Ex Parte Korenberg

Patent Trials and Appeals Board

Jun 29, 2017

11489587 - (D) (P.T.A.B. Jun. 29, 2017)

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.
11/489,587 07/20/2006 Dan Korenberg 1652MIZ-US 1195
32964 7590 06/29/2017
DEKEL PATENT LTD., DAVID KLEIN
BEIT HAROF'IM
18 MENUHA VENAHALA STREET, ROOM 27
REHOVOT, 76209
ISRAEL
EXAMINER
EISEMAN, LYNSEY C
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
06/29/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte DAN KORENBERG
Appeal 2015-004440
Application 11/489,587
Technology Center 3700
Before ANNETTE R. REIMERS, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’
decision2 rejecting claims 1—3, 5—13, 15, and 20-24. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as Lite Touch Ltd. Br. 1.
2 Appeal is taken from the Final Office Action dated May 12, 2014 (“Final
Act.”).
Appeal 2015-004440
Application 11/489,587
CLAIMED SUBJECT MATTER
Claims 1, 6, and 22 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method for photothermolysis comprising:
subjecting areas of skin each with one or more pulses of
incoherent light, from an incoherent light source disposed in a
housing, of wavelength of 350-1200 nm for a duration of 20-
500 psec and an energy fluence of 2-6 J/cm2, and
subjecting said areas of skin with ultrasonic energy directed
along a path different than that of said one or more pulses of
incoherent light by generating the ultrasonic energy with an
ultrasonic transducer, and
combining the flashes of incoherent light with the ultrasonic
energy to synergistically enhance thermolysis of stratum
comeum, epidermis or other skin layers, and
using a capacitor in electrical communication with said
incoherent light source to attain said duration, and increasing a
voltage on said capacitor to 1000 V to attain said energy
fluence.
REJECTIONS
I. Claim 22 stands rejected under 35 U.S.C. § 102(b) as
anticipated by Eckhouse (US 5,405,368; issued Apr. 11, 1995).
II. Claims 1—3, 6—9, 11, and 13 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Harth (US 2003/0216795 Al; published Nov.
20, 2003), Altshuler (US 2004/0073079 Al; published Apr. 15, 2004), and
Nightingale (US 2005/0063197 Al; published Mar. 24, 2005).
III. Claims 5 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Harth, Altshuler, Nightingale, and Knowlton (US
2004/0210214 Al; published Oct. 21, 2004).
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Appeal 2015-004440
Application 11/489,587
IV. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Harth, Altshuler, Nightingale, and Fullmer (US 5,885,274;
issued Mar. 23, 1999).
V. Claim 12 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Harth, Altshuler, Nightingale, and Azar (US 6,187,001
Bl; issued Feb. 13, 2001).
VI. Claim 20 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Harth, Altshuler, Nightingale, and Tankovich (US
6,162,211; issued Dec 19, 2000).
VII. Claim 21 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Harth, Altshuler, Nightingale, and Eckhouse.
VIII. Claims 23 and 24 stand rejected under 35 U.S.C.
§ 103(b) as unpatentable over Eckhouse.
ANALYSIS
Rejection I
The Examiner finds, inter alia, that Eckhouse discloses a parabolic
reflector, which the Examiner determines is a reflector having sides that
“continuously diverge outwards and sideways,” as claimed. Final Act. 4
(citing Eckhouse 5:55—62). Appellant argues that the sides of Eckhouse’s
reflector “taper inwards,” and thus, do not “continuously diverge outwards,”
as required by claim 22. Br. 12 (citing Eckhouse, Fig. 1). The Examiner
responds that Appellant’s argument does not address the Examiner’s finding,
because the Examiner is relying on Eckhouse’s disclosure of a parabolic
reflector and not the reflector depicted in Eckhouse’s Figure 1.
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Appeal 2015-004440
Application 11/489,587
Eckhouse discloses that “[rjeflector 16 may have other designs such
as parabolic or circular reflectors.” Eckhouse 5:57—58 (emphasis added).
Appellant’s argument does not address whether a parabolic defector has
sides that continuously diverge outwards and sideways, and therefore,
Appellant’s argument does not apprise us of error in the Examiner’s finding.
Accordingly, we sustain the Examiner’s rejection of independent
claim 22.
Rejection II
Regarding independent claims 1 and 6, the Examiner finds, inter alia,
that Harth and Altshuler fail to disclose “a specific voltage applied to a
capacitor in order to achieve the specific pulse duration and fluence,” and
the Examiner relies on Nightingale for disclosing that ‘“depending on the
desired output pulse width and energy, flashlamp drive voltages can range
from 300 V to 10 KV and the storage capacitor can have capacitance values
in the range of 100 microfarad to 5,000 microfarad.’” Final Act. 6.
Appellant argues that because “the design considerations of the
[claimed invention] are completely different than Nightingale[’s,] . . . the
skilled artisan has no incentive to use Nightingale to arrive at the [claimed]
parameters.” Br. 15. In support, Appellant submits that “Nightingale[’s]
flashlamp 21 is used to pump the fluorescence concentrator 11,” and not “to
direct light energy to the skin to cause photothermolysis of the hair papilla.”
Id. at 13. Appellant further provides a list of differences between
Nightingale’s optic system and the claimed invention. See id. at 15.
The Examiner responds that
[t]he fact that the flashlamp taught by Night[i]ngale is used as a
pump source, instead of a light source directed to tissue, is of
no consequence, as Night[i]ngale is being used [as] a teaching
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Appeal 2015-004440
Application 11/489,587
reference that establishes well known concepts within the art,
[and] specifically [that] it is known in the art to vary the voltage
applied to a capacitor (including increasing the voltage to 1000
V) in order to attain a specific energy output of a flashlamp.
Ans. 13—14. Thus, although Appellant is correct in that Nightingale
discloses the use of a concentrator to produce high spectral brightness for
therapeutic energy, wherein the illumination source for the concentrator can
be a flashlamp (Nightingale H 31, 32), we understand the Examiner’s
reliance on Nightingale is for establishing that voltage is known in the art of
optics, and more specifically, optics for delivering light for
photothermolysis,3 as a variable that affects the resulting energy output of a
flashlamp when applied to a capacitor. Put another way, the Examiner relies
on Nightingale for disclosing that voltage is a recognized result-effective
variable for flashlamps. Discovery of the optimum value of a result-
effective variable in a known process is ordinarily within the skill of the art.
See In re Alter, 220 F.2d 454, 456 (CCPA 1955); In re Boesch, 617 F.2d
272, 276 (CCPA 1980). Appellant may overcome this rejection by
establishing that the claimed range is critical by, for example, showing the
claimed range achieves unexpected results relative to the prior art ratio.
Here, Appellant has not provided any evidence that the claimed range is
critical or achieves unexpected results.
Accordingly, we sustain the Examiner’s rejection of independent
claims 1 and 6 under 35 U.S.C. § 103(a) as unpatentable over Harth,
3 See Nightingale 12 (“The invention relates generally to the generation of a
high brightness optical source through use of a fluorescence concentrator
system. The source can be used in a variety of applications, including
various medical aesthetic procedures.”); id. 14 (“such as removal of hair”).
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Appeal 2015-004440
Application 11/489,587
Altshuler, and Nightingale. Appellant chose not to present separate
arguments for the patentability of claims 2, 3, 7—9, 11, and 13, which depend
from independent claims 1 and 6, apart from the arguments presented supra,
for claims 1 and 6. Br. 12—15. Therefore, we also sustain the Examiner’s
rejection of claims 2, 3, 7—9, 11, and 13.
Rejections III—VIII
Appellant chose not to present separate arguments for the patentability
of claims 5, 10, 12, 15, 20, 21, 23, and 24, which depend from independent
claims 1, 6, and 22, apart from the arguments presented supra for claims 1,
6, and 22. Br. 15—17. Therefore, we also sustain the Examiner’s rejections
of claims 5, 10, 12, 15, 20, 21, 23, and 24.
DECISION
The Examiner’s rejection of claim 22 under 35 U.S.C. § 102(b) is
affirmed.
The Examiner’s rejections of claims 1—3, 5—13, 15, 20, 21, 23, and 24
under 35 U.S.C. § 103(a) is affirmed.
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)(l)(iv).
AFFIRMED
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