Eduard Gorenshteyn et al.

Patent Trials and Appeals Board

Apr 26, 2021

2020006253 (P.T.A.B. Apr. 26, 2021)

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.
15/788,275 10/19/2017 Eduard Gorenshteyn GORENSHTEYN 4730
20151 7590 04/26/2021
HENRY M FEIEREISEN, LLC
HENRY M FEIEREISEN
35 WEST 35TH STREET
SUITE 900
NEW YORK, NY 10001
EXAMINER
LEE, WENG WAH
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
04/26/2021 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):
INFO@FEIEREISENLLC.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EDUARD GORENSHTEYN, RAISA ROZINA, and
STELLA TOKAR
____________

Appeal 2020-006253
Application 15/788,275
Technology Center 3700
____________

Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1–4 and 6–11.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant’s invention relates to “Methods for Cosmetic, Galvanic
Bath-Assisted Transfer of Biologically-Active Substances.” Spec., Title.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Eduard Gorenshteyn, Raisa Rozina, and
Stella Tokar, collectively, as the real party in interest. Appeal Br. 2.
2 Claim 5 has been cancelled. See Amendment dated February 27, 2018, p.
7.
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Claim 1, reproduced below as the sole independent claim on appeal, is
illustrative of the subject matter on appeal.
1. A method for a cosmetic skin procedure, comprising:
introducing an aqueous cosmetic solution to a galvanic
bath, the aqueous cosmetic solution including one or more
biologically-active substances, the one or more biologically-
active substances including at least one of hyaluronic acid,
collagen or elastin;
introducing a body of an individual subject to the
galvanic bath, without topical application to the individual
subject of one or more biologically-active substances including
at least one of hyaluronic acid, collagen or elastin; and
applying an electrical current by electrodes of the
galvanic bath to the whole galvanic bath and via the galvanic
bath to the aqueous cosmetic solution to introduce the one or
more biologically-active substances of the aqueous cosmetic
solution of the galvanic bath to a skin surface of the body of the
individual subject introduced to the galvanic bath, continuously
over the whole introduced body without interruptions.
Appeal Br. 12 (Claims App.).3

3 We refer to the Appeal Brief filed June 15, 2020.
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THE REJECTIONS4
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Marty US 4,702,913 Oct. 27, 1987
Bontemps US 4,850,956 July 25, 1989
Liss US 5,421,817 June 6, 1995
De Claviere US 5,443,441 Aug. 22, 1995
Ostrow US 5,983,134 Nov. 9, 1999
Mas US 2016/0250130 A1 Sept. 1, 2016
Schweig The Electric Bath 1877
The following rejections are before us for review:
I. Claims 1–4 and 6–11 stand rejected under 35 U.S.C.
§ 112(a) as failing to comply with the written description
requirement.
II. Claim 3 stands rejected under 35 U.S.C. § 112(b) as
indefinite.
III. Claims 1, 2, and 7–9 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Schweig, Bontemps, and Mas.
IV. Claims 3 and 4 stand rejected under 35 U.S.C. § 103 as
unpatentable over Schweig, Bontemps, Mas, and
De Claviere.

4 The Examiner’s objections to the claims for informalities are petitionable,
not appealable, matters. Non-Final Act. 3.
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V. Claim 6 stands rejected under 35 U.S.C. § 103 as
unpatentable over Schweig, Bontemps, Mas, and Marty.
VI. Claim 10 stands rejected under 35 U.S.C. § 103 as
unpatentable over Schweig, Bontemps, Mas, and Liss.
VII. Claim 11 stands rejected under 35 U.S.C. § 103 as
unpatentable over Schweig, Bontemps, Mas, Liss, and
Ostrow.

OPINION
Rejections I and II
The Examiner finds that claim 1, and therefore, dependent claims 2–5
and 6–11, fail to comply with the written description requirement of 35
U.S.C. § 112(a), and also that there is insufficient basis for the recitation of
hyaluronic collagen in claim 3, and therefore, claim 3 is indefinite under 35
U.S.C. § 112(b). Non-Final Act. 3–4. Appellant agrees with the Examiner’s
findings. Appeal Br. 5.
Accordingly, we sustain the Examiner’s rejection of claims 1–4 and
6–11 under 35 U.S.C. § 112(a) as failing to comply with the written
description requirement and the rejection of claim 3 under 35 U.S.C.
§ 112(b) as indefinite.
Rejection III
Regarding independent claim 1, the Examiner finds that Schweig
discloses a skin procedure comprising (i) introducing an aqueous solution
including one or more biologically-active substances to a galvanic bath; (ii)
introducing an individual subject’s body to the galvanic bath, without topical
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application of one or more biologically-active substances including at least
one of hyaluronic acid, collagen or elastin; and (iii) applying an electrical
current by electrodes of the whole galvanic bath and via the galvanic bath to
the aqueous solution to introduce the one or more biologically-active
substances of the galvanic bath’s aqueous solution to the body’s skin
surface, continuously over the whole introduced body without interruptions;
as claimed. Non-Final Act. 6–7 (citations omitted).
The Examiner finds that Schweig does not disclose that the skin
procedure is for cosmetic reasons or that the biologically-active substances
include one or more of at least hyaluronic acid, collagen or elastin, as
claimed. Non-Final Act. 7.
The Examiner relies on Bontemps for teaching “a device designed for
the subcutaneous transfer of medicinal or cosmetic substances across the
skin of a person,” wherein “[t]he substances are delivered across the skin via
a pair of electrodes placed under the feet bathing in an electrolyte filled with
the substances while another pair of electrodes are attached on the torso of
the person . . . to cause a migration of the substances across the skin
membrane.” Non-Final Act. 7 (citing Bontemps 1:6–15, 1:58–62, 1:65–2:3).
The Examiner reasons that it would have been obvious to modify Schweig’s
skin procedure to include cosmetic purposes because “doing so would
effectively assure the transfer of the cosmetic substances across the skin to
treat the skin.” Id. at 7–8 (citing Bontemps 1:6–14).
The Examiner relies on Mas for teaching “a cosmetic formulation
applied via iontophoresis to treat deep wrinkles of the skin and other skin
disorders,” wherein the cosmetic formulation includes at least “hyaluronic
acid for a moisturizing and filling effect.” Non-Final Act. 8 (citing Mas
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¶¶ 1, 37–40, 59). The Examiner reasons that it would have been obvious to
modify Schweig’s skin procedure, as modified by Bontemps, “to include at
least hyaluronic acid, since doing so would effective[ly] provide a
moisturizing and filling effect in order to treat wrinkles and other skin
disorders.” Id. (citing Mas ¶¶ 1, 37).
First, Appellant submits correctly that Schweig does not disclose a
cosmetic skin procedure, but rather, teaches an electric bath therapy. Appeal
Br. 6; Reply Br. 3–4. To the extent Appellant is arguing that the Examiner’s
findings relative to Schweig are erroneous, Appellant’s argument does not
apprise us of error because, as set forth supra, the Examiner relies on
Bontemps, not Schweig, for disclosing the use of electrodes immersed in
cosmetic substances to transfer the cosmetic substance across the skin.
Second, Appellant argues that “the Bontemps’ invention has nothing
to do with transfer of cosmetic substances,” but rather, “is a device for
subcutaneously transfer[ing] medicine.” Appeal Br. 6–7. Appellant submits
that the reference to cosmetic substances in Bontemps is in the context of
discussing the prior art, and in particular, that “before his invention medical
or cosmetic substances were used frozen in the form of a ‘stick’.” Id. at 7.
The Examiner responds correctly that Bontemps discloses that
“cosmetic substances can be subcutaneously transferred and the use of
electrodes immersed in cosmetic substances is known.” Ans. 4. Indeed,
Bontemps discloses that
[t]he subject of the present invention is a device which
subcutaneously transfers medicine.
This electronic device is equipped with large-surface
electrodes that are applied by pairs to two distinct parts of the
skin of the human body. These electrodes which are immersed
in medicinal or cosmetic substances are themselves conductors
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of electricity and subjected to the electrical output of the voltage
generator, and assure the transfer of said substances across the
skin.
Bontemps 1:6–14 (emphasis added).
Third, Appellant argues that Bontemps is not analogous art relative to
the claimed invention, because Bontemps belongs to the field of endeavor of
“medical art,” which is different from the field of endeavor of Appellant’s
claimed invention. Appeal Br. 7; Reply Br. 5. The Examiner responds that
“cosmetic substances can also be considered a medical substance,” and thus,
Bontemps is analogous art relative to Appellant’s claimed invention. Ans. 5.
A reference qualifies as prior art for an obviousness determination
when it is analogous to the claimed invention. Innovention Toys, LLC. v.
MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). “Two separate tests
define the scope of analogous prior art: (1) whether the art is from the same
field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
The “field of endeavor” test asks if the structure and function of the prior art
is such that it would be considered by a person of ordinary skill in the art
because of similarity to the structure and function of the claimed invention
as disclosed in the application. Id. at 1325–26. “A reference is reasonably
pertinent if . . . it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
“If a reference disclosure has the same purpose as the claimed invention, the
reference relates to the same problem, and that fact supports use of that
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reference in an obviousness rejection.” Id. Whether a prior art reference is
“analogous” is a question of fact. Id. at 658.
Here, Appellant’s argument does not apprise us of error in the
Examiner’s finding that Appellant’s field of endeavor is skin treatments, and
that cosmetic skin treatments and medical skin treatments overlap to such an
extent that they are in the same field of endeavor. We note that this overlap
is evidenced by Mas’ list of “[a] range of possibilities and advantages . . .
when investigating in the field of cosmetics,” which includes “[d]raining and
eliminating fluid retentions” and “[t]reatment of neurological pain”—which
are arguably also within the category of medical arts.5 Mas ¶¶ 22–27
(emphasis added).
Fourth, Appellant submits that “the references must contain a hint,
suggestion or motivation for a person skilled in the art to combine the
references.” Appeal Br. 7. Appellant argues that
[a person of ordinary skill in the art] would never have any hint,
suggestion or motivation to combine the method of the Schweig
reference using . . . galvanic tubs filled with water/aqueous
solution that have electric fields applied to the water in order to
provide therapy to a patient immersed in the tub and to which
chemicals can be added without any hint for a method for a
cosmetic skin procedure, with the Bontemps device for

5 Additionally, we find that Bontemps is reasonably pertinent to particular
problems addressed by Appellant’s claimed invention, namely, the problem
of limited penetration of the skin with a cosmetic substance (i.e., “[t]opical
creams, ointments, and the like can have limited penetration of the skin”),
and the problem of requiring “a licensed physician to perform the invasive
procedure” (Spec. ¶ 8), as Bontemps also discloses, as disadvantages of
ointments and other known treatments, “small efficacy” and “the use of
products concentrated in active substance,” as well as the need to provide a
solution “without the intervention of a medical specialist” (Bontemps 1:35–
54). In sum, we find Bontemps is properly relied on by the Examiner as
analogous art relative to the claimed invention.
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subcutaneously transferring a medicine of the Bontemps
reference without any hint for a method for a cosmetic skin
procedure.
Id.; Reply Br. 5.
To the extent Appellant is holding the Examiner to a requirement that
the Examiner’s rationale must be supported by a teaching, suggestion, or
motivation from the references (i.e., the TSM standard), such a standard is
not required. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007).
Moreover, the Examiner cites to Bontemps as factual support for reasoning
that it would have been obvious to modify Schweig’s electric bath to assure
the effective transfer of cosmetic substances across the skin. Non-Final Act.
7–8 (citing Bontemps 1:6–14 (“[t]hese electrodes which are immersed in
medicinal or cosmetic substances are themselves conductors of electricity
. . . and assure the transfer of said substances across the skin”)). Thus, we
are not apprised of error in the Examiner’s reasoning.
Fifth, Appellant argues that although Mas discloses treating deep
wrinkles with hyaluronic acid, Mas discloses “use of the iontophoresis
patch,” which Appellant submits “does not have anything to do with
[Appellant’s] invention and contradicts the main features of the present
invention as currently defined in claim 1.” Appeal Br. 8; Reply Br. 5. The
Examiner responds that iontophoresis “is one of several methods of
transferring the cosmetic substances through the skin,” as disclosed in
Appellant’s Specification,” and therefore, “it is unclear how the disclosure
of Mas is irrelevant [or] contradict[ory]” to Appellant’s claimed invention.
Ans. 5 (citing Spec. ¶¶ 9, 10).
The Examiner relies on Mas for disclosing a cosmetic formulation
applied via iontophoresis to treat deep wrinkles, wherein the cosmetic
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formulation comprises at least hyaluronic acid—a substance required by
claim 1, and reasons that using hyaluronic acid in Schweig’s electric bath, to
provide a cosmetic treatment, as taught by Bontemps, would be obvious to
provide moisturizing to the skin, as taught by Mas. To the extent Appellant
is arguing that Mas’ disclosure of an iontophoresis process is not possible
with respect to Schweig’s electric bath, the Examiner is correct in that
Appellant’s own Specification recognizes iontophoresis as a known galvanic
bath-assisted transfer method, and Appellant has not otherwise provided
sufficient argument or evidence in support of a finding that Mas’ use of
hyaluronic acid is restricted to application by a patch. Spec. ¶ 10.
Finally, Appellant argues that Schweig, Bontemps, and Mas are
nonanalogous art. Appeal Br. 8. Bontemps is addressed supra. We find
Schweig is in the same field of endeavor of Appellant’s claimed invention,
namely, the field of endeavor of transferring substances (including medical
substances generally, and cosmetic substances particularly) via a galvanic
bath (i.e., using water and electric current) into the skin of a living being.
We also find that Mas is in the field of endeavor of skin treatment, and
additionally, that Mas addresses the same problem addressed by Appellant’s
claimed invention: finding a way to deliver an active ingredient to the skin
to achieve enhanced cosmetics benefits. Mas ¶ 12.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1. Appellant did not present arguments for the patentability of claims
2 and 7–9 apart from the arguments presented for claim 1 supra, and
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therefore, we also sustain the Examiner’s rejection of claims 2 and 7–9 for
essentially the same reasons as presented supra. Appeal Br. 5–8.
Rejections IV–VII
Appellant did not present arguments for the patentability of claims 3,
4, 6, 10, and 11 apart from the arguments presented for claim 1 supra, and
therefore, we also sustain the Examiner’s rejection of claims 3, 4, 6, 10, and
11 for essentially the same reasons as presented supra. Appeal Br. 8–10.
CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6–11 112(a) Written Description 1–4, 6–11
3 112(b) Indefiniteness 3
1, 2, 7–9 103 Schweig, Bontemps, Mas 1, 2, 7–9
3, 4 103 Schweig, Bontemps, Mas,
De Claviere
3, 4
6 103 Schweig, Bontemps, Mas,
Marty
6
10 103 Schweig, Bontemps, Mas,
Liss
10
11 103 Schweig, Bontemps, Mas,
Liss, Ostrow
11
Overall
Outcome
1–4, 6–11
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED