Ex Parte Ferren et al

Patent Trial and Appeal Board

Jul 22, 2014

11171649 (P.T.A.B. Jul. 22, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/171,649 06/29/2005 Bran Ferren 0504-004-002M-000000 5685
44765 7590 07/22/2014
THE INVENTION SCIENCE FUND
CLARENCE T. TEGREENE
11235 SE 6TH STREET
SUITE 200
BELLEVUE, WA 98004
EXAMINER
CRANDALL, LYNSEY P
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
07/22/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte BRAN FERREN, MURIEL Y. ISHIKAWA,
EDWARD K. Y. JUNG, NATHAN P. MYHRVOLD,
CLARENCE T. TEGREENE, and LOWELL L. WOOD JR.
_________

Appeal 2012-003615
Application 11/171,649
Technology Center 3700
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to
modifying hair on a skin surface. The Examiner rejected the claims on the
grounds of obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

1 Appellants identify the Real Party in Interest as Searete LLC (see App. Br.
5).
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Statement of the Case
Background
“The present application relates, in general, to the field of hair
treatment devices and methods, and more particularly to depilation devices
and methods” (Spec. 2, ll. 20-21).
The Claims
Claims 1, 2, 9-12, 14-22, and 30-34 are on appeal. Claim 1 is
representative and reads as follows:
1. A method of modifying hair on a skin surface,
comprising:
a) providing a hair treatment device including at least one
light source and a controller, said at least one light source
activatable to produce a highly convergent light beam having a
beam waist and an angle of convergence of between about 45
and about 55 degrees relative to the axis of the beam, and said
controller configured to control delivery of light such that when
said light source is positioned within a specified range of
distances from said skin surface, said beam waist will be
positioned between about 25 µm and about 300 µm above the
skin surface;
b) positioning said hair treatment device including at
least one light source adjacent to the skin surface;
c) determining a distance of said at least one light source
from the skin surface;
d) if said determined distance is within said specified
range of distances from the skin surface, activating said at least
one light source to generate the highly convergent light beam
with a narrow beam waist positioned between about 25 µm and
about 300 µm above the skin surface, for a duration and with an
intensity at the beam waist sufficient to cause modification of at
least one hair shaft growing from the skin surface and located in
the beam at the beam waist without causing irritation or damage
to the skin; and
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e) if said determined distance is outside said specified
range of distances from the skin surface, gating production or
delivery of light from said at least one light source such that
light is not delivered when said determined distance is outside
said specified range of distances.

The issues
The Examiner rejected:
I. claims 1, 2, 9-12, 14-18, 20, and 21 under 35 U.S.C. § 103(a) as
obvious over Van Hal2 and Whatcott3 (Ans. 5-8).
II. claims 30-32 and 34 under 35 U.S.C. § 103(a) as obvious over
Van Hal, Whatcott, and Azar4 (Ans. 8-9).
III. claim 19 under 35 U.S.C. § 103(a) as obvious over Van Hal,
Whatcott, and Tankovich5 (Ans. 9).
IV. Claim 22 under 35 U.S.C. § 103(a) as obvious over Van Hal,
Whatcott, and Neev6 (Ans. 9-10).
V. Claim 33 under 35 U.S.C. § 103(a) as obvious over Van Hal,
Whatcott, Azar, and Neev (Ans. 10).
I. 35 U.S.C. § 103(a) over Van Hal and Whatcott
The Examiner finds that “Van Hal discloses a laser device for
shortening hairs that includes a highly convergent beam of light” (Ans. 5).
The Examiner finds that although “Van Hal discloses a means to detect the
position and orientation of hairs at the skin surface, the reference is silent

2 Van Hal et al., US 2006/0178659 A1, published Aug. 10, 2006.
3 Whatcott et al., US 2006/0047330 A1, published Mar. 2, 2006.
4 Azar et al., US 7,066,929 B1, issued June 27, 2006.
5 Tankovich et al., US 6,162,211, issued Dec. 19, 2000.
6 Neev, J., US 6,168,590 B1, issued Jan. 2, 2001.
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with regards to determining a specific distance from the handpiece to the
skin surface” (id. at 6). The Examiner finds that “Whatcott discloses a laser
therapy device for use in dermatology that includes a proximity sensor that
determines when the probe is within a predetermined treatment range and
activates/deactivates the light source” (id.).
The Examiner finds it would have been obvious to
include the proximity sensor taught by Whatcott in the device
taught by Van Hal as alternative to the image sensor in order to
provide light from a handpiece to a treatment area at any
desired distance and to activate the light source if the handpiece
is within any established treatment range providing a device
that is easy and safe to use at home.

(Id.).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Van Hal and Whatcott would
have rendered the claims obvious?
Findings of Fact
1. The Specification teaches that:
the beam of light may have an angle of convergence of between
about 30 and about 80 degrees relative to the axis of the beam.
In other embodiments, angles of convergence of between about
40 and about 60 degrees may be used. In still other
embodiments, angles of convergence between about 45 and
about 55 degrees relative to the axis of the beam may be used.

(Spec. 6, l. 29 to 7, l. 3).
2. The Specification teaches that:
the beam waist may be positioned between about 1 and about 3
hair diameters above the skin surface. In other embodiments,
the beam waist diameter may be between about 1 and about 3
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hair diameters. In some embodiments, the beam waist may be
positioned between about 40 µm and about 300 µm above the
skin surface. In most embodiments, the beam waist diameter
may be between about 17 µm and about 600 µm; in some
embodiments, the beam waist diameter may be between about
30 µm and about 300 µm, while in some embodiments it may
be between about 50 µm and about 100 µm.

(Id. at 8, ll. 3-10).
3. Van Hal teaches “a device for shortening hairs comprising a
laser source for generating a laser beam during a predetermined pulse time,
an optical system for focusing the laser beam into a focal spot, and a laser
beam manipulator for positioning the focal spot in a target position”
(Van Hal 1 ¶ 1).
4. Figure 2 of Van Hal is reproduced below:

Fig. 2 shows “the control system 33 determines the target position of the
focal spot 25 of the laser beam 9 in such a manner, that the focal spot 25 is
present in a portion of the hair 3 which is present at a distance d below the
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skin surface 35. In the embodiment shown, said distance d is approximately
0.1 mm” (id. at 2-3 ¶ 18).
5. Van Hal teaches “embodiments in which the position of the
focal spot 25 of the laser beam 9 is on or above the skin surface 35, so that
the hairs 3 are shortened to a length just on or above the level of the skin
surface 35 (id. at 3 ¶ 23).
6. Van Hal teaches
an image sensor for detecting an image of at least a portion of a
skin with hairs to be shortened, an image recognizing system
for determining a position and/or orientation of the hairs
relative to the skin, and a control system for determining the
target position of the focal spot as a function of said position
and/or orientation wherein, during operation, the control system
adjusts the laser beam manipulator into a position
corresponding to the target position of the focal spot and,
subsequently, activates the laser source. In this particular
embodiment, the target position of the focal spot of the laser
beam is automatically determined by the control system, and
the control system automatically activates the laser source when
having adjusted the laser beam manipulator into a position
corresponding to the target position. As a result of this
automatic determination and positioning of the focal spot, the
device for shortening hairs is particularly suitable for use by
non-professional persons, i.e. is particularly suitable for the
consumer market.

(Id. at 2 ¶ 10).
7. Whatcott teaches that “a green light emitting diode is lit at
indicator 38a when probe 30 is determined by a proximity detector to be
within treatment range and a red light emitting diode is lit at indicator 38b
when probe 30 is not within treatment range” (Whatcott 3 ¶ 48).
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Principles of Law
The Examiner has the initial burden of establishing a prima facie case
obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992).
“In In re Aller, 220 F.2d 454 . . . (1955), the court set out the rule that
the discovery of an optimum value of a variable in a known process is
normally obvious. We have found exceptions to this rule . . . . This case, in
which the parameter optimized was not recognized to be a result-effective
variable, is another exception.” In re Antonie, 559, F.2d 618, 620 (CCPA
1977).
Analysis
Van Hal teaches a method of shortening hair using a laser (FF 3)
which differs from claim 1 in three respects. Van Hal does not teach the use
of a proximity sensor, the specific positioning of the light beam from 25 µm
to 300 µm above the skin surface, and the specific angle of convergence of
“about 45 and about 55 degrees,” all required by claim 1.
Proximity sensor
The Examiner relies upon Whatcott to teach a proximity sensor for
applications of laser light as therapies (FF 7). We agree with the Examiner
that the substitution of Whatcott’s proximity sensor for Van Hal’s focus
control system would have been obvious because “when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007).
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25 um to 300 um above the skin surface
The Examiner relies upon Van Hal to teach that “the position of the
focal spot 25 of the laser beam 9 is on or above the skin surface 35”
(Van Hal 3 ¶ 23; FF 5). Van Hal’s teaching that the laser position may be
“on or above the skin surface” is reasonably interpreted as recognizing that
the specific location of the laser beam is a results optimizable variable. We
agree with the Examiner that selection of the range 25 µm to 300 µm in
claim 1 would have been obvious, because no secondary considerations were
adduced, and Van Hal reasonably recognizes that the specific location may
be optimized.
Angle of convergence of between about 45 and about 55 degrees
The Examiner finds that “Fig. 2 of Van Hal depicts a laser beam (9),
but is silent in the specification as to a specific angle of convergence. Based
on the figure, the examiner has determined the angle of convergence to be
about 25 degrees” (Ans. 11). The Examiner finds that “about 25 degrees
(depicted in Fig. 2 of Van Hal) reads on about 45 degrees” (id.).
Appellants contend that “the Examiner cannot ignore an expressly
recited claim term simply because the Examiner believes Appellants did not
point out the criticality of such term.
On these particular facts, the Examiner has not reasonably established
that Van Hal’s angle of convergence is 25 degrees, much less evidenced that
the angle of convergence of a laser in this context is a results optimizable
variable. See In re Aller, 220 F.2d 454, 456 (CCPA 1955). The only
evidence for the angle in Van Hal is shown in Figure 2, but “it is well settled
that the drawings of patent applications are not necessarily scale or working
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drawings.” In re Nash, 230 F.2d 428, 431 (CCPA 1956). See also In re
Olson, 212 F.2d 590, 592 (CCPA 1954) (“Ordinarily drawings which
accompany an application for a patent are merely illustrative of the
principles embodied in the alleged invention claimed therein and do not
define the precise proportions of elements relied upon to endow the claims
with patentability.”) Therefore, the Examiner has not established an
evidentiary basis to support a finding that Van Hal suggests a particular
angle of convergence.
Even if we credited Figure 2 of Van Hal as showing a 25 degree angle
of convergence, the Examiner also provides no evidence that this angle is a
variable subject to routine optimization. As stated in Antonie, while
discovery of an optimum value of a variable is normally obvious, one
exception to this rule is the situation where the parameter optimized was not
recognized to be a result-effective variable. See In re Antonie, 559 F.2d at
620. In this case, the Examiner has not established, with evidence, that the
angle of convergence is a parameter that would be subject to optimization.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Van Hal and Whatcott would have rendered claims 1, 2, 9-12, 14-18,
20, and 21 obvious.
II. 35 U.S.C. § 103(a) over Van Hal, Whatcott, and Azar
Claim 31
The Examiner relies upon Van Hal and Whatcott, but finds them
“silent with regards to a plurality of light sources that converge spatially to
overlap and then diverge spatially to form a non-overlap region” (Ans. 8).
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The Examiner finds that “Azar discloses a laser dermatological device that
uses a plurality of beams where each of the beams have energy that is
insufficient to heat the tissue that they strike to a temperature high enough to
destroy such tissue, but by directing the individual beams to overlap at the
target sufficient heat is generated to destroy the target” (id.). The Examiner
finds it obvious to “substitute the highly convergent beam taught by Van Hal
for the plurality of beams taught by Azar in order to provide a light beam(s)
with a spot or point of high energy sufficient to cause destruction at that spot
while preventing damage or injury to the surrounding tissue taught by both
Azar and Van Hal” (id. at 8-9).
Appellants contend that
the Examiner failed to demonstrate that a controller “configured
to control delivery of light such that when said light source is
positioned within a specified range of distances from said
skin surface, said beam waist will be positioned between
about 25 µm and about 300 µm above the skin surface”
(emphasis added) would have been obvious from Van Hal in
view of Whatcott.

(App. Br. 53). Appellants also contend that
The Examiner also failed to demonstrate that “if said
determined distance is within said specified range of distances
from the skin surface, activating said two or more light sources
to generate two or more beams that converge to form a high
fluence overlap region between about 25 µm and about 300 µm
above the skin surface but diverge prior to reaching the skin
surface, for a duration and with an intensity at the overlap
region sufficient to cause modification of at least one hair shaft
growing from the skin surface and located in the overlap
region,” and “if said determined distance is outside said
specified range of distances from the skin surface, gating
production or delivery of light from said two or more light
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sources such that light is not delivered when said determined
distance is outside said specified range of distances.”

(Id.).
We find that the Examiner has the better position. As we already
discussed, Van Hal’s teaching that the laser position may be “on or above
the skin surface” is reasonably interpreted as recognizing that the specific
location of the laser beam is a results optimizable variable. We agree with
the Examiner that selection of the range 25 µm to 300 µm in claim 1 would
have been obvious, because no secondary considerations were adduced, and
Van Hal reasonably recognizes that the specific targeting location for the
laser may be optimized.
We also find that the Examiner properly relied upon Whatcott to
suggest controlling the activation of a light source by a controller which
determines whether the probe “is determined by a proximity detector to be
within treatment range” (Whatcott 3 ¶ 48; FF 7). Further, Van Hal teaches
that “the control system automatically activates the laser source when having
adjusted the laser beam manipulator into a position corresponding to the
target position” (Van Hal 2 ¶ 10; FF 6). Those teachings reasonably
suggested, and would have rendered obvious, the specific targeting and
control elements required by steps d) and e) of claim 31.
We note that claim 31 differs from claim 1 in lacking the requirement
for an angle of convergence of “between about 45 and about 55 degrees.”
Claim 32
Appellants contend that “the Examiner failed to demonstrate that any
of Van Hal, Whatcott, or Azar teach or suggest ‘activating said at least two
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light sources automatically when said determined distance is within said
specified range of distances from the skin surface’” (App. Br. 55).
We are not persuaded. The Examiner specifically relied upon Van
Hal to teach “a control system that adjusts the laser beam into a position
corresponding to the target position of the focal spot and then activates the
laser source (Par 0010)” (Ans. 6). At the cited location, Van Hal teaches
that
the target position of the focal spot of the laser beam is
automatically determined by the control system, and the control
system automatically activates the laser source when having
adjusted the laser beam manipulator into a position
corresponding to the target position. As a result of this
automatic determination and positioning of the focal spot, the
device for shortening hairs is particularly suitable for use by
non-professional persons, i.e. is particularly suitable for the
consumer market.

(Van Hal 2 ¶ 10; FF 6). This is a specific teaching of automatic activation of
the light source when the distance is appropriate (FF 6).
Claim 34
Appellants contend that “the range of ‘25 µm and about 300 µm
above the skin surface’ would not have been obvious from Van Hal” (App.
Br. 56).
We are not persuaded for the reasons given above, that Van Hal
teaches that the laser position may be “on or above the skin surface,” which
is reasonably interpreted as recognizing that the specific location of the laser
beam is a results optimizable variable. We agree with the Examiner that
selection of the range 25 µm to 300 µm in claim 1 would have been obvious,
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because no secondary considerations were adduced, and Van Hal reasonably
recognizes that the specific targeting location for the laser may be optimized.
Appellants contend that “the Examiner did not point to any teaching
or suggestion in any of the references of a ‘proximity sensor configured to
. . . generate a proximity sense signal’” (id.).
We are not persuaded. The Examiner specifically relied upon
Whatcott, which teaches that “a green light emitting diode is lit at indicator
38a when probe 30 is determined by a proximity detector to be within
treatment range and a red light emitting diode is lit at indicator 38b when
probe 30 is not within treatment range” (Whatcott 3 ¶ 48; FF 7).
Appellants contend that the “Examiner also did not demonstrate
teaching or suggestion in Van Hal, Whatcott, or Azar of ‘control circuitry
configured to gate activation of the plurality of light sources responsive to
receipt of said proximity sense signal’” (App. Br. 56).
We are not persuaded. Van Hal specifically teaches that a “control
system automatically activates the laser source when having adjusted the
laser beam manipulator into a position corresponding to the target position”
(Van Hal 2 ¶ 10; FF 6). In combination with Whatcott’s suggestion of a
proximity sensor, control circuitry associated with a proximity sensor would
have been obvious over the combined teachings of Van Hal, Whatcott, and
Azar.
Claim 30
Appellants provide no separate arguments for claim 30, so it is
affirmed for the reason given for claim 34.
III and IV. 35 U.S.C. § 103(a) rejections
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These rejections rely upon the underlying obviousness rejection over
Van Hal and Whatcott. Having reversed the rejection of claim 1, we
necessarily reverse these obviousness rejections, because none of the
additionally cited prior art is relied upon to teach “an angle of convergence
of between about 45 and about 55 degrees” as required by claim 1, upon
which claims 19 and 22 depend.
V. 35 U.S.C. § 103(a) rejection over Van Hal, Whatcott, Azar, and Neev
The Examiner finds that “Neev discloses a method of hair removal
where the beam can be used to individually target hairs or can be scanned
over a large areas to destroy multiple hairs simultaneously” (Ans. 10). The
Examiner finds it obvious “to use either of these methods taught by Neev in
the method taught by Van Hal and Whatcott to either achieve a precise
treatment or rapid treatment depending on the desire of the user” (id.).
Appellants contend that claim 31 would not “have been obvious from
Van Hal taken in view of Whatcott and further in view of Azar. The
Examiner looked to Neev in an attempt to show teachings of ‘not
specifically targeting the hair shaft,’ and did not show that Neev teaches or
suggests other recitations of claim 31” (App. Br. 60). Appellants contend
that “[t]here clearly can have been no suggestion to modify the references as
proffered by the Examiner” (id. at 61).
We find that the Examiner has the better position. We already found
that claim 31 would have been obvious for the reasons given previously.
Appellants have not specifically identified any specific error in the
Examiner’s rejection of claim 33.
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SUMMARY
We reverse the rejection of claims 1, 2, 9-12, 14-18, 20, and 21 under
35 U.S.C. § 103(a) as obvious over Van Hal and Whatcott.
We affirm the rejection of claims 30-32 and 34 under 35 U.S.C.
§ 103(a) as obvious over Van Hal, Whatcott, and Azar.
We reverse the rejection of claim 19 under 35 U.S.C. § 103(a) as
obvious over Van Hal, Whatcott, and Tankovich.
We reverse the rejection of claim 22 under 35 U.S.C. § 103(a) as
obvious over Van Hal, Whatcott, and Neev.
We affirm the rejection of claim 33 under 35 U.S.C. § 103(a) as
obvious over Van Hal, Whatcott, Azar, and Neev.

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-IN-PART
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