention in Altshuler '042 "'requires
that cooling be applied to the patient's skin surface concurrently with the
application of optical radiation thereto."' Appeal Br. 10 (quoting Altshuler
'042 i-f 11; with emphasis added by Appellants). Appellants state that the
Examiner "has suggested that this requirement of Altshuler '042 can be met
by alternate cooling and heating" and argue that "this not only goes against
the explicit teach[ings] of Altshuler '042 but additionally would render
Altshuler '042 incapable of providing its desired effects - namely to provide
an elevated (but below damage threshold) temperature for the targeted
region at depth (Par. 0036)." Id. The Examiner responds that Appellants'
"interpretation of the term 'concurrently' is improperly narrow." Ans. 20-
21. According to the Examiner, when Altshuler '042
teaches that the optical radiation source and cooling mechanism
are concurrently operated for a period of at least two seconds
(see Altshuler '042 claim 13) or for a period of at least five
seconds (see claim 14) or for a period of between about two
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seconds and two hours (see claim 15), it is teaching that both
the source and the mechanism are operated at some point during
that determined period of time.
Ans. 21.
As noted by the Examiner, "concurrent" may be defined as
"'happening at the same time.'" Ans. 21 (quoting The Merriam-Webster
Dictionary, with emphasis added by the Examiner). The issue here,
however, is not the meaning of "concurrently," but, rather, what occurs
"concurrently" in Altshuler '042. In both of the passages in Altshuler '042
using the term "concurrently" in the manner relied on by Appellants-
paragraph 11 and the Abstract-Altshuler '042 discloses that "cooling" must
be present "concurrently" with the application of "optical radiation."
Neither passage, however, addresses the timing of the signals operating or
powering the structures providing the cooling and radiation functions. Thus,
the disclosures relied on by Appellants do not conflict with the limitations at
issue, which require that the "pulses" operating the light source be "output
altematingly" with the "pulses" powering the "temperature adjusting
element" (which may provide cooling (see Spec. i-f 46)).
In the Reply Brief, Appellants contend that "Altshuler '042 provides a
number of examples, none of which seem to meet the [E]xaminer' s
meaning." Reply Br. 4--5 (discussing Examples 1-3). Appellants have not
identified specific disclosures in Altshuler '042 relating to these Examples
(and we find none (see Altshuler '042 i-fi-167-99)) that describe the timing of
the signals operating the cooling and radiation functions rather than the
overall functions of cooling and radiation. See Reply Br. 5 ("It is clear from
both the examples, and the basic thrust of Altshuler '042 as mentioned both
in the abstract and paragraph 0011, that the cooling can[]not be interspersed
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with heating, and instead is either to begin before the heating (as described
at paragraph 0011, and in Example 2), or at the same time as the heating.").
Because the term "concurrently" does not limit the invention
disclosed in the manner asserted by Appellants, we do not agree that
modifying Altshuler '042 in the manner proposed "goes against the explicit
teach[ings] of Altshuler '042." Appeal Br. 10. Moreover, Appellants do not
persuasively support the assertions that modifying Altshuler '042 as
proposed "would render Altshuler '042 incapable of providing its desired
effects" (id.) or would cause a "temporary absence of the cooling wave"
such that "the temperature would be[gin] to rise uncontrollably at the
treatment depth" (Reply Br. 5). See also Final Act. 4 (discussing
embodiments in N eev that alternately heat and cool at frequencies between,
for example, "0.25 and 5 Hertz").
Second, Appellants argue that "Altshuler '042 requires simultaneous
cooling and application of optical radiation, in order to achieve this
therapeutic heating of deep tissue, which is the exact opposite of what is
called for by Neev, which teaches heating of the skin surface, and does not
concern himself with therapeutic heating of deep tissue of Altshuler '042."
Appeal Br. 11. According to Appellants, modifying Altshuler '042 with
Neev, as proposed, "would render the device of Altshuler '042 ...
unsatisfactory for its intended purpose, since simultaneous cooling and
radiation is a requirement of Altshuler '042 and this requirement is being
adjusted away by Neev, who in fact is interested in excessive heating of the
surface tissue." Id. (citing In re Gordon, 733 F.3d 900 (Fed. Cir. 1984)). In
addition, Appellants contend that the proposed modification "would change
the principle of operation of the prior art invention being modified, i.e.
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remove the required simultaneous cooling and irradiation and results thereof
of Altshuler '042," and that, therefore, "the teachings of the references are
not sufficient to render the claims primafacie obvious." Id. (citing In re
Ratti, 270 F.2d 810 (CCPA 1959)).
For the same reasons discussed above, Appellants have not shown that
the proposed modification would render Altshuler '042 unsatisfactory for its
intended purpose of providing treatment at depth. Cf Gordon, 733 F.2d at
902 (reversing a rejection because modifying the prior art by turning a filter
upside down would render it incapable of filtering, and thus, inoperable for
its intended purpose). Moreover, as discussed above, we do not agree that
Altshuler '042 limits its invention to configurations in which the signals
operating the cooling and radiation functions occur at the same instant in
time. Thus, modifying Altshuler '042 in the manner proposed does not
change its basic principle of operation. Cf Ratti, 270 F.2d at 813 (stating
that the proposed modification would "require a substantial reconstruction
and redesign of the elements shown in [the prior art] as well as a change in
the basic principles under which the [prior art] was designed to operate").
Third, Appellants assert that "Neev is ... focused oppositely from
Altshuler '04[2]" because "Altshuler '042 is concerned with heating at depth
while protecting the skin surface layers" whereas "Neev is concerned with
heating skin surface while protecting depth." Appeal Br. 10 (discussing
Altshuler i-fi-17, 11, 43 and Neev col. 2, 11. 36-41). According to Appellants,
"[o]ne skilled in the art would simply not look to Neev to improve Altshuler
'042, since they are diametrically opposed." Id.
In response, the Examiner states that Altshuler '042, Neev, and the
claimed invention are in the same field of endeavor: "the application of
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electromagnetic energy to the skin in order to treat various skin diseases and
conditions." Ans. 22 (citing Spec. i-f 2, Altshuler '042 i-f 5, and Neev, col. 1,
11. 37--41). According to the Examiner, Altshuler '042, Neev, and the
claimed invention are also "all focused on the same problem, i.e.
overheating due to application of optical energy to skin for treating skin
conditions" such that Altshuler '042 and Neev "are certainly pertinent to the
problem (i.e. overheating) faced by the inventor." Id. at 23.
Appellants do not address, and we are not apprised of error in the
Examiner's findings that Altshuler '042 and Need are analogous art.
Because Appellants have not shown error in the finding that Altshuler '042,
Neev, and the claimed invention are "focused on the same problem" (Ans.
23), we do not agree with Appellants that Altshuler and Neev address the
"exact opposite problem[s]." Reply Br. 4. Moreover, we are not apprised of
error based on the different heating depths in Altshuler '042 and Neev;
Appellants have not persuasively shown that the differences undermine the
factual findings or reasoning relied on to support the conclusion of
obviousness. See Final Act. 2--4; Ans. 3-7; see also KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007) ("[F]amiliar items may have obvious
uses beyond their primary purposes, and in many cases a person of ordinary
skill will be able to fit the teachings of multiple patents together like pieces
of a puzzle.").
We tum now to the Reply Brief, in which Appellants quote a passage
from the MPEP providing: "A prior art reference must be considered in its
entirety, i.e. as a whole, including portions that would lead away from the
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claimed invention." Reply Br. 4.3 Appellants have not, however, shown
that the different heating depths in the prior art amount to a teaching away.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("[M]ere disclosure
of alternative designs does not teach away.").
Fourth, Appellants argue that Neev teaches two alternatives: "a. The
number of repeated heating cycles should there be limited or space apart by
several seconds to allow cooling between pulses (Col. 7, ln 59 - 61 ), orb.
Utilize active cooling such as Thermoelectric (TEC) cooling or cryogen
spray cooling. (Col. 7, ln 61 - 65)." Appeal Br. 12.4 According to
Appellants, " [ o ]ne skilled in the art would learn from N eev to either space
apart the heating pulses, or provide active cooling. However, N eev does not
suggest that the active cooling, if provided, is particularly interspersed
between the heating pulses." Id.
The Examiner responds that Neev "does, in fact teach that active
cooling may occur between pulses of heating/treatment," citing column 6,
lines 11-20 and adding emphasis to aspects of this passage:
A cooling element 69, for example a TEC, can also be
integrated into the treatment head to reduce the
temperature of the treatment head before the next shot if
[sic] fired. For example, a reduction to temperature range
between about 25[0 ]degree. C. to 45[0 ]degree. C., and
preferably between about 27[0 ]degree. C. and about
37[0 ]degree. C., can be required before the device can be
fired again.
3 Although Appellants cite to MPEP § 2143 .03 (VI), this passage
appears in MPEP § 2141.02 (VI) (9th ed., Rev. 07.2015, Nov. 2015).
4 As noted above, in the Office Action, the Examiner found that
"Neev teaches active cooling can be applied during repeated heating cycles
(see col. 7, line 59 to col. 8, line 6)." Final Act. 3.
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Ans. 24.
In reply, Appellants argue that, in the passage relied on, "Neev
teaches 'reducing the temperature of [the] treatment head before the next
shot is fired'" and that, in contrast, Appellants are "discussing the
temperature of the skin, and not the temperature of a treatment head which
may now be in an overheated condition and bum the skin." Reply Br. 6.
We are not apprised of error here. Although the passage relied on by
the Examiner (and the following paragraph (see Reply Br. 6 (discussing
Neev. Col. 6, 11. 21-25)) address "reduc[ing] the temperature of the
treatment head before the next shot" (Neev, col. 6, 11. 16-17), the structure
providing this active cooling---cooling element 69-is described as cooling
both heating element 67 (part of the treatment head) and skin surface 5. See
Neev, col. 6, 1. 66- col. 7, 1. 2 ("One or more energy removal elements 69
may also be used. The energy removal element should be adapted and
configured to cool said heating element and/or a skin surface to a
temperature of less than about 50[0 ]degree C."), col. 8, 11. 12-15 ("The
device may optionally include an energy removal (i.e., cooling) element 69,
preferably capable of cooling the heating element and/or treatment surface to
a temperature of less than about 50° C."), Fig. IA (showing treatment head
50, skin surface 5, heating element 67, and cooling element 69). Thus, we
agree with the Examiner that Neev does teach active cooling of the skin
treatment area between pulses of heating/treatment. See Ans. 24.
We tum now to Appellants' argument that N eev does not suggest that,
"in combination with the active cooling, if provided, ... the heating pulses
be limited to a duty cycle of up to 50%." Appeal Br. 12. As noted in the
prior paragraph, we agree with the Examiner that Neev does teach active
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cooling of the skin treatment area between pulses of heating/treatment. See
Ans. 24. Further, in the Office Action, the Examiner provided certain
findings and reasoning regarding the recited "duty cycle of up to 50%."
Appeal Br. 14 (Claims App.); Final Act. 4. Given that heating element 67 is
being described in both disclosures cited (see Ans. 24 (citing Neev, col. 6, 11.
11-20) and Final Act. 4 (citing Neev, col. 7, 1. 59- col. 8, 1. 6)), we
determine that the findings relating to duty cycle (Final Act. 4) apply to
those regarding active cooling of the skin treatment area between pulses of
heating/treatment (Ans. 24). Thus, we are not apprised of error based on
Appellants' argument.
For the reasons set forth above, we sustain the rejection of claim 1 as
unpatentable over the combined teachings relied upon by the Examiner.
Claims 2-3, 9-12, 15-18, 21, 22, 24--28, and 31-34 fall with claim I.
Because our fact findings with regard to Appellants' first and fourth
arguments differ from those of the Examiner, we designate our affirmance as
a new ground of rejection under 37 C.F.R. § 41.50(b) to provide Appellants
with a full and fair opportunity to respond to the Rejection as modified.
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Rejections 2--4 -The rejection of claims 5--8, 13,
14, 29, and 30 under 35 U.S.C. § 103(a)
For these Rejections, Appellants rely on the arguments discussed
above regarding Rejection 1. See Appeal Br. 13. For the same reasons
discussed above, we sustain these Rejections. Because certain findings of
fact differ from those of the Examiner (based on the arguments relied upon
from Rejection 1 ), we designate our affirmances of these Rejections as new
grounds of rejection under 37 C.F.R. § 41.50(b) to provide Appellants with a
full and fair opportunity to respond to these Rejections, as modified.
DECISION
We AFFIRM the decision to reject claims 1-3, 5-18, 21, 22, and 24--
34, and designate each affirmance as a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41. 50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
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is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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