Ex Parte Ting et al

Patent Trial and Appeal Board

Sep 25, 2018

13616497 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/616,497 09/14/2012 Joseph Ting
68981 7590 09/27/2018
Zeltiq Aesthetics, Inc.
Perkins Coie LLP
P.O. BOX 1247
SEATTLE, WA 98111-1247
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.
579688001US2 4428
EXAMINER
SMITH, KAITLYN ELIZABETH
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH TING, SAMUEL W. TOLKOFF,
TIMOTHY ROBINSON, and RICHARD WISDOM
Appeal2017-006211
Application 13/616,497
Technology Center 3700
Before JEFFREY N. FRED MAN, ULRIKE W. JENKS, and
TA WEN CHANG, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeals from the
Examiner's decision to reject claims directed to a cooling system for
affecting subcutaneous lipid rich cells. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Zeltiq Aesthetics, Inc.
Appeal Br. 2.
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Application 13/616,497
STATEMENT OF THE CASE
According to the Specification,
lipid-rich cells can be affected at low temperatures that do not
affect non-lipid-rich cells. As a result, lipid-rich cells, such as
those forming the cellulite, can be affected while other cells in
the same region are generally not damaged even though the non-
lipid-rich cells at the surface are subject to even lower
temperatures.
Spec. ,r 35. Subcutaneous tissue contains lipid-rich cells, "[t]he term
'subcutaneous tissue' means tissue lying underneath the dermis and includes
adipocytes (fat cells) and subcutaneous fat." Spec. ,r 16.
Claims 42-77 are on appeal2 and can be found in the Claims
Appendix of the Appeal Brief. Claim 42 is representative of the claims on
appeal, and reads as follows:
42. A cooling system for affecting subcutaneous lipid-rich cells
in tissue of a subject, the cooling system comprising:
a first cooling element having a first heat exchanging surface,
wherein the first cooling element is configured to remove
heat from the lipid-rich cells to affect the lipid-rich cells
while non-lipid rich cells in skin of the tissue are not
substantially affected;
a second cooling element spaced apart from the first cooling
element, the second cooling element having a second heat
exchanging surface, wherein the second cooling element
is configured to remove heat from the lipid-rich cells to
affect the lipid-rich cells while non-lipid rich cells in the
skin of the tissue are not substantially affected; and
a holder assembly coupled to the first cooling element and the
second cooling element such that the first cooling element
is rotatable about a first axis along the holder assembly and
the second cooling element is rotatable about a second axis
along the holder assembly to adjust a relative position
between the first and second heat exchanging surfaces to
2 Claims 1--41 are canceled. Appeal Br. 2.
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accommodate the tissue located between the first and
second cooling elements.
Appellants request review of the following rejections made by
Examiner:
I. Claims 42-69 and 72-76 under 35 U.S.C. § I03(a) as
unpatentable over Anderson 3 in view of Beeuwkes. 4
II. Claims 70 and 71 under 35 U.S.C. § I03(a) as unpatentable
over Anderson and Beeuwkes further in view of Halvorson. 5
III. Claim 77 under 35 U.S.C. § I03(a) as unpatentable over
Anderson and Beeuwkes and further in view of Pira. 6
We consider rejections 1.-111. together, because the same issue is
dispositive for all three rejections each relying on the teachings of Anderson
and Beeuwkes. See Appeal Br. 23 ("Halvorson fails to teach or suggest the
deficiencies of Anderson and Beeuwkes" or "Pira fails to teach or suggest
the deficiencies of Anderson and Beeuwkes").
The issue is: Does the preponderance of evidence of record support
Examiner's conclusion that the combination of Anderson and Beeuwkes
teaches a cooling system containing cooling elements that are rotatable
about a fixed axis?
3 Richard R. Anderson et al., US 2005/0251120 Al, published Nov. 10,
2005 ("Anderson").
4 Reinier Beeuwkes, III, US 5,456,703, issued Oct. 10, 1995 ("Beeuwkes").
5 Kaia A. Halvorson, US 2003/0220594 Al, published Nov. 27, 2003
("Halvorson").
6 Luc Pira, US 6,017,337, issued January 25, 2000 ("Pira").
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Findings of Fact
FF 1. Anderson teaches a treatment system for cooling lipid-rich cells
within a skinfold. Figure 2, is reproduced below, and shows such a
coo ling system:
CONTROL UNIH
POINfR SUPPLY
' 105
fA!
i,,r.:::::'.::======~-160
165
i70
120
·-·-·---·""""""""""""""""""""""""" _____ .......,
FOUlfR APPtlCA mm
~
FIG. 2A
Figure 2, reproduced above, shows a treatment system for cooling fat
cells. See Anderson ,r 178; see Final Act. 4. The system includes
control units 105 and treatment units 107 as well as a detector 120 that
can measure temperature change in the tissue. See Anderson ,r 178.
"Compression unit 205 may be adapted to pull treatment units 107
together, thereby folding (or 'pinching') target tissue (epidermis 160,
dermis 165 and fat cells 170) up between treatment units 107." Id.
FF2. Anderson teaches that "compression unit 205 may vary the force with
which treatment units 107 are pulled together around the target tissue
( epidermis 160, dermis 165 and fat cells 170). For example,
compression unit 205 can apply a pulsing force for alternately
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tightening and loosening the fold (or 'pinch') of the target tissue."
Anderson ,r 179.
FF3. Anderson teaches that the cooling unit can also be applied to tissue as
a flat system that does not pinch the tissue.
During the cold exposure the cooling device was
applied to the skin with minor to moderate pressure
that did not cause significant mechanical
compression of blood flow. The cooling element
was applied to the skin without any manipulation of
the surface profile.
Anderson ,r 185 (Example 1 ). Loss of subcutaneous adipose tissue
was observed using the flat cooling device. See id. ,r 187 (Table 1 ),
see id. ,r 188 (Table 2).
FF4. Anderson teaches using the cooling device with or without decreasing
blood flow. Compare Anderson claims 1, 38, and 39 with claims 109
and 110.
FF5. Beeuwkes teaches a device for applying hot/cold therapy to target
regions. Beeuwkes, Abstract. Beeuwkes system has "substantially
omnidirectional movement of the thermal cells relative to the support
structure, i.e. rotation, pivoting etc. to enable the thermal cells to
achieve intimate heat/cold transmitting relation with the target
region." Beeuwkes 3: 1-5, see also id. at 5:25-29 ("This retention
apparatus may conveniently take the form of a support band structure
such as a headband, for example, from which the compliant cells are
pivotally, rotatably and adjustably supported").
FF6. Beeuwkes teaches that "[t]he apparatus also incorporates means for
releasably securing or positioning the compliant cell or cells in
intimate low mechanical pressure per unit area surface conforming
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contact with selected target regions of the selected anatomical region."
Beeuwkes 5:20-25, see id. at 9:40-59. Beeuwkes teaches that
"application of only minimal mechanical force against facial surfaces
... permit the patient to undergo efficient heat or cold therapy in such
manner as to be free from the pain or discomfort that might be caused
if the mechanical force that is necessary if heat transfer were
localized." Beeuwkes 2: 18-23.
Principle of Law
"If the claim extends to what is obvious, it is invalid under§ 103."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
Analysis
Examiner finds that Anderson teaches a cooling system that removes
heat from lipid-rich cells. See Final Act. 4. Examiner acknowledges that
Anderson does not teach that the cooling elements are rotatable about the
axis in the holder assembly. See id. Examiner looks to Beeuwkes for
teaching an apparatus that applies heat/cold to "target regions of the human
anatomy (title) including a holder assembly ( 14) and treatment units ( 12 and
13) and a yoke device (92) that allows for omnidirectional movement." Id.
at 5. Examiner concludes that based on the combined teachings of
Beeuwkes and Anderson
Id.
it would have been obvious to one having ordinary skill in the art
at the time of the invention to have included the omnidirectional
movement of the thermal cells of Beeuwkes in the apparatus of
Anderson so as to enable the thermal cells to achieve intimate
heat/cold transmitting relation with the target region.
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We generally agree with and adopt the findings concerning the scope
and content of the prior art as well as the conclusions as set forth in the
Examiner's Answer and the Final Office Action. The findings of fact
reproduced above are referenced to highlight certain pertinent evidence. We
address Appellants' arguments below:
Appellants contend that Examiner relies on impermissible hindsight.
Appeal Br. 18. We are not persuaded.
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and
does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Appellants have not directed us to what aspects of Appellants'
Specification Examiner relies on in reaching the conclusion of obviousness.
See Ans. 3. Here, Anderson teaches the application of a flat cooling element
onto the skin that applies only minor to moderate pressure. FF3. Anderson
also teaches that the cooling element that pinches skinfold can vary the
pressure. FF1-FF2. Additionally, Anderson also teaches that either
apparatus can be used with or without blood flow restriction. FF4. These
combined teachings of Anderson reasonably convey that Anderson's device
can be used in such a way that does not require the application of pressure
onto the tissue to the point of restricting blood flow.
Beeuwkes similarly teaches an apparatus for heating or cooling the
skin. FF5. Beeuwkes explains that it's desirable to apply only minimal
pressure in order minimize a patient's discomfort while applying treatment.
FF6. A teaching that suggests minimizing a patient's discomfort does not
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indicate no pressure may applied to the tissue while applying the treatment.
Beeuwkes reasonably teaches that when pressure is applied to the device, it
should not cause patient discomfort. FF6.
Examiner relies on Beeuwkes's teaching of a cooling device that can
be adjusted to bring the thermal cell into intimate contact with the patient's
skin. See FF5-FF6. In other words, Beeuwkes's heating and/or cooling
surfaces can be adjusted to most closely fit the anatomical contours of a
patient's skin. This reasonably ensures that the device surface makes as
close a contact as possible over the entire heat transfer surface. Here,
Examiner's rejection relies on adding Beeuwkes's omnidirectional hinge
into Anderson's device "to enable the thermal cells to achieve intimate
heat/cold transmitting relation with the target region." Final Act. 5. Based
on the cited evidence, we find no error with Examiner's rationale.
Appellants have not directed us to any knowledge that was outside of the
level of the ordinary artisan and only available from the Specification to
arrive at the claimed invention. Accordingly, we are not persuaded by the
hindsight argument.
Appellants contend that one of ordinary skill in the art would not be
motivated to "lock[] the treatment units because Beeuwkes fails to disclose
locking or other suitable means for achieving functionality needed to
perform Anderson's procedures." Reply Br. 3.
We are not persuaded. Examiner explains that no rejection of adding
a lock was made because the claims do not require such a feature. See
Ans. 3. As Examiner further explains "[t]he modification of Anderson with
the omnidirectional rotation capability of Beeuwkes has not changed the
degree to which Anderson pulls the treatment units together." Ans. 2, see id.
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at 4. If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability. KSR, 550 U.S. at 417. It is proper to
"take account of the inferences and creative steps that a person of ordinary
skill in the art would employ." Id. at 418. See also id. at 421 ("A person of
ordinary skill is also a person of ordinary creativity, not an automaton.").
Examiner's rejection is not relying on adding a locking mechanism to
Beeuwkes hinges inserted into Anderson's apparatus to arrive at the claimed
invention. See Ans. 3. But even if the rejection required the application of
such a mechanism, Beeuwkes reasonably suggests securing the device
against the anatomical region. Specifically, Beeuwkes teaches that "[t]he
apparatus also incorporates means for releasably securing or positioning the
compliant cell[ s ]" against the selected anatomical region. FF6; see also
Ans. 4 ("Beeuwkes then goes on to teach that it is desirable to support the
treatment units in substantially immovable relation with the selected
anatomical region and that the treatment units are also sufficiently adjustable
relative to the support structure"). We agree with Examiner's conclusion
that one of ordinary skill in the art would know how to secure the
omnidirectional hinge of Beeuwkes for use in Anderson's apparatus. See
Ans. 4. ("modifying Anderson with the omnidirectional rotation components
of Beeuwkes would not necessarily result in low applied mechanical force as
the degree to which Anderson pulls the treatment units together has not been
modified"). Beeuwkes teaches the apparatus "incorporates means for
releasably securing or positioning the compliant cell" or that these compliant
cells can be "adjustably supported." See FF5-FF6. These teachings in
Beeuwkes sufficiently support the Examiner's conclusion that an ordinary
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artisan would know how to make the hinges of Beeuwkes work in
Anderson's apparatus.
Appellants contend that Anderson requires high compressive forces.
Appellants rely on paragraph 153 of Anderson that explains "high
compressive forces are applied such that the locally applied pressure limits
or eliminates cutaneous warm blood flow into the target region to allow
sufficient cooling of targeted subcutaneous tissue within the fold." Reply
Br. 3. "The fundamental differences between Anderson's limiting cutaneous
blood flow at the base of the fold of skin and Beeuwkes's apparatus
designed to maintain cutaneous blood flow supports non-obviousness."
Appeal Br. 19.
We are not persuaded. It is well settled that "in a section 103 inquiry,
'the fact that a specific [embodiment] is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered."' Merck & Co. v. Biocraft Laboratories,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d
747, 750 (CCPA 1976)); see also In re Mills, 470 F.2d 649,651 (CCPA
1972) ("All the disclosures in a reference must be evaluated, including
nonpreferred embodiments, and a reference is not limited to the disclosure of
specific working examples." ( Citations omitted).) "[ A Jpparatus claims
cover what a device is, not what a device does. An invention need not
operate differently than the prior art to be patentable, but need only be
different." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
1468 (Fed. Cir. 1990).
Here, Anderson teaches that the application of force is not required in
order for the cold treatment to work. See FF3-FF4. Specifically, Anderson
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teaches that the compression unit may be pulsed, applying tightening and
loosening cycles to the target tissue. FF2. This reasonably suggests that the
application of continuous force and blood flow restriction, as argued by
Appellants, is not required in order to achieve tissue cooling using
Anderson's apparatus. Here, Anderson reasonably suggests that the
apparatus can be utilized in such a way that does not require restriction of
blood flow. FF2-FF4. Anderson teaches applying a cooling device using
only minor to moderate pressure, i.e., one that does not compress blood
flow, while the device is applied to the skin and this application also works
to disrupt subcutaneous fat. FF3. Therefore, Appellants' contention that
Anderson requires high compressive forces is not persuasive.
Furthermore, Beeuwkes teaching of applying only minimal force to
the surface in order to minimize discomfort to the patient does not mean that
no pressure can be applied. See FF6. Beeuwkes's teaching of minimizing
comfort would reasonably suggest to the one of ordinary skill in the art that
pressure may be applied to the apparatus making contact with the skin as
long as the patient is comfortable. Because Anderson teaches that blood
flow restriction is not required for the apparatus to function (see FF2-FF4)
and Beeuwkes reasonably allows some pressure to be applied to the skin
(see FF5-FF6) we are not persuaded by Appellants' contention that
Anderson's apparatus is fundamentally different from the cooling apparatus
disclosed in Beeuwkes.
We conclude that the evidence cited by Examiner supports a prima
facie case of obviousness with respect to claim 42, and Appellants have not
provided sufficient rebuttal evidence that outweighs the evidence supporting
the Examiner's conclusion of obviousness. As Appellants do not argue the
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claims separately, claims 43-77 fall with claim 42. 37 C.F.R. § 41.37
( C )(1 )(iv).
SUMMARY
We affirm the rejection of claim 42 under 35 U.S.C. § 103(a) over
Anderson in view ofBeeuwkes. Claims 43---69 and 72-76 were not
separately argued and fall with claim 42.
We affirm the rejection of claims 70 and 71 under 35 U.S.C. § 103(a)
over Anderson and Beeuwkes further in view of Halvorson.
We affirm the rejection of claim 77 under 35 U.S.C. § 103(a) over
Anderson and Beeuwkes and further in view of Pira.
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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