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Patent Trials and Appeals Board

Dec 9, 2020

2020001954 (P.T.A.B. Dec. 9, 2020)

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.
14/964,987 12/10/2015 Ray Choye 35678-615006 4558
122004 7590 12/09/2020
ISUS Intellectual Property PLLC
A. Jason Mirabito
1300 I Street, NW
Suite 400
Washington, DC 20005
EXAMINER
NGANGA, BONIFACE N
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
12/09/2020 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):
admin@isusip.com
jason@isusip.com
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte RAY CHOYE and VLADIMIR LEMBERG
__________

Appeal 2020-0019541
Application 14/964,987
Technology Center 3700
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 3–6, 12, and 14, which constitute all the
claims pending in this application. Final Act. 1 (Office Action Summary).
Claims 1, 2, 7–11, 13, and 15–17 have been canceled. Appeal Br. 12–13

1 The Examiner identifies the following U.S. Patent Application as related to
the present Appeal: 13/314,548 (Appeal No. 2016-006413; decision
rendered Aug. 24, 2017). See Ans. 3.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Lumenis,
Ltd.” Appeal Br. 3.
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(Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). For the
reasons explained below, we AFFIRM the Examiner’s rejection.

CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to the field of laser treatment of
tissue, and particularly, to a system and method for creating microablated
channels in skin.” Spec. 1.3 Method claim 14 is the sole independent claim.
See Appeal Br. 6. Claim 14 is representative of the claims on appeal and is
reproduced below.
14. A cosmetic method for creating fractional treatment
patterns in human skin tissue comprising:
applying light energy with an ablative laser device by
directly accessing the skin tissue to ablate the skin tissue and
form a plurality of microchannels in the skin tissue;
delivering one or more substances into the plurality of
microchannels after the step in which the plurality of
microchannels have been formed in the skin tissue;
wherein each of the plurality of microchannels have a
width from 20μm to 70μm and a depth;
wherein the depth of the plurality of microchannels into
the skin tissue from applying the light energy with the ablation
laser device reaches to the hypodermis; and
wherein the ablative laser device comprises a CO2 laser.
REFERENCES

Name Reference Date
Altshuler et al.
(“Altshuler”)
US 2006/0004347 A1 Jan. 5, 2006
Hwang et al. (“Hwang”) US 2006/0149223 A1 July 6, 2006

3 We refer to the page numbers because neither the lines on each page of the
Specification nor the paragraphs thereof are enumerated.
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THE REJECTION ON APPEAL
Claims 3–6, 12, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Altshuler and Hwang. Final Act. 4.
ANALYSIS
Appellant provides separate arguments for independent claim 14, and
each of dependent claims 4 and 6. See Appeal Br. 7–10. Regarding the
remaining claims, Appellant states that they “stand or fall with independent
claim 14.” Appeal Br. 7. Thus, we address claims 14, 4, and 6 (in that
order), with dependent claims 3, 5, and 12 standing or falling with claim 14.
See 37 C.F.R. § 41.37(c)(1)(iv)(2018).
Claim 14
Claim 14 is directed to treating skin tissue and includes the step of
“applying light energy with an ablative laser device by directly accessing the
skin tissue to ablate the skin tissue and form a plurality of microchannels in
the skin tissue.” Appeal Br. 13 (Claims App.). Claim 14 further recites,
“wherein the depth of the plurality of microchannels into the skin tissue
from applying the light energy with the ablation laser device reaches to the
hypodermis” and “wherein the ablative laser device comprises a CO2 laser.”
Appeal Br. 13 (Claims App.).
The Examiner primarily relies on Altshuler for disclosing the
limitations of claim 14, which includes teaching the delivery of substances
into microchannels and the recited dimensions of the microchannels. See
Final Act. 4–5. The Examiner relies on Hwang for disclosing “an alternative
technique (multipulse method) for creating hole(s) deeper in skin tissue
using a CO2 laser using a sequence of micropulses that enables CO2 laser
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energy to penetrate deep into the dermis [0041].” Final Act. 5; see also Ans.
3–4. The Examiner concludes that it would have been obvious “to have
modified the method of Altshuler . . . with an ablative CO2 laser source.”
Final Act. 6. This is in order “to increase permeability through the skin
tissue for a longer period and to allow for prolonged delivery of the at least
one or more substance.” Final Act. 6.
Appellant initially states that there is an “admission that Altshuler
dissuades using a CO2 laser, and thus dissuades using a CO2 laser for
delivering substances into the skin.” Appeal Br. 7; see also Reply Br. 2.
Appellant contends, this “is a strong indication of teaching away from the
delivery of substances into the hypodermis using a CO2 laser, as recited.”
Appeal Br. 8.
Appellant seems to be referencing the Examiner’s reliance on
paragraph 192 of Altshuler concerning CO2 and Er:YAG lasers. See Final
Act. 5. To be clear, paragraph 192 of Altshuler discloses that
[t]he ablative techniques typically deliver more pronounced
clinical results, but entail considerable post-operative recovery
time and care, discomfort, and risk of infection. For example,
laser skin resurfacing (e.g., using a CO2 laser an[d] with
absorption coefficient of ~900 cm-1, or an Er:YAG laser with an
absorption coefficient of ~13,000 cm-1) requires weeks of
recovery time, followed by a period of up to several months
during which the treated skin is erythematous.
As understood, Altshuler is disclosing the disadvantages of using a
CO2 laser having a certain absorption coefficient value for ablative purposes.
Altshuler, instead, favors the use of “electromagnetic radiation (EMR)” for
the described ablation procedure. See Altshuler ¶¶ 003, 111. But Altshuler
is silent as to the patient recovery time when employing that preferred
etching method. Regardless, Altshuler acknowledges, in the Background
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section, that treatment by “optical energy” “is widely used in two
approaches for skin remodeling: ablative skin resurfacing, typically
performed with either CO2 (10.6µ) or Er:YAG (2.94µ) lasers, and non-
ablative skin remodeling” using other laser types. Altshuler ¶ 10. Thus, we
do not view Altshuler’s discussion in Paragraph 192 above as discouraging
ablation or discouraging the use of CO2 lasers––but rather, as merely
identifying certain circumstances surrounding such usage should that
process be chosen.
This is consistent with Appellant’s disclosure that acknowledges that
the use of CO2 lasers for ablative resurfacing is known and further that, for
Appellant’s process, “[a]ny suitable type of laser may be used” (including
CO2).4 Spec. 2, 10.
The Examiner responds stating that “disclosed examples and preferred
embodiments do not constitute a teaching away from a broader disclosure or
nonpreferred embodiments.” Ans. 5 (referencing In re Susi, 440 F.2d 442, 446
n.3 (CCPA 1971)); see also id. at 6 (“Altshuler does not [] criticize, discredit,
or otherwise discourage the solution claimed” (citation omitted)). Furthermore,
Hwang specifically states, “[t]he present invention provides a method and
apparatus that would enable the CO2 laser beam to be delivered deep into
dermis yet cause minimum thermal damage to the epidermal and superficial
dermal tissue.” Hwang ¶ 13.

4 See also Merck & Co. Inc. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989) (“‘the fact that a specific [embodiment] is taught to be preferred
is not controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.’”) (quoting In re Lamberti, 545 F.2d 747,
750 (CCPA 1976)).

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Accordingly, and based on the above, we thus are not persuaded that
Altshuler teaches away from the use of CO2 lasers for ablation purposes.
Appellant also contends that “Hwang does not even disclose width
dimensions of his ‘microchannels’ nor the depth of his ‘microchannels’
extending to the hypodermis.” Appeal Br. 8. However, Hwang was not relied
upon for disclosing the recited dimensions, Altshuler was. See Final Act. 5, 6.
Appellant also questions Altshuler’s teaching of the “delivery of
substances” and references paragraphs 158, 189, and 195 of Altshuler for
support. Appeal Br. 8; see also Reply Br. 2. The Examiner also referenced
paragraphs “[0175-0177]” of Altshuler for this teaching (Final Act. 4), and
Appellant does not explain how paragraph 175 of Altshuler fails to disclose this
limitation. See Altshuler paragraph 175 discussing the “percutaneous delivery
of cosmetic or therapeutic agents locally to the epidermis and dermis.”
Appellant further contends that “in the voluminous specification of the
Altshuler reference, the word ‘ablate’ is used only 4 times.” Appeal Br. 8.
Although this may be true, a word search for related terms such as “ablated,”
“ablative,” and “ablation” reveals that these other forms of “ablate” are
recited many times throughout Altshuler’s written description. See
Altshuler, passim. As such, any intimation of Altshuler’s disclosure being
relevant to non-ablative techniques that use non-ablative lasers, rather than
ablative techniques that use ablative lasers such as CO2 lasers, is
unpersuasive.
Appellant additionally makes the following arguments which we
enumerate as follows:
(1) “neither of Altshuler or Hwang disclose[s] or even suggest[s]
drilling microchannels down to the hypodermis level with a CO2 laser and
delivering substances there” (Appeal Br. 8);
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(2) “[p]aragraph [0195] of Altshuler, . . . is part of a discussion
beginning with paragraph [0189] that is directed to Tissue Remodeling, and
has nothing to do with nor ever mentions delivery of substances” (Appeal
Br. 8);
(3) “paragraph [0158] of Altshuler is in a section of Altshuler that
discusses the size of [(electromagnetic radiation (EMR))]-treated islets and
again has nothing to do with the delivery of substances” (Appeal Br. 8);
(4) “when used in paragraphs [0205] and [0159], [the term ‘ablate’] is
used in connection with ablating the stratum corneum (SC), not in
connection with ablating down to ‘the hypodermis’, as recited in claim 14”
(Appeal Br. 8);
(5) “paragraphs [0010] and [192]” does not describe “‘fractional
treatment’, as recited in claim 14, but rather the known technique of ablating
large surfaces of the SC [(stratum corneum)]” (Appeal Br. 9);
(6) “paragraph [0175] of Altshuler” does not disclose “delivering
substances into the hypodermis, as far as such microchannels are as set forth
in the present invention” (Appeal Br. 9; see also Reply Br. 2 (“for the
delivery of therapeutic agents/compounds Altshuler discloses only affecting
the stratum corneum”)); and
(7) “Hwang does not disclose the introduction of substances into the
‘microchannels’ formed in the skin tissue” (Appeal Br. 9).
These arguments lack merit in that they do not address the Examiner’s
rejection, which relies on Altshuler for teaching “accessing skin tissue to
form a plurality of microchannels,” “wherein the thermal and damage islets
have a depth [that] can be relative[ly] deep into the dermis and hypodermis,”
and for the delivery of substances thereinto. See Final Act. 4, 5. The
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Examiner relies on Hwang for disclosing “creating hole(s) deeper in skin
tissue using a CO2 laser.” Final Act. 5, 6; see also Ans. 7. “Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references []. [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole.” In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). See also Ans. 7, 8.
In regard to Appellant’s corresponding arguments as enumerated
above:
(1) the Examiner relies on Altshuler for drilling microchannels down
to the hypodermis level and delivering substances there, and on Hwang for
using a CO2 laser to create holes deep into skin tissue (see Final Act. 4–5);
(2), (3), (6), (7) as noted above, the Examiner additionally relies on
paragraphs 175–177 of Altshuler, for teaching the delivery of substances
(see Final Act. 4); and
(4), (5) the Examiner relies on paragraph 195, rather than paragraphs
10, 159, 175, 192, and 205, of Altshuler for teaching “fractional treatment”
comprising ablating down to the hypodermis (see Final Act. 5).
In view of the above, it is apparent that Appellant’s contentions attack
the cited references individually or otherwise fail to address the Examiner’s
rejection. Consequently, the above contentions by Appellant do not apprise
us of Examiner error.
Appellant also contends that “the high ratio of depth to width in
Appellants’ invention facilitates the injection of substances deep into the
tissue.” Appeal Br. 9. However, the Examiner correctly responds that “the
pending claims do not recite a ratio of depth to width of microchannels.”
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Ans. 8. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims.”).
Appellant further argues that “there is no basis for combining the
teachings of Altshuler and Hwang to reach the present[ly] recited invention,
other than through reading of Appellants’ disclosures.” Appeal Br. 7; see
also Reply Br. 2–3. The Examiner, on the other hand, reasons that it would
have been obvious to modify the method of Altshuler with Hwang’s
technique of using CO2 laser to “cause[] minimum damage to the epidermal
and superficial dermal tissue.” Final Act. 5–6 (citing Hwang ¶¶ 13, 38, 41,
49); see also Ans. 4–5. In view of this stated rationale, we are not persuaded
that the Examiner’s rejection is based upon improper hindsight, or that the
stated rejection was gleaned only from Appellant’s disclosure.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 3, 5, 12, and 14 as being obvious in view of
Altshuler and Hwang.
Claim 4:
Claim 4 recites “wherein the step of delivering the one or more
substances includes ultrasonic delivery.” Appeal Br. 12 (Claims App.).
Appellant contends that the device the Examiner cited by referencing
“paragraph [0524] of Altshuler” is “an entirely different device than that
which is recited in claim 4 which incorporates that which is recited in claim
14.” Appeal Br. 9–10. Appellant states, “[t]he device discussed in
paragraph [0524] is a device to make the SC [(stratum corneum)] more
permeable and involves no ablation at all.” Appeal Br. 10.
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The Examiner responds that “an obviousness rationale was set forth in
the Office action in view of Altshuler[’s] teaching of ultrasonic delivery in
other embodiments, not necessarily the embodiment as modified in claim
1[4].” Ans. 8. Moreover, claim 4 does not preclude using a device for
“ultrasonic delivery” that is separate from the “ablative laser device” of
claim 14. See In re Self, 671 F.2d at 1348. We further note that the
Examiner does not rely on paragraph 524 of Altshuler for ablating the
hypodermis, but rather for teaching “the use of ultrasound to enhance
permeability.” Final Act. 6. For these reasons, we sustain the Examiner’s
rejection of claim 4.
Claim 6:
Claim 6 recites “wherein the applying of light energy is controlled by
a controller.” Appeal Br. 12 (Claims App.). Appellant contends that
“nowhere does [paragraph 287 of Altshuler] disclose that the controller
controls ablating microchannels into the skin tissue ‘to at least the
hypodermis’, as recited in claim 14.” Appeal Br. 10.
Once again, Appellant’s contention does not address the rejection
because the Examiner does not rely on paragraph 287 of Altshuler for
ablating to the hypodermis, but instead relies upon paragraph 195, as
discussed above. See Final Act. 5. The Examiner, however, does reference
paragraph 287 of Altshuler for disclosing “a controller that operates to
control light energy.” Final Act. 7. Appellant does not explain how the
Examiner erred by additionally relying on paragraph 287 of Altshuler to
reject claim 6. Accordingly, we sustain the Examiner’s rejection of claim 6.
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DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
3–6, 12, 14 103(a) Altshuler, Hwang 3–6, 12, 14

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