Ex Parte Friedman et al

Board of Patent Appeals and Interferences

Sep 6, 2012

11196831 (B.P.A.I. Sep. 6, 2012)

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.
11/196,831 08/04/2005 Mark Friedman 4387
43399 7590 09/06/2012
EVELYN M. SOMMER
570 LEXINGTON AVENUE , 19TH FLOOR
NEW YORK, NY 10022
EXAMINER
SMITH, KAITLYN ELIZABETH
ART UNIT PAPER NUMBER
3739
MAIL DATE DELIVERY MODE
09/06/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARK FRIEDMAN and RICHARD CASEY
__________

Appeal 2011-011311
Application 11/196,831
Technology Center 3700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims relating to
the use of cold to treat migraines and other medical conditions. The
Examiner has rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1, 3-5, 7, 9-11, 13, and 14 are on appeal. Claims 1 and 5 are
representative and reads as follows:
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Application 11/196,831

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1. A method for medical treatment of a condition selected from the
group consisting of migraine, tension type and post traumatic headache,
atypical facial pain, and cervical muscle hyperactivity associated with a
dural inflammation in a maxillary nerve accessible intra-orally, comprising
applying a cold supplying probe of a portable thermoelectric cooler utilizing
the Peltier effect to at least one of the zones of intra-oral tenderness
evidencing a local sterile inflammation producing vasodilatation, plasma
extravasation and cell degranulation which results in one of the aforesaid
conditions, said zone being located in the area of the plexus formed by the
posterior superior alveolar branch of the ipsilateral maxillary nerve of a
subject having one of the said conditions to cool the maxillary intra-oral
tenderness area wherein said cold supplying probe supplies cold to produce a
temperature of 0 to 10°C, sensing the temperature at the distal end of said
cold supplying probe and adjusting the temperature supplied by the cold
supplying probe, maintaining said temperature for from 25 to 40 minutes to
obtain relief from the symptoms of the medical condition and injecting a
local dental anesthetic in a dental pain relieving amount into said zone of the
intra-oral tenderness in conjunction with the application of said cold
supplying device.

5. A thermoelectric cooling device utilizing the Peltier effect for
applying cold to a subject having a condition selected from migraine, tension
type and posttraumatic headache, atypical facial pain, and cervical muscle
hyperactivity, by contacting a cold supplying probe of said thermoelectric
cooling device with at least one of the zones of intra-oral tenderness
evidencing a local sterile inflammation producing vasodilation, plasma
extravasation and cell degranulation which results in one of the aforesaid
conditions, said zone being located in the area of the plexus formed by the
posterior alveolar branch of the ipsilateral maxillary nerve of said subject
wherein said cold supplying probe supplies cold to produce a temperature of
0 to 10°C for from 25 to 40 minutes, said device comprising a controller
unit, a wire harness having a proximal end and a distal end, said proximal
end of said wire harness attached to said controller unit, a handle having a
first end and a second end, said first end of said handle attached to the distal
end of said wire harness, and a U-shaped mouthpiece attached to said second
end of said handle, a water container, tubing for allowing water to flow out
of and into said container, at least one thermoelectric cooling unit, at least
one heat sink, each distal end of said U-shape mouthpiece containing a
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Application 11/196,831

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thermoelectric cooling module incorporating a Peltier device for supplying
the cold and being situated between said container and said heat sink, the
distal ends of said mouthpiece being capable of applying cold to the said
intra-oral zone on at least one side of the subject‟s mouth to provide relief
from symptoms of the medical condition and a temperature sensor at the
distal end of each prong of said U-shaped mouth piece and means for
adjusting the temperature supplied by the cold supplying probe.

The claims stand rejected under 35 U.S.C. § 103(a) as follows:
• Claims 1, 3, 4, 7, and 9 in view of Friedman „691,
1
Gafni,
2

Friedman „351,
3
and Irwin;
4

• Claims 10 and 11 in view of Friedman „691, Gafni, Friedman „351,
Irwin and Richard;
5

• Claims 13 and 14 in view of Friedman „691, Gafni, Friedman „351,
Irwin and Ensign;
6
and
• Claim 5 in view of Friedman „691, Gafni, Friedman „351, Irwin and
Saringer.
7

I.
The Examiner has rejected claims 1, 3, 4, 7, and 9 under 35 U.S.C.
§ 103(a) as obvious in view of Friedman „691, Gafni, Friedman „351, and
Irwin. Claims 3, 4, 7 and 9 have not been argued separately and therefore
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). In addition, the

1
Friedman, US 5,676,691, issued Oct. 14, 1997.
2
Gafni et al., US 6,741,895 B1, issued May 25, 2004.
3
Friedman, US 5,527,351, issued June 18, 1996.
4
Irwin, US 1,389,662, issued Sept. 6, 1921.
5
Richard, US 3,136,577, issued June 9, 1964.
6
Ensign et al., US 3,349,896, issued Oct. 31, 1967.
7
Saringer, US 5,628,769, issued May 13, 1997.
Appeal 2011-011311
Application 11/196,831

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Examiner has rejected claims 10, 11, 13, and 14 in view of Friedman „691,
Gafni, Friedman „351, Irwin, and either Richard (claims 10 and 11) or
Ensign (claims 13 and 14). We will consider all three rejections together
since Appellants have waived any argument based on Richard or Ensign
(Appeal Br. 15-16).
The Examiner finds that Friedman „691 discloses a method that meets
all the limitations of claim 1 except that “„691 Friedman does not teach the
use of a thermoelectric cooler utilizing the Peltier effect” (Answer 5). The
Examiner finds that Gafni discloses “the use of a thermoelectric device
preferably a Peltier element … to apply a cooling medical treatment to a
desired location” (id.). The Examiner concludes that it would have been
obvious to one of ordinary skill in the art to use Gafni‟s thermoelectric
cooling modules in the treatment method of Friedman „691 “in order to
supply cooling treatment to the desired internal area as Gafni teaches that …
thermoelectric cooling devices particularly Peltier elements are … known to
be used in the medical treatment art” (id.).
8

We adopt the Examiner‟s findings regarding the scope and content of
the prior art (Answer 4-7) and agree with her conclusion that those teachings
would have made obvious the method of claim 1.

8
The Examiner cites Friedman „351 as disclosing that the area of intra-oral
tenderness is also associated with mast cell degranulation (id. at 6), and cites
Irwin only to supply claim limitations that are not found in independent
claim 1 (id.). We conclude that Friedman „691 and Gafni provide teachings
sufficient to support a prima facie case of obviousness with respect to claim
1.
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Appellants argue that there is no “teaching or suggestion in the prior
art, i.e., to modify Friedman by applying any teaching found in Gafni”
(Appeal Br. 12). Appellants argue that the “Gafni teachings are for
diagnostic purposes. Treatment, if any, follows based on the results
obtained.” (Id. at 13.) Appellants argue that there “is nothing in Gafni
which would suggest to the artisan to select the Peltier heater/cooler element
and to use it to chill a very specifically designed area for treating …
migraine headache” (id.).
These arguments are not persuasive. The Examiner relies on Gafni
only to disclose that thermoelectric elements are known for use in medical
devices to apply cooling treatment. Thus, even though Gafni describes using
its device for diagnostic purposes, we agree with the Examiner that it would
have been obvious to one of ordinary skill in the art to apply Gafni‟s
thermoelectric cooling elements known for use in medical devices to the
method of Friedman „691 instead of the cold water or saline disclosed by
Friedman „691 (Friedman „691, col. 1, l. 14). See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.”).
Appellants argue that “Gafni may be interpreted to be teaching away
as it describes the applicants‟ temperature range to be at the pain threshold
level” (Appeal Br. 12).
This argument is not persuasive. “A reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
… led in a direction divergent from the path that was taken by the applicant”
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In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here, one of skill in the art
would not be led on a divergent path because Friedman „691 expressly
discloses that a temperature of 0-4°C is necessary for the treatment of
conditions such as migraines (Friedman „691, col. 1, ll. 8-17).
Appellants also argue that both the temperature range (0 to 10°C) and
the time period (25 to 40 minutes) recited in claim 1 are critical (Appeal Br.
11-12).
This argument is not persuasive because Friedman „691 discloses that
the cold-supplying probe supplies cold to produce a temperature of 0 to 4°C,
within the claimed range (Friedman „691, col. 1, ll. 8-17). Friedman „691
also discloses treatment for 20 to 40 minutes, which overlaps the range
recited in claim 1 (see id. at col. 1, ll. 48-50). “A prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art.” In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003). See also KSR, 550 U.S. at 419 (“If the claim extends
to what is obvious, it is invalid under § 103.”).
Thus, we affirm the rejection of independent claim 1 as obvious in
view of Friedman „691, Gafni, Friedman „351, and Irwin. Claims 3, 4, 7 and
9 fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). We also affirm the
rejection of claims 10, 11, 13, and 14 in view of Friedman „691, Gafni,
Friedman „351, Irwin, and either Richard (claims 10 and 11) or Ensign
(claims 13 and 14), since Appellants have waived any argument based on
Richard or Ensign (Appeal Br. 15-16).
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II.
The Examiner has rejected claim 5 under 35 U.S.C. § 103(a) as
obvious in view of Friedman „691, Gafni, Friedman „351, Irwin and
Saringer. The Examiner relies on Friedman „691 and Gafni as discussed
above. The Examiner also finds that Gafni‟s thermoelectric cooling device
comprises a controller unit, a wire harness, a handle, a temperature sensor,
and “a means for adjusting the temperature supplied by the cold supplying
probe,” as recited in claim 5 (Answer 13-14). The Examiner finds that Irwin
discloses “the treatment of pyorrhea … which is a disease of the mouth and
gums by using a U-shaped mouth piece with the distal ends containing the
treatment means” (id. at 14) that is inserted “within the mouth of the patient
so that the treatment sites will be located” next to the inside gums (id.).
The Examiner finds that Saringer discloses a thermoelectric cooling
device that comprises “a controller unit…, a water container…, tubing for
allowing water flow out of and into said container…, at least one
thermoelectric cooling unit…, at least one heat sink…, said thermoelectric
cooling unit being situated between said container and said heat sink” (id.).
The Examiner concludes that, for the reasons discussed with respect
to claim 1, it would have been obvious to modify the device of Friedman
„691 to include Gafni‟s thermoelectric cooling modules (id.). The Examiner
also concludes that it would have been obvious to modify the device of
Friedman „691 with “the U-shaped mouth piece of Irwin as this design
allows for the entire piece to be inserted into the mouth … thus making it
possible to treat both sides of the mouth at the same time,” which Friedman
„691 discloses would be advantageous (id. at 15). The Examiner further
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concludes that it would have been obvious “to have further modified the
device to have incorporated the temperature device of Saringer in order to
create a structure that can facilitate … cooling of parts or portions of an area
to be treated and thereby provide somatosensory stimulation to treat pain”
(id. at 16).
We adopt the Examiner‟s findings regarding the scope and content of
the prior art (Answer 12-14) and agree with her conclusion that those
teachings would have made obvious the method of claim 5.
Appellants argue that “Irwin is directed to a device to be used in
treating pyorrhea” and “does not contemplate that the arcuate member” is
used in conjunction with thermoelectric cooling units to supply cold
treatments to the gums (Appeal Br. 14). Appellants argue that the “mere fact
that the prior art can be modified to form the claimed structure will not make
the modification obvious unless the prior art suggests the desirability of the
modification” (id. at 14-15).
This argument is not persuasive. Friedman „691 discloses the
application of a cold treatment to treat conditions such as migraines, and also
discloses that two devices can be used at the same time for bilateral
treatment (Friedman „691, col. 10, ll. 11-13). Irwin discloses that an arcuate
member, i.e. a U-shaped mouthpiece, can be used to deliver treatments to the
gums. In view of these disclosures it would have been obvious to one of
ordinary skill in the art to employ a U-shaped mouthpiece in the apparatus of
Friedman „691 to deliver its cold treatment bilaterally.
Appellants argue that the cited references would not have made
obvious the device of claim 5 because the prior art does not provide a
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“suggestion to combine the references” (Appeal Br. 18), and the Examiner
has attempted “to piece together the invention in part by locating references
teaching in isolation … bits and pieces for modification of a primary
reference where there is no suggestion or motivation for the modification in
the references” (id. at 19). However, for the reasons discussed above, this
argument is not persuasive.
SUMMARY
We affirm the rejection of claims 1, 3-5, 7, 9-11, 13, and 14 under 35
U.S.C. § 103(a).
TIME PERIOD FOR RESPONSE
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

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