Ex Parte Wilkens et al

Board of Patent Appeals and Interferences

Nov 23, 2010

10094431 (B.P.A.I. Nov. 23, 2010)

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.
10/094,431 03/08/2002 Jan Hennrik Wilkens B-7079 3129
7590 11/23/2010
Harding, Earley, Follmer & Frailey
86 The Commons At Valley For. E.
1288 Valley Forge RD.
P. O. Box 750
Valley Forge, PA 19482
EXAMINER
SHAY, DAVID M
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
11/23/2010 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 JAN HENNRIK WILKENS and ROLF STIRNER
____________________

Appeal 2009-008621
Application 10/094,431
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008621
Application 10/094,431
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 (2002) from the Examiner's
decision rejecting as unpatentable under § 103(a) claims 1-11, 13, 14, 20, 21,
and 23 in view of Lys (US 6,166,496, iss. Dec. 26, 2000), Stirner (WO
00/28575, pub. May 18, 2000), Tankovich (US 6,050,990, iss. Apr. 18,
2000), Harth (WO 00/02491, pub. Jan. 20, 2000), Kollias (WO 00/64537,
Nov. 2, 2000), and Kiernan (WO 00/53114, pub. Sep. 14, 2000) and claims
15-17 and 22 in view of Lys, Stirner, Kiernan, Tankovich, Kollias, and
Harth. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

THE INVENTION
Claim 1, reproduced below (with emphasis added), is illustrative of
the claimed subject matter:
Irradiation device for the treatment of acne, acne scars and skin aging,
comprising at least one source of irradiation wherein the radiation source (2)
emits a broadband optical spectrum in a wavelength range between at least
320 nm to at least 540 nm, the radiation source being pulse operable and/or
movable in relation to the area to be irradiated, the pulse energy of which is
between 0.05 - 10 J/cm2 and the peak irradiation intensity of the optical
pulses being higher than 0.5 W/cm2 and lower than 100 kW/cm2;
wherein the device comprises a vibration device for the generation of
a mechanical vibration which is placed onto the skin to be treated for
facilitating the extraction of the sebum from the pores.

SUMMARY OF DECISION
We REVERSE.

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OPINION
The relevant portion of claim 1 requires an irradiation device further
having "a vibration device … for facilitating the extraction of the sebum
from the pores." The Examiner found that Tankovich describes "a vibration
device to drive substances into the hair follicles." Ans. 3. Appellants point
out that the claim requires extracting a substance from the pores, not driving
a substance into the pores. Appeal Br. 11. The Examiner answers that first,
the vibrations "will impart energy to the skin and hence to the sebum,
thereby heating the sebum, to at least a small degree, thus increasing [its]
ability to flow, which will facilitate the extraction thereof," and second,
"forcing of additional material into the pore will cause the displacement of a
portion of the resident material, i.e.[,] sebum." Ans. 5. Appellants counter
that forcing of additional material into a pore does not necessarily mean that
sebum will be displaced. Appeal Br. 13-17.
Thus, the dispositive issue before us is whether the Examiner's
conclusion, that the teachings of Tankovich in combination with those of
Lys, Stirner, Harth, Kollias, and Kiernan render obvious an irradiation
device including "a vibration device … for facilitating the extraction of the
sebum from the pores," is based on rational underpinning.
The Examiner does not rely on an explicit teaching in Tankovich of
the claimed vibration device "for facilitating the extraction of the sebum,"
but rather appears to rely on Tankovich's disclosure of an ultrasonic vibrator
to render obvious this limitation. Ans. 4-5. In particular, the Examiner
states: "the use of a vibration device, as taught by Tankovich … would more
effectively and deeply deliver the therapeutic material into the hair follicle."
Id. The Examiner concludes: "[t]hus clearly there is a proper motivation."
Ans. 5.
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A prima facie case of obviousness "means not only that the evidence
of the prior art would reasonably allow the conclusion the examiner seeks,
but also that the prior art compels such a conclusion if the applicant
produces no evidence or argument to rebut it." In re Spada, 911 F.2d 705,
708 n.3 (Fed. Cir. 1990). Upon rebuttal, we review "the totality of the
record." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
We find that Lys describes the use of an LED system to illuminate
dermatological lesions, such as acne, for a therapeutic effect. Lys, col. 70,
ll. 8-24. We find that Tankovich describes an ultrasonic vibration device
that introduces chemicals into a hair follicle that destroy the hair duct when
the chemical is exposed to sunlight. Tankovich, col. 39, ll. 10-12, col. 38, ll.
14-18.
The Examiner's reason to combine Tankovich's vibration device (to
"more effectively and deeply deliver the therapeutic material into the hair
follicle") with Lys's acne treatment method is not related to the claim
limitation the Examiner wishes to address with Tankovich's vibration device
(i.e., "a vibration device … for facilitating the extraction of the sebum"). As
argued by Appellants, the function of the vibrations of Tankovich and claim
1 are in opposition. The Examiner attempts to remedy this disparity by
alleging that the vibration device in Tankovich will tend to heat the sebum,
thus facilitating extraction. Ans. 5. However, the Examiner's statement is
speculative; we do not find that Tankovich suggests such a capability and
the Examiner has not provided a basis in fact and/or logical reasoning to
reasonably support the allegation. The Examiner's speculative reasoning
therefore does not serve as a rational underpinning supporting the
Examiner's proposed combination. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) ("The Patent Office … may not, because it may doubt that the
Appeal 2009-008621
Application 10/094,431
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invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis").
The Examiner next alleges that forcing material into the pore will
displace some of the sebum. Ans. 5. The Examiner does not provide any
evidence to support this allegation. Accordingly, the Examiner's conclusion
that it would have been obvious to modify the hair removal method of Lys to
include the vibration device of Tankovich to displace sebum using
microparticles is not based on a rational underpinning, but speculation.
Without an articulated rationale based on rational underpinning for
modifying the reference as proposed, the Examiner's rejection appears to be
the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007)) ("rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness").
The Examiner rejects claims 1-11, 13, 14, 20, 21, and 23 using the
rationale that, for the reasons discussed above, is insufficient. Thus, the
rejection of these claims must fail. The Examiner rejects claims 15-17 and
22 in a similar fashion, stating that "the motivations for combination thereof
are essentially those already set forth regarding claims 1-11, 13, 14, 20, 21,
and 23." Ans. 4. Because the rationale presented for claims 1-11, 13, 14,
20, 21, and 23 are deficient, the rationale for claims 15-17 and 22 are
likewise deficient.
Appeal 2009-008621
Application 10/094,431
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DECISION
For the above reasons, we reverse the Examiner's decision.

REVERSED

hh

Harding, Earley, Follmer & Frailey
86 The Commons At Valley For. E.
1288 Valley Forge RD.
P.O. Box 750
Valley Forge, PA 19482