Ex Parte Nebrigic et al

Patent Trial and Appeal Board

Oct 25, 2018

14339667 (P.T.A.B. Oct. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/339,667 07/24/2014
27805 7590
THOMPSON HINE L.L.P.
10050 Innovation Drive
Suite 400
DAYTON, OH 45342-4934
10/29/2018
FIRST NAMED INVENTOR
Dragan D. Nebrigic
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
094234-00080 1041
EXAMINER
HUPCZEY, JR, RONALD JAMES
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
10/29/2018 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@thompsonhine.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DRAGAN D. NEBRIGIC and THOMAS MARKIEWICZ 1
Appeal2017-010013
Application 14/339,667
Technology Center 3700
Before ULRIKE W. JENKS, RYAN H. FLAX, and DAVID COTTA,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims to a method of operating a tissue treatment apparatus. The
Examiner's rejection of claims 1-3 under 35 U.S.C. § 102(b) is appealed.
We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
STATEMENT OF THE CASE
Independent claim 1, reproduced below, is representative:
1. A method of operating a tissue treatment apparatus to
transcutaneously treat tissue located beneath a skin surface with
electromagnetic energy delivered from a treatment electrode, the
method comprising:
1 The Real Party in Interest is identified as "Valeant Pharmaceuticals
International, Inc." Appeal Br. 3.
Appeal2017-010013
Application 14/339,667
contacting a first portion of a surface of the treatment
electrode with the skin surface, wherein the first portion of the
surface of the treatment electrode is exposed through an
opening located inside an inner edge of a tip frame;
covering a second portion of the surface of the treatment
electrode with the tip frame, wherein the second portion of the
surface of the treatment electrode is located between an outer
peripheral edge of the tip frame and the inner edge of the opening
in the tip frame; and
while maintaining contact between the first portion of the
surface of the treatment electrode and the skin surface,
transcutaneously delivering the electromagnetic energy from the
first portion of the surface of the treatment electrode through the
skin surface to the tissue,
wherein the tip frame is composed of an electrically-
insulating material.
Appeal Br. 12 (Claims Appendix; emphasis added to highlight limitations
argued by Appellants).
The following rejection is on appeal:
Claims 1-3 stand rejected under 35 U.S.C. § I02(b) as anticipated by
Knowlton. 2 Final Action 2.
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"Anticipation requires that all of the claim elements and their limitations are
shown in a single prior art reference." In re Skvorecz, 580 F.3d 1262, 1266
(Fed. Cir. 2009).
2 US 2003/0236487 Al (published Dec. 25, 2003) ("Knowlton").
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Appeal2017-010013
Application 14/339,667
The Examiner determined claims 1-3 are anticipated by Knowlton.
Final Action 2--4, 6-7, and Answer 2---6 (collectively citing Knowlton ,r,r 81,
86, 101, 139, 140, 166-168, 178, 185, Figures 2B, 20B).
Appellants argue Knowlton fails to disclose the claimed use of a
device with a tip frame having an opening exposing a first portion of an
electrode and covering a second portion of the electrode such that the first
portion of the electrode contacts tissue and the second portion of the
electrode does not. See, e.g., Appeal Br. 8. On balance, we find the
evidence on appeal favors Appellants' position.
For these argued features of the device used as claimed, the Examiner
points to Knowlton's Figures 2B and 20B and the related disclosure at
paragraphs 139-140, specifically the electrodes 18 and surrounding means
31, which also incorporates a surface 20 for contacting the tissue 9, as being
the claimed "tip frame" and "treatment electrode." Knowlton's Figure 20B
is reproduced below:
FIG. 20B
Knowlton's Figure 20B is a cross-section view through an array of
electrodes 18 embedded in a surrounding substrate 31, which is an insulating
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Appeal2017-010013
Application 14/339,667
material that provides an electrical impedance to all or a portion of the
respective electrodes, thereby mitigating edge effects of the electrodes 18.
Knowlton ,r,r 139--140. Thus, in use, RF energy passes from the electrodes
18, through the substrate 31, and to the skin 9.
There is no opening in the substrate 31 shown in the figure above that
exposes the electrodes 18. Even if one were to interpret the reference such
that the portion 20 of the substrate 31 between the electrode 18 and the skin
surface 9 that transmits RF energy therebetween during use was a part of the
electrode 18, there is still no opening in the surrounding substrate 31
exposing this portion 20; portion 20 is simply a part of the surrounding
substrate 31. Thus, the respective limitations of the claims that require a tip
frame with an opening exposing a portion and covering a portion of an
electrode are not disclosed by Knowlton. The Examiner has not established
a prima facie case for anticipation.
SUMMARY
The anticipation rejection is reversed.
REVERSED
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