Koninklijke Philips N.V.

Patent Trials and Appeals Board

Nov 18, 2020

2020002603 (P.T.A.B. Nov. 18, 2020)

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.
14/429,487 03/19/2015 Jonathan Alambra Palero 2011P02070WOUS 1668
24737 7590 11/18/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
CERIONI, DANIEL LEE
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
11/18/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JONATHAN ALAMBRA PALERO,
RIEKO VERHAGEN,
MARTIN JURNA, and
MARGARET RUTH HORTON

Appeal 2020-002603
Application 14/429,487
Technology Center 3700
____________

Before MICHAEL L. HOELTER, JILL D. HILL, and
JEREMY M. PLENZLER, Administrative Patent Judges.

HOELTER, 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 claims 1–6, 16, 17, 26, and 27, which

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Koninklijke Philips N.V.” Appeal Br. 2.
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constitute all the claims pending in this application. See Appeal Br. 2. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM the Examiner’s rejections of these claims.
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to treatment of skin tissue, in
particular to skin rejuvenation.” Spec. 1:2–3. Method claim 1 is the sole
independent claim, is illustrative of the claims on appeal, and is reproduced
below.
1. A method of non-invasively treating a skin tissue
area, the skin tissue area including a dermis layer area in a
dermis layer and an epidermis layer area in a epidermis layer,
the epidermis layer area having a skin surface and covering the
dermis layer area, the method comprising:
producing at least one dermal lesion, localized in the
dermis layer area, the at least one dermal lesion causing
rejuvenation of the dermis layer area; and
producing at least one epidermal lesion, separate from the
at least one dermal lesion, localized in the epidermis layer area
and covering an area smaller than an area covered by the at
least one dermal lesion, such that the production of the at least
one epidermal lesion provides epidermal stimulation, which
accelerates the rejuvenation of the dermis layer area caused by
the at least one dermal lesion.
EVIDENCE
Name Reference Date
DeBenedictis et al.
(“DeBenedictis”)
US 2005/0049582 A1 Mar. 3, 2005
Altshuler et al. (“Altshuler”) US 2009/0069741 A1 Mar. 12, 2009
Domankevitz et al.
(“Domankevitz”)
US 2010/0256617 A1 Oct. 7, 2010
Guo et al. (“Guo”) US 2011/0092966 A1 Apr. 21, 2011
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Slayton et al. (“Slayton”) US 2012/0029353 A1 Feb. 2, 2012
REJECTIONS2
Claims 1, 2, 4, 17, 26, and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Slayton and DeBenedictis.
Claims 1, 2, and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Domankevitz and DeBenedictis.
Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Slayton, DeBenedictis, and Domankevitz.
Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Slayton, DeBenedictis, and Altshuler.
Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Domankevitz, DeBenedictis, and Altshuler.
Claims 5, 6, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Slayton, DeBenedictis, and Guo.
Claims 5, 6, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Domankevitz, DeBenedictis, and Guo.
Claims 17, 26, and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Domankevitz, DeBenedictis, and Slayton.

2 The Examiner initially rejected claim 27 as being indefinite but “[w]ith
respect to the 112 rejection, Applicant(s)’ amendments and arguments are
persuasive and thus the rejection is withdrawn.” Final Act. 20.
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ANALYSIS
The rejection of claims 1, 2, 4, 17, 26, and 27
as unpatentable over Slayton and DeBenedictis
Appellant presents arguments regarding independent claim 1 and
states that as regarding dependent claims 2, 4, 17, 26, and 27, they are
allowable “at least because they depend, directly or indirectly, from
independent claim 1.” Appeal Br. 9. We select claim 1 for review, with the
remaining claims standing or falling therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv)(2019).
Claim 1 recites a method of non-invasively treating skin tissue which
includes the step of producing “at least one dermal lesion” and “at least one
epidermal lesion.” Claim 1 also recites that the affected epidermis layer area
is “smaller than an area covered by the at least one dermal lesion.” The
Examiner relies on Slayton for disclosing the recited method, but
acknowledges that “Slayton does not expressly disclose” this “smaller”
limitation. Final Act. 4. The Examiner relies on DeBenedictis for such
teaching. Final Act. 4 (referencing DeBenedictis Figs. 3 and 8, ¶ 9); see also
Ans. 6. Thereafter, the Examiner provides a reason for the combination (and
further references “para [0056] of U.S. Patent Application Publication No.
2008/0262482 to Hantash et al.” as support). Final Act. 5.
Appellant contends that the Examiner’s stated combination fails to
teach the recited limitations because Slayton “does not otherwise discuss
lesion size” and that DeBenedictis also fails to teach “relative sizes.”
Appeal Br. 8; see also id. at 9, Reply Br. 4–6. Additionally, Appellant
contends that DeBenedictis “does not teach separate lesions in different
layers having different sizes, as in claim 1.” Appeal Br. 8; see also id. at 9,
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Reply Br. 4–6. In summation, Appellant contends that what is missing “is
what portions of the combination of” Slayton and DeBenedictis that “teach
the separate legions in different layers having different sizes.” Appeal Br. 8;
see also Reply Br. 4–6.
To be clear, the Examiner relied on DeBenedictis for disclosing
lesions in the two regions being of different sizes (with the epidermis lesion
being smaller), not Slayton. See Final Act. 4, Ans. 6, 7. The Examiner
specifically referenced Paragraph 9 and Fig. 3 of DeBenedictis as disclosing
this size limitation, and Appellant does not explain how these citations are in
error. Final Act. 4; see also DeBenedictis Figs. 8, 9, Ans. 6, 7.
Furthermore, even though DeBenedictis specifically discloses lesions
in both layers, the Examiner relied on Slayton for teaching separate lesions,
one in a deep layer and another in a shallow layer. Final Act. 4; see also
Ans. 4. Slayton teaches that the subcutaneous tissue affected by these
different-depth lesions “can include . . . any of epidermal layer, dermis
layer” or other “tissue, muscle, tendon, cartilage” and that “ultrasound
energy can be emitted to depths at or below a skin surface in a range from
about 0 mm to about 150 mm.” Slayton ¶¶ 41, 49; see also Figs. 12, 13.
We thus are not persuaded by Appellant’s contention that
DeBenedictis “does not teach separate lesions in different layers having
different sizes, as in claim 1” (Appeal Br. 8) because Appellant does not
address the combination of Slayton and DeBenedictis for such teachings.
Further, Appellant’s contention that the Examiner failed to identify “what
portions of the combination of” Slayton and DeBenedictis are relied upon by
the Examiner (Appeal Br. 8) is not persuasive in view of the Examiner
identifying specific figures and text in these references when rendering this
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rejection. See Final Act. 3–5; see also Ans. 4–7. As such, we discern no
errors in the Examiner’s findings, and we agree with the Examiner’s
assertion that Appellant is “attacking [the] references individually.” Final
Act. 20, Advisory Action dated September 12, 2019; see also Appeal Br. 8.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 1, 2, 4, 17, 26, and 27 as being obvious in
view of Slayton and DeBenedictis.
The rejection of claims 1, 2, and 4
as unpatentable over Domankevitz and DeBenedictis
Appellant presents arguments for claim 1 and contends that claims 2
and 4 are allowable “because they depend, directly or indirectly, from
independent claim 1.” Appeal Br. 12. We select claim 1 for review, with
claims 2 and 4 standing or falling therewith.
Here, the Examiner relies on Domankevitz as the primary reference
for disclosing the limitations of claim 1, and on DeBenedictis for similar
reasons as discussed above (i.e., size). See Final Act. 7–9; see also Ans. 7,
8. The Examiner’s stated reason for the combination of Domankevitz and
DeBenedictis also mirrors the reasons provided above. See Final Act. 9–10.
Appellant’s arguments regarding Domankevitz additionally mirror those
expressed above for Slayton. Compare Appeal Br. 7–9 with Appeal Br. 10–
11. For example, Appellant contends that in the cited combination, “there is
no teaching of producing at least one epidermal lesion, separate from the at
least one dermal lesion [while also] covering an area smaller than an area
covered by the at least one dermal lesion.” Appeal Br. 10–11; see also
Reply Br. 7.
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To be clear, the Examiner references Paragraph 57 of Domankevitz
which explicitly teaches a first source that provides radiation “in the dermal
skin region” and a second source that provides radiation “in the epidermal
skin region.” See Final Act. 7, 8; Ans. 7, 8. Also, and as expressed above,
the Examiner relies on DeBenedictis for teaching the “smaller” limitation,
and provides a reason for its combination with Domankevitz. Final Act. 9
(referencing DeBenedictis Fig. 3 and ¶ 9); see also Ans. 8.
Accordingly, Appellant’s contentions asserting that “Domankevitz et
al. is silent . . .,” or that “Domankevitz et al. does not . . .” or that
“DeBenedictis et al. shows . . .” are all examples of Appellant focusing on
specific shortcomings in each individual reference. Appeal Br. 11. As such,
we are not persuaded by Appellant’s statement that “Applicants are not
attacking the references individually, but rather have shown that the
combined teachings of Domankevitz et al. and DeBenedictis et al. do not
teach this combination of features.” Appeal Br. 11; see also Reply Br. 7–8.
To be clear, Appellant does not explain how the various paragraphs and
figures cited by the Examiner fail to disclose the teachings they were relied
upon for, or otherwise explain how these teachings cannot be combined with
each other. Instead, Appellant seeks to show fault by addressing these
references individually and contending they lack a feature when they were
not relied upon for that feature. In short, this is a rejection of a combination
of references under obviousness, not a rejection of individual references
under anticipation.
Thus, based on the record presented, we are not persuaded the
Examiner erred in rejecting claims 1, 2, and 4 as being obvious in view of
Domankevitz and DeBenedictis.
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The rejection of claim 1
as unpatentable over Slayton, DeBenedictis, and Domankevitz
“Applicants respectfully submit that no proper combination of Slayton
et al., Domankevitz et al. and DeBenedictis et al. teaches or suggests all the
limitations of independent claim 1.” Appeal Br. 13; see also Reply Br. 8.
Appellant contends that in view of the teachings of these references, there is
no suggestion of “both” epidermal and dermal lesions “at the same time”
with the “epidermal lesion being smaller in area.” Appeal Br. 13; see also
Reply Br. 8. As above, Appellant does not explain how these features are
not readily disclosed by the combination of Slayton, Domankevitz, and
DeBenedictis as outlined by the Examiner and as discussed above. We
sustain the Examiner’s rejection of claim 1 as being obvious in view of these
references.
The rejections of: (a) claim 3 as unpatentable over Slayton, DeBenedictis,
and Altshuler; (b) claim 3 as unpatentable over Domankevitz, DeBenedictis,
and Altshuler; (c) claims 5, 6, and 16 as unpatentable over Slayton,
DeBenedictis, and Guo; (d) claims 5, 6, and 16 as unpatentable over
Domankevitz, DeBenedictis, and Guo; and, (e) claims 17, 26, and 27 as
unpatentable over Domankevitz, DeBenedictis, and Slayton
With respect to each rejection, Appellant contends that each of these
dependent claims are allowable because of their dependence from claim 1
“which has been shown to be allowable.” Appeal Br. 13–15. For the
reasons explained above, we are not in agreement with Appellant’s
contention. We sustain the rejections of these claims.
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CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 17,
26, 27
103(a) Slayton,
DeBenedictis
1, 2, 4, 17,
26, 27

1, 2, 4 103(a) Domankevitz,
DeBenedictis
1, 2, 4
1 103(a) Slayton,
DeBenedictis,
Domankevitz
1
3 103(a) Slayton,
DeBenedictis,
Altshuler
3
3 103(a) Domankevitz,
DeBenedictis,
Altshuler
3
5, 6, 16 103(a) Slayton,
DeBenedictis, Guo
5, 6, 16
5, 6, 16 103(a) Domankevitz,
DeBenedictis, Guo
5, 6, 16
17, 26, 27 103(a) Domankevitz,
DeBenedictis,
Slayton
17, 26, 27
Overall
Outcome
1–6, 16, 17,
26, 27

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