Ex Parte Jones et al

Patent Trial and Appeal Board

Mar 12, 2018

13646274 (P.T.A.B. Mar. 12, 2018)

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.
13/646,274 10/05/2012 Ross Peter JONES 162047.50402 2492
29880 7590 03/14/2018
FOX ROTHSCHILD LLP
PRINCETON PIKE CORPORATE CENTER
997 LENOX DRIVE
BLDG. #3
EAWRENCEVTT.TE, NJ 08648
EXAMINER
JENNESS, NATHAN JAY
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
03/14/2018 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):
ipdocket @ foxrothschild. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROSS PETER JONES, MICHAEL JOHN COX, and
EUAN MORRISON
Appeal 2016-003339
Application 13/646,274
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-003339
Application 13/646,274
STATEMENT OF THE CASE
Ross Peter Jones et al. (Appellants)1 appeal under 35 U.S.C. § 134(a)
from the Examiner’s December 29, 2014, final decision (“Final Act.”)
rejecting claims 1—4, 9, 11—23, and 25—32.2 Appellants’ representative
presented oral argument on March 6, 2018. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
SUMMARY OF THE INVENTION
Appellants’ disclosure is directed to a dual panel photodynamic
therapy lamp. Spec. 1:9—10. Claim 1, reproduced below from page 20
(Claims Appendix) of the Appeal Brief, is illustrative of the claimed subject
matter:
1. A photodynamic therapy lamp, comprising two lamp
modules each lamp module comprising a two-dimensional array
of LEDs and each of the lamp modules being configured to be
movable only within a range defined between a first position
and a second position, the first position defining an angle
between the lamp modules from 157 degrees to 180 degrees,
and the second position defining the angle between the lamp
modules of 60 degrees.
REJECTIONS
Claims 1—4, 9, 11, 12, 17, 20-23, 25, and 32 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Ferguson (US 2006/0229689 Al,
1 The Appeal Brief identifies Photocure ASA, a corporate applicant, as the
real party in interest. Appeal Br. 2.
2 Claims 5—8, 10, and 24 are canceled. Amendment (filed June 26, 2015).
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Application 13/646,274
published Oct. 12, 2006) and Harth (US 2003/0216795 Al, published Nov.
20, 2003).
Claims 13—16, 18, 19, and 26—31 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ferguson, Harth, and Groseth (US
2004/0260365 Al, published Dec. 23, 2004).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner erred. See Appeal Br. 6—18; Reply Br. 2—8.
We are not persuaded by Appellants’ arguments. Except as noted below, we
adopt as our own (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken, and (2) the reasons set forth by
the Examiner in the Answer. We highlight and amplify certain teachings
and suggestions of the references, as well as certain ones of Appellants’
arguments, as follows.
Claim Construction
Claim 1 recites, in pertinent part, “each of the lamp modules being
configured to be movable only within a range defined between a first
position and a second position.” Appeal Br. 20 (Claims App.). Appellants’
arguments in the Briefs presume that the quoted language requires each lamp
module to be movable to the first position and to be movable to the second
position. See, e.g., Appeal Br. 11.
We do not agree with this interpretation. We note that claim 1
requires the lamp modules to be movable within a range defined between
(i.e., by) the first and second positions. Appeal Br. 20 (Claims App.).
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Application 13/646,274
Appellants do not point out, and our review does not reveal, any specialized
definition of within in the Specification or any indication that the term is
used outside of its ordinary meaning. Thus, we interpret the claim term as
broadly as the ordinary usage of the term by one of ordinary skill in the art
would permit. See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). Such ordinary usage of within includes “in or into the
interior of or the parts or space enclosed by,” “inside of,” and “in the
compass or limits of; not beyond.” See, e.g.,
http://www.dictionary.com/browse/within (last visited March 7, 2018).
Thus, as used in claim 1, within delimits the maximum range of lamp
module movability but does not require a minimum amount of movability or
movement to a particular position.
Accordingly, we interpret claim 1 as requiring the lamp modules to be
movable, and that the maximum amount of movability is between the first
position and the second position. Using the largest range set forth in claim
1, the lamp modules therefore must be movable to define an angle between
the lamp modules somewhere in the range from 60° to 180°. For example,
two lamp modules that are movable to define an included angle
therebetween from 90° to 120° are movable within such range. See Ans. 5—
6 (interpreting claim 1 in a similar manner).
Obviousness Over Ferguson and Harth
Appellants present arguments for claims 1—4, 9, 11, 12, 17, 20—23, 25,
and 32 collectively. Appeal Br. 9—15. We select claim 1 as representative,
treating claims 2-4, 9, 11, 12, 17, 20—23, 25, and 32 as standing or falling
with representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 13/646,274
The Examiner finds that Ferguson discloses a photodynamic therapy
lamp substantially as recited in claim 1, including two lamp modules that
may be relatively angled “from generally not less than 70 degrees to
generally not more than 170 degrees.” Final Act. 5 (citing Ferguson H 24—
25, Abstract, Fig. 1). “The [EJxaminer interprets ‘generally’ as disclosing
angles less than 70° are envisioned though not optimal.” Id. at 3. The
Examiner finds:
Ferguson . . . discloses the motivation for selecting the angle
between the panels is driven by a need to provide symmetric
and even application of therapy to all areas of the face . . .;
specifically, a user may place his or her face between the FED
panels such that a person’s nose [may] near[ly] touch the border
between the panels.
Id. at 5 (citing Ferguson 7, 68, Fig. 1). The Examiner finds that Ferguson
“does not disclose the lamps are moveable only between a first position
defining an angle from 157 degrees to 180 degrees, and [a] second position
defining an angle from 55 to 65 degrees.” Id. at 6.
The Examiner finds that Harth discloses a photodynamic therapy lamp
having two lamp modules that can be “slightly vertically tilted by the
operator around [a] pivot axis ... in order to adjust the positioning and
consequentially the illumination energy distribution of two illumination
collimated light beams ... to be equally and evenly distributed ... on the
two face sides of the treated patient.” Id. (citing Ferguson 1136, Fig. 9A).3
The Examiner finds this equal and even distribution to be homogenous
3 Although the Examiner cites to Ferguson paragraph 77, it appears the
intended citation was to paragraph 136, which contains the language noted
by the Examiner.
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illumination. Id. The Examiner clarifies that “[Harth] is merely relied on
for its teaching of providing angular adjustability between two light panels
in order to deliver light equally and evenly to the face.” Ans. 3.
The Examiner reasons that it would have been obvious to one of
ordinary skill in the art to modify Ferguson’s photodynamic therapy lamp
“by making the LED panels adjustable with respect to one another, as taught
by Harth, in order to improve the device by predictably enabling the even
application of therapy on different sized faces and body portions.” Final
Act. 7. The Examiner notes that it has been held that “adjustability, where
needed, is not a patentable advance,” and reasons that, “[bjecause there is an
art-recognized need for adjustment between lamp modules, the inclusion of
an arc-shaped supporting structure, pivot, or hinge as taught by the prior art
would have been obvious.” Id. (citing In re Stevens, 212 F.2d 197 (CCPA
1954)).
The Examiner notes that Ferguson’s lamp modules “are nearly
abutting,” and the dual illumination heads of Harth are “separated by a
lateral distance greater than the width of a patient’s head.” Id. at 8. The
Examiner reasons:
Because the stated motivation of both Ferguson and Harth is to
provide even application of therapy to the face, the skilled
artisan would recognize that the angle between the two panels
would need to be adjusted based on the lateral separation
between the panels in order to ensure the light emitted from
each panel was aligned with each side of the face. At the time
of invention, it would have been obvious to one of ordinary
skill in the art to set the angle . . . between the panels to [60
degrees] in order to predictably provide even application of
therapy by accounting for a lateral distance between the panels.
Absent any showing of critical or unexpected results, such
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limitations appear to be routine optimization within the skill of
the ordinary artisan at the time the invention was made and are
therefore prima facie obvious.
Id.; Adv. Act. 2 (addressing the after-final amendment of claim 1 to change
the second position angle from “55 degrees to 65 degrees” to “60 degrees”).
Appellants traverse, first arguing that the cited references teach away
from an angle of 60° between the lamp modules. Appeal Br. 9-10.
Appellants rely on the range of angles set forth in paragraph 24 as leading
“[o]ne looking to Ferguson for guidance ... to more-or-less the center of
Ferguson’s 70° to 170° range, i.e., to a range of 110° to 130°, because of
Ferguson’s narrowing of the broadest disclosed range in 20° increments.”
Id. Thus, Appellants conclude, “one would be led in a direction away from
the claimed invention.” Id. at 10; see also Reply Br. 2. Appellants also
disagree with the Examiner’s interpretation of “generally” 70°, arguing that
“even if it were correct that Ferguson’s ‘generally’ disclosure includes
‘some angles less than 70°,’ such a vague teaching would fall far short of the
kind of suggestion to use an angle of 60 degrees that is needed to support
this obviousness rejection.” Reply Br. 7.
We are not persuaded by Appellants’ arguments. “A reference that
‘merely expresses a general preference for an alternative invention but does
not criticize, discredit, or otherwise discourage investigation into’ the
claimed invention does not teach away.” Meiresonne v. Google, Inc., 849
F.3d 1379, 1382 (Fed. Cir. 2017) (quoting Galderma Labs., L.P. v. Tolmar,
Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)). Appellants have not persuasively
apprised us of any such discouragement. Ferguson states:
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Application 13/646,274
[G]iven the 125° to 175° degree angle between the front surface
of the middle portion of the panel attachment section and the
front surface of each left and right portions, the angle created
between the front surface of the left LED panel and the front
surface of the right LED panel is generally not less than 70° and
not more than 170° in the current embodiment. However, it is
to be appreciated that the angle between the front surface of the
left and right LED panels may be between 90° and 150° or even
between 110° and 130°.
Ferguson 124. This is a far cry from discouraging positioning the lamp
modules such that they form an angle of “generally not less than 70°”—to
the contrary, Ferguson explicitly discloses using such an angle.
Furthermore, Appellants’ contentions regarding Ferguson’s use of
“generally” with respect to the angle are contradicted by the express
disclosure of Ferguson. Ferguson states that “the term[] . . . ‘generally’ as
used herein unless otherwise indicated means a margin of ± 20%.” Id. 132.
Thus, as used in Ferguson, “generally not less than 70°” encompasses an
angle ranging from 56°—84°. Appellants’ contentions to the contrary are not
persuasive.
Appellants next argue that one of ordinary skill in the art would not
arrive at a lamp module angle of 60° through routine optimization because
“nothing in the art would have allowed the skilled person to realize that,
when eventually hitting upon the angle of 60 degrees, homogeneous
illumination, where ‘all parts of the selected treatment area receive the same
light dose,’ would have been achieved.” Appeal Br. 11. According to
Appellants, “[e]ven if. . . one of ordinary skill in the art had decided to
optimize for homogeneous illumination, the result would have been failure”
because homogeneity of illumination is not ascertainable by visual
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inspection, but, instead, requires use of a “specially developed”
mathematical model. Id. at 13; see also Reply Br. 5—6 (regarding
Appellants’ three-dimensional mathematic model). Continuing, Appellants
note that Ferguson describes a prior art, hand-held phototherapy device as
“not likely adapted to provide symmetric and even application of the therapy
to all areas of the face,” but assert that “nothing in Ferguson links this
teaching with respect to prior art hand-held devices to the angle between
Ferguson’s two lamp modules.” Appeal Br. 12. Appellants also identify
this alleged lack of a “link” as “one of the chief errors in the Examiner’s
position with respect to this obviousness rejection.” Reply Br. 3.
We are not persuaded by Appellants’ arguments. Appellants’
arguments presume that one of ordinary skill in the art must optimize in the
same manner as Appellants—namely, using a specially developed
mathematical model to measure for homogeneous illumination. This is
incorrect, as “it is not inventive to discover the optimum or workable ranges
by routine experimentation.” In reAller, 220 F.2d 454, 456 (CCPA 1955)
(emphasis added). Appellants fail to persuasively set forth that one of
ordinary skill in the art would not be able to determine the optimal angle
through routine experimentation. For example, as noted by the Examiner,
one of ordinary skill in the art could determine the optimal lamp angle by
observing the efficacy of treatment provided for different angles and,
through trial and error, determine the optimal lamp angle. See Ans. 7. That
one could also determine the optimal angle through a three-dimensional
mathematical model does not negate the possibility of optimizing through
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other methods. Additionally, as noted above, Ferguson’s “generally not less
than 70°” actually extends to as low as 56°, which encompasses 60°.
We are also unpersuaded by Appellants’ arguments regarding an
alleged missing “link” in Ferguson. Ferguson identifies a shortcoming with
prior art photodynamic therapy lamps: “these prior art devices do not
provide for sufficiently convenient at-home applications for facial use.”
Ferguson 17. Ferguson describes one such “prior art device [that]
comprises a hand-held plate,” and recognizes that “if such a hand-held
device is used, it is not likely adapted to provide symmetric and even
application of the therapy to all areas of the face.” Id. In contrast, Ferguson
discloses a dual panel light therapy device designed to treat the patient’s
face:
The user . . . places the part of the body the user wishes to
provide therapy to between the left and right LED panels 14.
For example, the user may place his or her face between the
LED panels such that the person’s nose may nearly touch the
border 108 of the left and right LED panels.
Id. 1 68 (boldface omitted). Ferguson also discloses the angle between the
panels as being “generally not less than 70° and not more than 170°.” Id.
124. One of ordinary skill in the art would recognize that Ferguson’s
disclosure of a dual panel, angled light therapy device is designed to
overcome the identified problems of known, single panel devices and,
therefore, is designed “to provide symmetric and even application of the
therapy to all areas of the face.” Id. 17.
Appellants next argue that a 60° lamp angle provides unexpected
results. Appeal Br. 13—15; see also Reply Br. 3—5. In support, Appellants
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rely on a Declaration of Mr. Euan Morrison (“the Morrison Declaration”), a
named inventor of the patent application under appeal. Appeal Br. 13—15.
We are not persuaded by Appellants’ arguments. “[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.” In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (citing In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)). The burden of demonstrating
unexpected results rests on the party asserting them, and “it is not enough to
show that results are obtained which differ from those obtained in the prior
art; that difference must be shown to be an unexpected difference.” In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Furthermore,
[unexpected results that are probative of nonobviousness are
those that are “different in kind and not merely in degree from
the results of the prior art.” Results which differ by percentages
are differences in degree rather than kind, where the
modification of the percentage is within the capabilities of one
skilled in the art at the time.
Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 739 (Fed. Cir. 2013)
(quoting Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322
(Fed. Cir. 2004)).
Here, Appellants assert an improvement by contrasting their results
from those obtained from a single lamp module. Spec. 18—19. This,
however, is not the closest prior art for comparison. Ferguson discloses a
dual panel lamp, and, therefore, is closer prior art than a device having a
single lamp. Moreover, the showing of unexpected results must be
commensurate in scope with the claims, which require two lamp modules.
See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003). Appellants
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fail to provide the proper comparison, and, thus, fail to establish any
unexpected results. Also, as Ferguson discloses a lamp angle of “generally
not less than 70°” (Ferguson 124) and Appellants acknowledge that
“illumination at 70 degrees ... is substantially homogeneous” (Morrison
Deck 8), Appellants have failed to establish that their results are, in fact,
unexpected. Additionally, the unexpected results asserted by Appellants
appear only to be different in degree rather than in kind. Moreover, although
Appellants argue that a 60° angle provides unexpected results, as noted
above, claim 1 does not actually require positioning the lamps at an angle of
60°, and, thus, Appellants’ alleged showing of unexpected results is not
commensurate in scope with the claims for this additional reason.
To the extent Appellants present additional arguments in the oral
hearing, such new arguments are untimely and will not be considered. See
37 C.F.R. § 41.47(e).
Accordingly, for the foregoing reasons, we sustain the rejection of
claims 1—4, 9, 11, 12, 17, 20-23, 25, and 32 as being unpatentable over
Ferguson and Harth.
Obviousness Over Ferguson, Harth, and Groseth
With respect to the rejection of claims 13—16, 18, 19, and 26—31,
Appellants rely only on the arguments discussed above in regard to the
rejection of claim 1. Appeal Br. 15. Accordingly, for the same reasons as
discussed above, we also sustain the rejection of claims 13—16, 18, 19, and
26—31 as being unpatentable over Ferguson, Harth, and Groseth.
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DECISION
The Examiner’s decision to reject claims 1—4, 9, 11—23, and 25—32 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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