Ex Parte Youngquist et al

Patent Trial and Appeal Board

Sep 7, 2018

13443876 (P.T.A.B. Sep. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/443,876 04/10/2012 David Youngquist
86528 7590 09/11/2018
Slayden Grubert Beard PLLC
401 Congress Avenue
Suite 1650
Austin, TX 78701
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.
16591.105084 4871
EXAMINER
JENNESS, NATHAN JAY
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
09/11/2018 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):
trosson@sgbfirm.com
patent@sgbfirm.com
dallen@sgbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID YOUNGQUIST, HARVEY I-HENG LIU,
JAY M. VAHLENSIECK, PATRICK REICHERT,
JOHN P. BEALE, and TOBIN ISLAND 1
Appeal2018-005285
Application 13/443,876
Technology Center 3700
Before DONALD E. ADAMS, JOHN G. NEW, and RYAN H. FLAX,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision under 35 U.S.C. § 134(a) involving claims directed
to a hand-held device for providing a dermatological treatment by scanning
laser beams to form a pattern of treatment spots on the skin. Claims 1-3, 5,
6, 8-14, 16, and 18-21 are on appeal as rejected under 35 U.S.C. § 103.2
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as "Channel Investments,
LLC." Appeal Br. 2. Herein we reference the Specification of Apr. 10,
2012 ("Spec."); the Final Office Action of May 8, 2017 ("Final Action"); the
Appeal Brief of Jan. 8, 2018 ("Appeal Br."); the Examiner's Answer of Feb.
23, 2018 ("Answer"); and Reply Brief of Apr. 23, 2018 ("Reply Br.").
2 A rejection under 35 U.S.C. § 112, first paragraph, for lack of written
description was withdrawn. Advisory Action dated Sept. 25, 2017.
Appeal2018-005285
Application 13/443,876
STATEMENT OF THE CASE
The Specification describes a "device [that] provides automatically
scanned and/ or pulsed energy beams to the skin to provide a fractional
dermatological treatment, e.g., skin resurfacing, skin rejuvenation, wrinkle
treatment, removal or reduction of pigmentation, treatment of coarse skin
caused by photodamage, etc." Spec. 4:24--27. The Specification further
states,
The device may be configured to generate an array of MTZs
[ micro thermal zones] in the skin that are laterally spaced apart
from each other by volumes of untreated (i.e., non-irradiated or
less irradiated) skin. For example, an application end of the
device may be manually moved ( e.g., in a gliding manner) across
the surface of the skin during a treatment session. An
automatically scanned array of beams may be delivered to the
skin (to generate an array of MTZs in the skin).
Id. at 5:5-10.
Independent claim 1 is representative and is reproduced below:
1. A hand-held device for providing a dermatological
treatment by scanning laser beams to form a pattern of treatment
spots on the skin, comprising:
a laser source configured to generate an input laser beam
at a wavelength in the range of 1400-1500 nm or 1800-2600 nm;
and
an automated scanning system including a rotating multi-
sector scanning element configured to repeatedly scan the input
laser beam, each scan of the input laser beam providing an array
of output laser beams corresponding to the multiple sectors of the
scanning element and forming a scanned row of treatment spots
on the skin;
wherein the rotating multi-sector scanning element is
configured such that the each sector provides a constant-angular-
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Application 13/443,876
direction output laser beam as that sector rotates through the
input laser beam;
wherein the treatment spots of each scanned row are
spaced apart from each other by areas of non-treated skin to
provide a fractional treatment to the skin, wherein each treatment
spot is defined by a contiguous area on the skin surface receiving
at least l/e2 times the maximum intensity of a respective beam
pulse, and the areas of non-treated skin receive insufficient
radiation to qualify as a treatment spot; and
a treatment spot control system comprising hardware
circuitry configured to provide a defined non-zero minimum
distance, in a direction of manual movement of the device,
between corresponding treatment spots of adjacent rows of
treatment spots, the corresponding treatment spots being formed
by the same sector of the multi-sector scanning element during
consecutive rotations of the scanning element, such that the
corresponding treatment spots of adjacent rows of treatment
spots are spaced apart from each other along the direction of
manual movement of the device by areas of non-irradiated skin;
wherein the hardware circuitry of the treatment spot
control system is programmed such that during a manual
movement of the device across the skin at a velocity providing
less than a defined minimum displacement of the device during
a period corresponding with a defined rotation of the rotating
multi-sector scanning element, the treatment spot control system
temporarily interrupts and then automatically restarts the
formation of treatment spots on the skin by the device to achieve
the defined non-zero minimum distance between corresponding
treatment spots of adjacent rows of treatment spots, such that the
device delivers output laser beams to the skin for any non-zero
manual movement velocity of the device that results in a
displacement of the device of at least the defined minimum
displacement across the skin;
wherein the output laser beams are delivered from an
application end of the device toward the skin; and
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Application 13/443,876
wherein the delivered laser beams meet the Class 1 M or
better eye safety classification per the IEC 60825-1.
Appeal Br. 25-26 (Claims Appendix) (emphasis added to identify the
limitation argued by Appellants).
The following rejections are appealed:
Claims 1, 2, 5, 6, 11-14, 16, 18, and 21 stand rejected under 35 U.S.C.
§ I03(a) over Dewey3 and Hawkins. 4 Final Action 7.
Claim 3 stands rejected under 35 U.S.C. § I03(a) over Dewey,
Hawkins, and Batterson. 5 Id. at 13.
Claims 8, 9, and 18 stand rejected under 35 U.S.C. § I03(a) over
Dewey, Hawkins, DeBenedictis, 6 and Waarts. 7 Id. at 14.
Claim 10 stands rejected under 35 U.S.C. § I03(a) over Dewey,
Hawkins, and Altshuler. 8 Id. at 16.
Claims 19 and 20 stand rejected under 35 U.S.C. § I03(a) over
DeBenedictis, Dewey, and Hawkins. Id. at 18.
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).
Arguments made by Appellants in the Appeal Brief and properly presented
3 US 2012/0197357 Al (pub. Aug. 2, 2012) ("Dewey").
4 US 2008/0262484 Al (pub. Oct. 23, 2008) ("Hawkins").
5 US 2010/0130969 Al (pub. May 27, 2010) ("Batterson").
6 US 2005/0141068 Al (pub. June 30, 2005) ("DeBenedictis").
7 US 5,790,576 (issued Aug. 4, 1998) ("Waarts").
8 US 2007/0213698 Al (pub. Sept. 13, 2007) ("Altshuler").
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Appeal2018-005285
Application 13/443,876
in the Reply Brief have been considered in this Decision; arguments not so-
presented in the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015);
see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) ("Any bases for asserting error, whether factual or legal, that
are not raised in the principal brief are waived.").
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under§ 103." Id. at 419.
The Examiner determined that the claims would have been obvious
over the Dewey-Hawkins prior art combination, adding DeBenedictis to this
prior art combination in rejecting independent claim 19, and adding
Batterson, Waarts, and/or Altshuler to the prior art combination regarding
certain limitations of dependent claims. Final Action 7-22 and Answer 2-
11 (collectively citing Dewey ,r,r 15, 20, 29, 33, 41, 42, 45, 48, 52, 53, 56-
59, 74, 78, 87, 88, 90, 93, 97; figures 2--4; Hawkins ,r,r 11, 29, 34, 36, 39, 41,
43, figure 3; DeBenedictis ,r,r 4, 29, 52-54, figure 6; Batterson ,r,r 44, 50, 63,
64, 79-89, figures 7 A-7C; Waarts abstract, 1: 13-29; and Altshuler ,r,r 18-
20, 75, 82, 89, 96, 129, 141, figures 1, 3, 6); see also, supra, Statement of
the Case. We discern no error in the Examiner's determinations. We adopt
the Examiner's findings of fact and rationale in this Decision. Final Action
7-22; Answer 2-11. We address Appellants' arguments below.
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Application 13/443,876
Appellants argue the patentability of the claims as a group and we find
that claim 1 is representative. Therefore, all claims stand or fall with claim
1. Appellants focus their arguments on appeal on the contention that the
independent claims (1, 19, and 21) are nonobvious over Dewey and Hawkins
(regarding independent claim 19, Appellants note that DeBenedictis is also a
part of the prior art combination of the respective rejection, but the reference
is not pertinent to or discussed in Appellants' arguments). Appeal Br. 13.
Appellants argue:
a key feature of the invention is that the claimed device delivers
laser beams to the skin for any non-zero manual movement
velocity of the device, while also ensuring a minimum (non-zero)
distance between the treatment spots of adjacent rows, e.g.,
between spots 70A and 70B shown in Figure 5B copied above
[ see below]. In particular, if the user is moving the device across
the skin at a very low velocity that would fail to achieve the
minimum distance between adjacent treatment spot rows ( e.g., if
the device moves less than a defined minimum distance during a
defined angular rotation of the rotating scanning element), the
device temporarily interrupts and then automatically restarts the
delivery of laser beams to the skin to thereby achieve the defined
non-zero minimum distance between adjacent treatment spot
rows.
The cited references, in particular Dewey (US
2012/0197357) in view of Hawkins, fail to teach or make this
feature obvious.
Id. at 14. Figure 5B from the Specification, referenced above, is reproduced
below:
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Appeal2018-005285
Application 13/443,876
• l ' 7~r ( 70 70
r; • • 728 70A
r; • • 72C 70B
ti
(./
.. • • • • • • ..
70C .. • ii • • • I GLIDE 700 • D!RECTION
• • • • .. • ,. •
SCAN DIRECT!ON
FIG. 5B
Figure 5B "illustrate[s] the general concept of creating rows of treatment
spots on the skin using a scanned-beam radiation-based treatment device"
and shows rows of treatment spots 70, produced by a laser, aligned in a
"glide direction" and diagonally aligned in a "scan direction," dependent on
glide speed, scanning rate, displacement-based control, and other factors.
Spec. 11: 16-17; 44:3--45:9.
Appellants contend Dewey teaches preventing radiation delivery
when a glide speed of its device is below a minimum velocity whereas the
claim requires temporarily interrupting and then automatically restarting
treatment during a low manual movement velocity. Appeal Br. 14.
Appellants' argument is that, because Dewey discusses ( a nonspecific and
undefined, generic) velocity range for activating and deactivating its laser,
Dewey teaches there are velocities outside that range and so not any non-
zero velocity or movement will trigger the laser.
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Appeal2018-005285
Application 13/443,876
Appellants also argue Dewey and Hawkins cannot be combined
because the claimed invention is "antithetical" to Dewey's teachings, i.e.,
Dewey teaches away. Appeal Br. 23. Appellants argue, in any event,
Hawkins fails to teach automatically temporally interrupting and
automatically restarting a laser, as claimed. Id.
Appellants' arguments are not persuasive. We conclude that, in
agreement with the Examiner's determinations, Dewey teaches and suggests,
and renders obvious the claim element "the device delivers output laser
beams to the skin for any non-zero manual movement velocity of the device
that results in a displacement of the device of at least the defined minimum
displacement across the skin."
Upon review of the reference, Dewey teaches a device having
hardware programmed to control the functioning of a laser diode in real-time
based on the movement of the laser device across a user's skin to ensure that
a desired dose of radiation (microscopic treatment zones) is delivered and
not exceeded. Dewey ,r,r 29, 56-59, 78, 93, fig. 2. For example, Dewey
discloses, "[t]he controller 36 is also configured to prevent the laser 16 from
actuating if the handheld apparatus 10 is not being moved by the consumer
at an appropriate velocity relative to the consumer's skin surface SS during
treatment." Id. ,r 56. Further, Dewey discloses:
If the consumer moves the handheld apparatus 10 too slowly or
not at all, the dosage of the treatment should be limited. Thus, it
is desirable to compensate the control of the laser 16 for the
various application velocities, as long as the velocity of the
handheld apparatus 10 stays within a desired range (determined
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Application 13/443,876
by treatment effectiveness). To this end, the movement and/or
velocity of the handheld apparatus 10 may be detected.
Id. ( emphasis added). The use of such a laser apparatus is well summarized
by Dewey as follows:
In summary, the handheld apparatus 10 may be used by a
consumer to perform a dermatological treatment, such as
fractional skin resurfacing. During treatment, the consumer
moves the tip 26 of the handheld apparatus 10 over a treatment
area of the skin surface SS. Pulses from the laser 16 are deflected
by the optical pattern generator 14 into the skin surface S S to
form a plurality of microscopic treatment zones (MfZs) dispersed
among and surrounded by non-treated areas of minimally-
damaged or undamaged tissue. The velocity of the tip 26 is
detected by the mouse detector 82, and the laser 16 is controlled
according to this detected velocity. Consequently, a generally
constant amount of energy per unit of skin surface S S is
deposited regardless of velocity variations during treatment.
Dewey ,r 104. Dewey teaches and suggests that movement dropping as low
as none at all will cause the controller to tum off the laser and, conversely,
essentially any movement can cause the controller to actuate a laser. See id.
,r 93. While not explicit that any movement above none at all will trigger
laser activation, Dewey's disclosure certainly contemplates a desired
movement-trigger range where any velocity and any movement could be
within the desired range, and most certainly contemplates any such
triggering movements that are possible by the manual manipulation of the
device by a person.
"[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation." In re Aller, 220 F.2d 454,456 (CCPA 1955). Because, as
taught by Dewey, the triggering of laser activation or inactivation based on
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Application 13/443,876
the velocity or displacement of the laser is a result effective variable relating
to radiation dosing by the laser, determining that "any movement" as
claimed is optimal, as compared to Dewey's generic "desired range ( e.g.,
above zero and above a minimum hand speed," is not a patentable
distinction over the prior art. Therefore, we agree with the Examiner's
determination that Dewey teaches and suggests the claimed limitation at
lSSUe.
For the reasons above, we are unpersuaded by Appellants' arguments
that neither Dewey nor Hawkins teaches or suggested the claim element at
issue, that Dewey teaches away from such an element and the combination
of the two prior art references, or that the skilled artisan would not have
combined Dewey and Hawkins.
SUMMARY
The obviousness rejections under 35 U.S.C. § 103 are each affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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