Ex Parte Altshuler et al

Patent Trial and Appeal Board

Jul 28, 2017

12842734 (P.T.A.B. Jul. 28, 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.
12/842,734 07/23/2010 Gregory B. Altshuler 140135.16101 4659
136404 7590 08/01/2017
Pepper Hamilton LLP/Boston
Attn: Boston IP Docketing Department
125 High Street
19 th Floor
Boston, MA 02110-2736
EXAMINER
AVIGAN, ADAM JOSEPH
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
docketingbn @ pepperlaw .com
davisdr @ pepperlaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY B. ALTSHULER, HENRY H. ZENZIE,
CHRISTOPHER GAAL and RICHARD COHEN
Appeal 2015-000218
Application 12/842,734
Technology Center 3700
Before JOSEPH A. FISCHETTI, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’
rejections of claims 1—14. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 The Appellants identify the real party in interest as “Palomar Medical
Technologies, LLC.” (Appeal Br. 3.)
Appeal 2015-000218
Application 12/842,734
STATEMENT OF THE CASE
According to the Appellants, “the invention relates to the treatment of
connective tissue in a subject’s body to improve the appearance of cellulite
on a subject’s body.” (Spec. 1.)
Illustrative Claim
1. A method of improving the appearance of cellulite, the
method comprising:
applying a stretching force to at least one of a septa tissue
and a fascia tissue that is adjacent to fat tissue beneath a region
of a subject’s skin having the appearance of cellulite; and
heating at least one of the septa tissue and the fascia
tissue for a period of time and at a temperature in a range of
about 38 °C to about 60° C to achieve lasting elongation of at
least one of the septa tissue and the fascia tissue upon release of
the stretching force.
References
Stanley US 6,024,095 Feb. 15,2000
Ella US 2004/0260210 A1 Dec. 23, 2004
Hennings US 2006/0265032 A1 Nov. 23, 2006
Deem US 2007/0060989 A1 Mar. 15,2007
Merchant US 2008/0248554 A1 Oct. 9, 2008
Rejections
The Examiner rejects claims 1—3 and 6—14 under 35 U.S.C. § 103(a)
as unpatentable over Ella, Hennings, and Stanley. (Final Action 2.)
The Examiner rejects claims 1 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Deem, Hennings, and Stanley. (Final Action 6.)
The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as unpatentable
over Deem, Hennings, Stanley, and Merchant. (Final Action 8.)
2
Appeal 2015-000218
Application 12/842,734
ANALYSIS
Claim 1 is the sole independent claim on appeal, with the rest of the
claims on appeal (i.e., claims 1—13) depending directly or indirectly
therefrom. (See Appeal Br., Claims App.) Independent claim 1 recites “[a]
method for improving the appearance of cellulite” comprising the steps of
“applying a stretching force to at least one of a septa tissue and a fascia
tissue” and “heating at least one of the septa tissue and the fascia tissue.”
(Id.) The Examiner finds that the prior art (i.e., Ella, Deem, Hennings)
teaches cellulite-treating methods that include steps involving the stretching
and the heating of septa (i.e., collagen) tissue. (See Final Action 2—3, 6—7;
see also Answer 2—3.)
Independent claim 1 further requires the heating of the tissue to be
“for a period of time and at a temperature in a range of about 38 °C to about
60 °C to achieve lasting elongation of at least one of the septa tissue and the
fascia tissue upon release of the stretching force.” (Appeal Br., Claims
App.) The Examiner finds that Stanley teaches “a method for altering the
shape of the cornea of an eye” that includes heating the “collagen fibrils
within the eye” for a period of time and at temperature within the claimed
range “to achieve lasting elongation of the collagen fibrils upon release of
the stretching force.” (Final Action 3.)
The Examiner determines that it would have been obvious to modify
the prior art cellulite-treating methods to “utiliz[e] the temperature range
taught by Stanley.” (Final Action 4.) The Examiner explains that Stanley’s
comea-shape-altering method is related to a cellulite-treatment method
“since both procedures involve achieving lasting elongation of collagen
fibers.” (Answer 5.)
3
Appeal 2015-000218
Application 12/842,734
The Appellants argue that the Examiner does not establish that “the
collagen in the cornea is the same as, or could be expected to exhibit similar
properties to, collagen in cellulite.” (Reply Br. 2.)
We are persuaded by this argument because, as indicated above, the
Examiner relies upon Stanley to teach the claimed temperature range of
about 38 °C to about 60° C. (See Final Action 3.) However, the Examiner
does not point to, and we do not see, anything in the record indicating that a
temperature range suitable for heating corneal collagen to a stretchable
condition would likewise be appropriate for heating cellulite-causing
collagen to a stretchable condition.
In this regard, we note that the prior art references teaching cellulite-
treatment methods describe and/or depict collagen as “bands” or “strands”
surrounding chambers of fat cells in a woman’s thighs, buttocks, or upper
arms. (See e.g., Hennings, H 2, 21, Figs. 5, 6; Deem 14, Figs. 1 A, IB.)
Stanley, on the other hand, describes collagen in the eye cornea as “uniform-
diameter (about 30 nm) collagen fibrils within [] many (several hundred)
lamellae of the stroma.” (Stanley, col. 1,11. 31—33.) In other words, “the
structure and physiology of the cornea is significantly different than that of
the skin.” (Appeal Br. 9.) We further note that Hennings implies that
temperatures greater than 70° C are necessary to stretch “[sjtrands in the
valleys of the cellulite dimples.” (Hennings, 15—16.)
Thus, we do not sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Ella, Hennings, and
Stanley; and we do not sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Deem, Hennings, and
Stanley.
4
Appeal 2015-000218
Application 12/842,734
The Examiner’s further findings and determinations with respect to the
dependent claims (see Final Action 4—8) do not compensate for the above
discussed shortcoming in the rejection of independent claim 1. Thus, we do
not sustain the Examiner’s rejection of dependent claims 2, 3, and 6—14 under
35 U.S.C. § 103(a) as unpatentable over Ella, Hennings, and Stanley; we do
not sustain the Examiner’s rejection of dependent claim 4 under 35 U.S.C.
§ 103(a) as unpatentable over Deem, Hennings, and Stanley; and we do not
sustain the Examiner’s rejection of dependent claim 5 under 35 U.S.C.
§ 103(a) as unpatentable over Deem, Hennings, Stanley, and Merchant.
DECISION
We REVERSE the Examiner’s rejections of claims 1—14.
REVERSED
5