Johnson & Johnson Consumer Inc.

Patent Trials and Appeals Board

Jan 10, 2022

2021003990 (P.T.A.B. Jan. 10, 2022)

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. 15/271,283 09/21/2016 Alexandru Paunescu MCP5266USNP 3534 27777 7590 01/10/2022 JOSEPH F. SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 EXAMINER LI, JOHN DENNY ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 01/10/2022 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): jnjuspatent@its.jnj.com lhowd@its.jnj.com pair_jnj@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEXANDRU PAUNESCU and JYOTSNA PATURI Appeal 2021-003990 Application 15/271,283 Technology Center 3700 Before BRETT C. MARTIN, JEREMY M. PLENZLER, and MICHAEL L. WOODS, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claim 18, the sole claim remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Johnson & Johnson Consumer Inc. Appeal Br. 2. Appeal 2021-003990 Application 15/271,283 2 CLAIMED SUBJECT MATTER The claim is directed “to devices and methods for treating, reducing and preventing adverse skin/scalp conditions and enhancing the topical application of a benefit agent.” Spec. 1, ll. 4-6. Claim 18, reproduced below, is illustrative of the claimed subject matter: 18. A method for application of an active benefit agent to skin, comprising the steps of: i) applying a topical composition without the active benefit agent to skin; ii) applying ultrasound through the topical composition from an ultrasound device to provide breaks in the skin surface uniformity to pre-condition the skin, the device comprising: d.) a housing having a bottom portion comprising an application surface; e.) a power source positioned in the housing; and f.) an acoustic transducer positioned in the housing in electrical communication with the power source for producing ultrasound waves and oriented such that the ultrasound waves are projected from the acoustic transducer at an angle ɵ of other than 90° relative to the application surface wherein steps i and ii are repeated for at least two consecutive applications at frequency of at least once daily; and iii) applying the active benefit agent to the pre-conditioned skin. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Garner US 2010/0277305 A1 Nov. 4, 2010 Jimenez Lozano (“Lozano”) US 2017/0326346 A1 Nov. 16, 2017 Iger WO 00/15300 Mar. 23, 2000 Appeal 2021-003990 Application 15/271,283 3 REJECTION Claim 18 stands rejected under 35 U.S.C. § 103 as unpatentable over Iger, Garner, and Lozano. Final Act. 3. OPINION Appellant first argues that “Iger actually teaches away from the methods of the present invention” and that “Iger fails to teach or suggest applying at least two consecutive [ultrasound] applications at frequency of at least once daily in the method of the present application.” Appeal Br. 3-4. As the Examiner points out, however, “Iger does not criticize, discredit or otherwise discourage the claimed solution.” Ans. 3. Appellant asserts that the claimed method comprises “a period of time very much longer than that taught by Iger.” Appeal Br. 3. It is unclear how Appellant’s method can be “very much longer” than what is taught in Iger. Iger teaches consecutive applications occurring with as little as less than one minute between applications. Iger p. 15, ll. 8-12. Iger is then simply silent regarding any subsequent treatments that would equate to repeating the consecutive treatment once daily. We agree with the Examiner that describing a single treatment of consecutive applications and remaining silent about additional treatments does not amount to a teaching away from Appellant’s claimed method. Second, Appellant argues that “Lozano’s feature of freezing ultrasound coupling media with Iger’s feature of boiling ultrasound coupling media (or forming ‘gas bubbles’) is actually improper.” Appeal Br. 4. Appellant focuses on the freezing treatment aspects of Lozano, but ignores the Examiner’s express statement that he is not incorporating the cryogenic aspects of Lozano, but only the pre-treatment preparation aspects of Lozano. Appeal 2021-003990 Application 15/271,283 4 See Ans. 4. As such, there is no conflict between Iger’s boiling and Lozano’s freezing because the Examiner is only utilizing the pre-treatment preparation of Lozano, which is the same as Appellant’s pre-treatment preparation. As such, we are not persuaded that the Examiner’s proposed combination is improper. As to Garner, Appellant does not argue that the Examiner’s use of Garner is improper, only that it does not cure the alleged defect of the Examiner’s combination of Iger and Lozano. Having found no defect in this combination, we sustain the Examiner’s rejection. CONCLUSION The Examiner’s rejection is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 18 103 Iger, Garner, Lozano 18 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED