Ex Parte Floessholzer et al

Patent Trial and Appeal Board

Apr 27, 2017

12678753 (P.T.A.B. Apr. 27, 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.
12/678,753 05/27/2010 Hannes Uwe Floessholzer 2007P01382WOUS 1142
24737 7590 05/01/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue EISEMAN, LYNSEY C
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
05/01/2017 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):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANNES UWE FLOESSHOLZER,
JOLDERT MARIA RENE BOERSMA,
GERTRUDE RIETTE VAN DER KAMP, ARIF VEENDIJK, and
PETER ESHUIS
Appeal 2015-005951
Application 12/678,7531
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
decision rejecting claims 1, 3—9, and 11—152. Claim 1 is independent. App.
Br. 6. We have jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is Koninklijke Philips
N.V., a corporation of The Netherlands. Appeal Br. 2.
2 In an Appellants’ amendment filed August 19, 2014, claims 2 and 10 were
canceled.
Appeal 2015-005951
Application 12/678,753
REJECTIONS
Claims 1, 3—8, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Talpalriu et al. (US 6,171,302 Bl, iss. Jan. 9, 2001,
hereinafter “Talpalriu”).
Claims 1, 3—8, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Talpalriu and Aharon (WO 2006/092776 Al, pub.
Sept. 8, 2006, hereinafter “Aharon”).
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Talpalriu and Winston (US 6,659,007 Bl, iss. Dec. 9, 2003, hereinafter
“Winston”).
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Talpalriu, Aharon, and Winston.
Claims 11—13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Talpalriu and Dover et al. (US 2006/0020260 Al, pub.
Jan. 26, 2006, hereinafter “Dover”).
Claims 11—13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Talpalriu, Aharon, and Dover.
SUMMARY OF DECISION
We REVERSE.
2
Appeal 2015-005951
Application 12/678,753
CLAIMED SUBJECT MATTER
The claims are directed to a skin treatment device with means for
providing a tactile feedback signal. Claim 1, the sole independent claim,
reproduced below, is representative of the claimed subject matter:
1. A skin treatment device having:
a treatment window for treating skin through the
treatment window, and
a user guide arranged separately from the treatment
window, the user guide including
an outer contour defining a step roller configured to
move the treatment window along the skin in a stepwise
manner, each moving step having a defined step width by
which the treatment window is displaced by rolling the step
roller on the skin in a stepwise manner thereby defining the step
width that measures between 90% and 95%, of a projection of
the treatment window onto the skin, and
configured to deliver a tactile feedback signal in stepwise
increments of the treatment window along the skin, the tactile
feedback signal resulting from a physical interaction between
the skin and the user guide.
App. Br. 21 (Claims App.).
OPINION
The present invention is a skin treatment device or “photoepilation”
device that uses light to treat the skin. Spec. 1:9—21. Among other
limitations, claim 1 recites that the device includes a treatment window and a
user guide arranged separately from the treatment window. See App. Br. 21
(Claims App.). Claim 1 further requires that the user guide include an outer
contour defining a step roller that is “configured to deliver a tactile feedback
3
Appeal 2015-005951
Application 12/678,753
signal in stepwise increments of the treatment window along the skin.” See
id. The Examiner’s position with respect to the claim 1 is that it is
unpatentable over Talpalriu alone or Talpalriu and Aharon as set forth in the
Final Office action.
Appellants take issue with the rejection and argue that although in
“each of Talpalriu and Aharon, it is clear that each teaches solely a sensor
that provides an auditory and visual indication of the distance traversed,”
neither reference discloses a “user guide . . . configured to deliver a tactile
feedback signal,” as called for by claim 1. App. Br. 11.
In response, thehe Examiner notes that there are differences between
the claimed invention and the prior art but reasons that, “[t]he reference does
not have to explicitly teach [tactile feedback], so long as the structure
provides the capability.” Ans. 15—16. This reasoning was further
emphasized in the Examiner’s Answer wherein it was stated that “even if
Talpalriu and Aharon specifically disclose the user guide as having a
different or additional intended use or functionality, [it] does not prevent the
structure of the device from providing the tactile feedback in stepwise
increments, as claimed.” Id. 18.
Finally, Appellants respond that, “the claim makes clear that there is a
structural limitation which requires that the user guide be ‘configured’ to
deliver tactile feedback in stepwise increments of the treatment window. As
such, it is clear that this claim element is not intended use.” Reply Br. 3.
The issue presented in this case for resolution is a matter of claim
interpretation. In particular, we are asked to determine the meaning of the
phrase “configured to deliver a tactile feedback signal in stepwise
increments of the treatment window along the skin.”
4
Appeal 2015-005951
Application 12/678,753
Turning first to the case law, In re Giannelli, 739F.3d 1375 (Fed. Cir.
2014) is relevant to this issue. There, the Federal Circuit has provided some
guidance on interpreting the phrase “configured to”.
We have noted that, “the phrase ‘adapted to’ is frequently used
to mean ‘made to,’ ‘designed to,’ or ‘configured to,’ ...” Aspex
Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349
(Fed.Cir.2012). Although the phrase can also mean “ ‘capable
of or ‘suitable for,’ ” id., here the written description makes
clear that “adapted to,” as used in the '261 application, has a
narrower meaning, viz., that the claimed machine is designed or
constructed to be used as a rowing machine whereby a pulling
force is exerted on the handles.
Id. 1379 (Emphasis added.)
Next we review the Specification to determine the meaning of the
phrase. Appellants set forth the need for the tactile feedback in the
Specification, stating that “a lot of attention is needed during the treatment in
order to expose every part of the skin that is to be epilated or otherwise
treated, while avoiding exposing any part more than once.” Spec. 2:15—17.
Appellants also state that “also in other forms of surface treatment (e.g.
plasma surface treatment), the present invention will be especially useful
when the effect of the treatment is not immediately visible to the naked eye.”
Id. 2:24—26. Further, Appellants Specification describes how the user guide
is “configured to” provide the tactile feedback in that “the user guidance
means are elastically biased toward the skin [to ensure] that the user
guidance means stay in firm mechanical contact with the skin [to ensure]
that the tactile signal is correctly transmitted to the user.” Id. 5:27—33. See
also id. 9:14—19, which states that “[t]he contour 22 of the wheel 32 being
5
Appeal 2015-005951
Application 12/678,753
polygonal... the user of the device 10 needs to overcome a palpable force.
. . . The vanishing of this force constitutes a tactile signal.” Thus, the
structure described in the Specification makes clear how the device is
constructed, that is, how it is configured to deliver a tactile feedback.
In contrast, although rotatable member 22 of Talpalriu can be a
variety of cross-sectional shapes, including a circular or a cogged shape, and
can have alternating rough and smooth areas, Talpalriu does not disclose that
rotatable member 22 is constructed, that is, “configured to” provide tactile
feedback. Rather, Talpalriu’s sensor 28 sends infrared light signal towards
rotatable member 22 and depending on whether the light interacts with cog
24 or the space 26 between cogs 24, sensor 28 sends a signal to processor 8
that determines the “on” and “off’ times of light beam 20 as it travels along
patient’s skin 6. See Talpalriu, 7:56—8:4, Fig. 3.Hence, Talpalriu’s device
does not provide a tactile feedback signal about the stepwise motion of the
treatment window along the skin, as called for by claim 1, but rather
provides a light signal. As such, the Examiner’s position that “the notches
[of Talpalriu] would deliver a tactile feedback” requires speculation on the
Examiner’s part. See Ans. 15.Accordingly, for the foregoing reasons,
Talpalriu does not disclose or make obvious a user guide that is “configured
to deliver a tactile feedback signal in stepwise increments of the treatment
window along the skin, as called for by claim 1.” Thus, we do not sustain
the rejection of claim 1 based upon Talpalriu. Claims 3—8, 14, and 15
depend from claim 1. Therefore, the rejection of these claims based upon
Talpalriu also is not sustained.
The rejection of independent claim 1 based upon Talpalriu and
Aharon relies upon the same interpretation of the “configured to” claim
6
Appeal 2015-005951
Application 12/678,753
language. See Final Act. 11. Aharon is not relied upon for teaching a device
that is “configured to deliver a tactile feedback signal in stepwise increments
of the treatment window along the skin.” nor does it. See id. at 12. Thus,
because Aharon does not cure the deficiency of Talpalriu, we likewise do
not sustain the rejection of claim 1 based upon the Talpalriu and Aharon.
Claims 3—8, 14, and 15 depend from claim 1. Accordingly, the rejection of
these claims based upon Talpalriu and Aharon is also not sustained.
The remaining references cited by the Examiner, Winston and Dover,
have been reviewed and they also do not cure the deficiency of Talpalriu.
Therefore, for the same reasons as discussed above, we do not sustain the
obviousness rejections of claim 9 based upon Talpalriu and Winston, or
Talpalriu, Aharon, and Winston; and of claims 11—13 based upon Talpalriu
and Dover, or Talpalriu, Aharon, and Dover.
DECISION
The Examiner’s decision to reject claims 1, 3—9, and 11—15 under
35 U.S.C. § 103 is reversed.
REVERSED
7