Mark Thomas. Johnson et al.

Patent Trials and Appeals Board

Jan 22, 2020

14387858 - (D) (P.T.A.B. Jan. 22, 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.
14/387,858 09/25/2014 Mark Thomas Johnson 2011P02282WOUS 2839
24737 7590 01/22/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
KABIR, ZAHED
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
01/22/2020 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 MARK THOMAS JOHNSON, PETRUS THEODORUS JUTTE,
BASTIAAN WILHELMUS MARIA MOESKOPS, and
RIEKO VERHAGEN
Appeal 2018-008010
Application 14/387,858
Technology Center 3700
Before STEFAN STAICOVICI, FREDERICK C. LANEY, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, 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 1–11. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

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 the assignee of
record Koninklijke Philips N.V. Appeal Br. 1.
Appeal 2018-008010
Application 14/387,858
2
CLAIMED SUBJECT MATTER
Appellant’s invention is directed to a light based skin treatment
device. Claim 1, which is the only independent claim, is reproduced below:
1. A light based skin treatment device comprising:
a light source for providing a pulsed incident light beam
having a predetermined power and pulse duration for treating a
skin by laser induced optical breakdown (LIOB) of hair or skin
tissue,
a transparent exit window for allowing the incident light
beam to exit the device, and
an optical system for focusing the incident light beam into
a focal spot in the hair or skin tissue outside the skin treatment
device,
wherein the exit window comprises an outer surface
having optical scattering properties such that, for the
predetermined power and pulse duration of the incident
light beam,
when the outer surface is in contact with a medium having
a refractive index equal to a refractive index of the exit window,
a dimension of the focal spot is sufficiently small for a power
density of the incident light beam in the focal spot to exceed a
threshold value for inducing a LIOB phenomenon in the focal
spot, and
when the outer surface is in contact with a medium having
a refractive index equal to a refractive index of air, a dimension
of the focal spot is sufficiently large for a power density of the
incident light beam in the focal spot not to exceed the threshold
value for inducing a LIOB phenomenon in the focal spot.
Appeal 2018-008010
Application 14/387,858
3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Verhagen ’490 US 2010/0063490 A1 Mar. 11, 2010
Grove US 2009/0204109 A1 Aug. 13, 2009
Verhagen ’444 US 2012/0123444 A1 May 17, 2012
“The Physics of Diffraction Gratings” (Thermo RGL, 2002)(“Thermo
RGL”)
REJECTIONS
1) The Examiner rejected claims 1–3 under 3 U.S.C. § 103(a) as
unpatentable over Verhagen ’490.
2) The Examiner rejected claims 4–6 and 8–10 under 35 U.S.C.
§ 103(a) over Verhagen ’490 and Grove.
3) The Examiner rejected claim 7 under 35 U.S.C. § 103(a) over
Verhagen ’490, Grove, and Thermo RGL.
4) The Examiner rejected claim 11 under 35 U.S.C. § 103(a) over
Verhagan ’490 and Verhagen ’444.
OPINION
Rejection 1 – Obviousness over Verhagen ’490
The Examiner finds that Verhagen ’490 discloses most of the
limitations of independent claim 1 except for the limitation:
when the outer surface is in contact with a medium having a
refractive index equal to a refractive index of air, a dimension
of the focal spot is sufficiently large for a power density of the
incident light beam in the focal spot not to exceed the threshold
value for inducing a LIOB phenomenon in the focal spot.

Final Act. 5–6 (emphasis omitted). Nonetheless, the Examiner finds that:
from physics we know that when light passes from a denser
medium to a lighter medium e.g. from glass to air it diverges
Appeal 2018-008010
Application 14/387,858
4
instead of converging . . . as a result when the contact medium
have some refractive index of air which is lower than the
refractive index of the exit window the focal spot of incident
laser cannot converge to a small area rather it covers a large
area and the energy will not be enough to induce LOIB
phenomenon.
Id. at 6. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art “to know the optical characteristics of light passing
from a denser medium to a lighter medium like air [in that] the ray will [be]
refracted further away from normal and this phenomenon will prevent light[]
from Verhagen’s device to focus in a small spot where energy density will
be high.” Id. at 6–7.
Appellant contends that the Examiner’s reliance on “general physics”
is not sufficient because “the issue is a matter of how physics is being
applied by” Verhagen ’490. Appeal Br. 11. According to Appellant because
exit window 14 of Verhagen ’490 is flat, Verhagen ’490 does not satisfy the
requirement of claim 1 that when the outer surface of the exit window “is in
contact with a medium having a refractive index equal to a refractive index
of air” that the power density in the focal spot will not exceed the threshold
value for inducing the LIOB phenomenon. Id. at 13. In the Answer, the
Examiner maintains the rejection, but does not squarely address Appellant’s
argument that more than general physics is required to support the rejection.
For the following reasons, we do not sustain the rejection of claim 1.
Appellant’s Specification provides that:
Ideally, the LIOB is always generated in the hair or skin tissue.
However, in real operation not all hairs or skin tissue are
correctly hit and LIOB is generated either in the applied
immersion fluid, e.g,. water, or in air, if e.g. an air bubble is
present. In an extensive series of measurements the inventors
have established that the damage to the exit window is far more
Appeal 2018-008010
Application 14/387,858
5
severe when the LIOB is generated in air than when the LIOB
is generated in immersion fluid or in the target position in the
hair or skin.
Spec. 3:23–28 (emphasis added). The Specification also discloses that when
a non-flat exit window 41 is utilized, then the light passing through the exit
window will be sufficiently diffused such that LIOB will not occur when the
exit window borders on air. Id. at 9:1–11, Fig. 3a. Although we appreciate
the Examiner’s reference to the general principle that light waves passing
from a first medium to a second medium that is less dense than the first
medium will be refracted, claim 1 requires more than merely showing that
the optical scattering properties of the recited exit window result in
refraction of the light when passing into “a medium having a refractive
index equal to a refractive index of air.” Rather, the claim requires that for
“a pulsed incident light beam having a predetermined power and pulse
duration” that “a dimension of the focal spot is sufficiently large for a power
density of the incident light beam in the focal spot not to exceed the
threshold value for inducing LIOB phenomenon in the focal spot.”
As noted above, Appellant’s Specification discloses that LIOB
phenomenon can in fact be generated in air so merely stating that the
refractive properties of air disperse the light beam does not establish that
Verhagen ’490’s exit window has the optical scattering properties recited in
claim 1. As the rejection is based on an erroneous factual finding, the
conclusion of obviousness cannot stand. See In re Warner, 379 F.2d 1011,
1017 (CCPA 1967) (holding that “[t]he legal conclusion of obviousness
must be supported by facts. Where the legal conclusion is not supported by
facts it cannot stand.”). Therefore, we do not sustain the rejection of claim 1
or claims 2–3 which depend from claim 1.
Appeal 2018-008010
Application 14/387,858
6

Rejections 2–4
Claims 4–11 depend directly or indirectly from claim 1. Appeal Br.
24–25 (Claims App.). The Examiner does not rely on the additional
disclosure from Grove, Verhagen ’444, or Thermo RGL to cure the
deficiencies in the rejection of claim 1. Final Act. 7–11. For the reasons
discussed above in connection with claim 1, we do not sustain the rejections
of claims 4–11.
CONCLUSION
The Examiner’s rejection of claims 1–11 is reversed.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3 103(a) Verhagen ’490 1–3
4–6, 8–10 103(a) Verhagen ’490, Grove 4–6, 8–10
7 103(a) Verhagen ’490, Grove,
Thermo RGL
7
11 103(a) Verhagen ’490,
Verhagen ’444
11
Overall
Outcome:
1–11

REVERSED