Ex Parte Boone et alDownload PDFPatent Trial and Appeal BoardJan 21, 201612197047 (P.T.A.B. Jan. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121197,047 08/22/2008 51111 7590 AKACHANLLP Melvin Chan 900 LAFAYETTE STREET SUITE 710 SANTA CLARA, CA 95050 01/25/2016 FIRST NAMED INVENTOR N. Brendon Boone III 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 ATTORNEY DOCKET NO. CONFIRMATION NO. EMEDP004 1528 EXAMINER TERRELL, EMILY C ART UNIT PAPER NUMBER 2689 NOTIFICATION DATE DELIVERY MODE 01125/2016 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): PTO-INBOX@AKACHANLAW.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte N. BRENDON BOONE, III, BASIL M. HANT ASH, and KENNETH B. KARASIUK Appeal2013-009658 Application 12/197,047 Technology Center 2600 Before JEAN R. HOMERE, JOHN A. EV ANS, and DANIEL J. GALLIGAN, Administrative Patent Judges. GALLIGAN, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 seek our review under 35 U.S.C. § 134(a) of the Examiner's Final Rejection of claims 1, 2, 4--8, and 10-28. We have jurisdiction under 35 U.S.C. § 6(b ). Claims 3 and 9 are canceled. Claims App. We affirm. 1 Our Decision refers to Appellants' Appeal Brief filed April 30, 2013 ("App. Br."); Appellants' Reply Brief filed July 31, 2013 ("Reply Br."); Examiner's Answer mailed May 31, 2013 ("Ans."); Final Office Action mailed April 30, 2012 ("Final Act."); and original Specification filed August 22, 2008 ("Spec."). 2 Appellants identify Envy Medical, Inc. as the real party in interest. App. Br. 2. Appeal2013-009658 Application 12/197,047 STATEMENT OF THE CASE Claims on Appeal Claims 1, 13, 19, and 21 are independent claims. Claim 1 is reproduced below: 1. A method of operating a microdermabrasion system compnsmg: receiving a code from an input device to the microdermabrasion system; evaluating whether the code is valid comprising: determining if there is an entry for the code in a list of previously received codes, wherein for each previously received code, there is a usage value for that code; if there is an entry for the code, determining whether the usage value for the code exceeds a threshold number; and if the usage value for the code exceeds the threshold number, determining that the code is not valid; if the code is valid, allowing a fluid flow through a valve between a hand piece of the microdermabrasion system and a console of the microdermabrasion system; after allowing a fluid flow through a valve between a hand piece of the microdermabrasion system and a console of the microdermabrasion system, monitoring a total amount of fluid flow through the hand piece; and when the total amount of fluid flow exceeds a threshold amount of fluid, disconnecting electrical power to a vacuum source of the microdermabrasion system. References Hickle et al. US 2003/0074223 Al Apr. 17, 2003 Skover et al. US 2005/0148908 Al July 7, 2005 Todd et al. US 2006/0129140 Al June 15, 2006 White et al. US 7,236,963 B2 June 26, 2007 Ignon et al. US 2007/0156124 Al July 5, 2007 2 Appeal2013-009658 Application 12/197,047 Penny et al. US 7 ,300,436 B2 Nov. 27, 2007 Examiner's Rejections Claims 1, 2, 4--7, and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Skover, Todd, and Ignon. Ans. 3-11. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Skover, Todd, Ignon, and White. Ans. 11-12. Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Skover, Todd, Ignon, and Hickle. Ans. 12-14. Claims 13-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ignon, Todd, and Penny. Ans. 14--24. Claims 21-28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ignon and Todd. Ans. 24--32. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments the Examiner erred. See App. Br. 8-20; Reply Br. 4--7. We are unpersuaded by Appellants' arguments. We highlight and address specific arguments and findings for emphasis as follows. Independent Claim 1 First, Appellants contend the Examiner erred in combining the teachings of Todd with Skover and Ignon because the references are not analogous art. App. Br. 1 O; Reply Br. 4. In particular, Appellants argue Todd is directed to ensuring the compatibility of component parts used with ophthalmic surgical devices. Id. Appellants additionally assert Skover is 3 Appeal2013-009658 Application 12/197,047 directed to delivering mechanical energy and skin benefit agents to treat skin, rather than authorizing use of its system. Reply Br. 4. The Examiner finds Skover and Ignon both are in the area of skin care devices. Ans. 33. The Examiner further finds Todd is in the same field of endeavor, medical treatment devices. Id. Additionally, the teachings of Todd of the amount of component usage are pertinent to the problem facing Appellants of "when the total amount of fluid flow exceeds a threshold amount of fluid," as recited in claim 1. See Todd i-f 2 ("Thus, unlike permanent surgical equipment, some components are used one time, or a limited number of times, and then must be replaced for safety and/or other considerations."). Thus, we are not persuaded that the references are not analogous art. Second, Appellants assert Ignon does not show or suggest "when the total amount of fluid flow exceeds a threshold amount of fluid, disconnecting electrical power to a vacuum source of the microdermabrasion system," as recited in claim 1. App. Br. 11. Specifically, Appellants argue the references do not teach determining whether the total amount of fluid flow exceeds a threshold amount of fluid. App. Br. 11; Reply Br. 5. Appellants further argue Ignon teaches the use of an on/off switch for controlling fluid flow and changing the fluid flowing through the device, rather than disconnecting electrical power to a vacuum source. App. Br. 11 (citing Ignon i-fi-1131, 137); Reply Br. 5 (citing Ignon i-fi-188, 149, and 150). We are not persuaded because Appellants' arguments fail to rebut the specific findings of the Examiner. The Examiner finds Ignon teaches controlling the flow rate of waste fluid flowing through the handpiece to the output line (Ans. 34 (quoting Ignon i-f 88)); applying a vacuum to the output 4 Appeal2013-009658 Application 12/197,047 line to draw treatment material out of the handpiece (Final Act. 6 (citing Ignon i-fi-f 143-145)); and controlling the output of the handpiece including shutting off the output after delivering a desired amount of treatment material (Ans. 34 (quoting Ignon i-fi-f 148--49)). We agree with the Examiner that these teachings in Ignon teach or suggest that the vacuum source could be switched off by shutting off electric power to the vacuum for delivering the correct dosage (i.e., threshold amount) of treatment material. Ans. 35. Based on the foregoing, we are not persuaded of error in the Examiner's rejection of claim 1, and we therefore sustain the rejection of claim 1. Claim 2 With respect to dependent claim 2, Appellants contend Todd does not teach "if the code is not in the list of previously received codes, adding the code to the list of previously received codes." App. Br. 11 (emphasis omitted); Reply Br. 5. In particular, Appellants argue Todd teaches probes are preprogrammed with an authorized code to satisfy stored criteria. App. Br. 12 (citing Todd i147). Appellants contend Todd never teaches adding an unauthorized code to an existing list of stored authorized codes. App. Br. 12; Reply Br. 5 (citing App. Br. 11-12). We are not persuaded of Examiner error. The Examiner finds Todd teaches a third party manufacturer using the security data from purchased probes to program the algorithm to allow use of the purchased probes. Ans. 35-36 (quoting Todd i154). We agree with the Examiner that Todd's programming the algorithm with security data from additional purchased probes teaches or suggests "if the code is not in the list of previously 5 Appeal2013-009658 Application 12/197,047 received codes, adding the code to the list of previously received codes," as recited in claim 2. As such, we find the evidence supports the Examiner's finding that Todd teaches the disputed limitation, and we therefore sustain the rejection of claim 2. Claim 6 Appellants argue Todd does not teach "wherein the list of previously received codes is stored at a system remote from the microdermabrasion system and is accessible to the microdermabrasion system via a network," as recited in claim 6. App. Br. 13. Specifically, Appellants argue Todd teaches storing the authorized data criteria in memory of the surgical device, not on a system remote. App. Br. 13 (citing Todd Fig. 1). We are not persuaded because Appellants' arguments fail to rebut the findings of the Examiner in Skover of "stor[ ing] at a system remote." For this limitation, the Examiner relies on Skover to teach skin treatment control software stored remotely from the skin treatment apparatus. Ans. 36-37 (quoting Skover i-f 123 ("[a] skin treatment process ... software routine may also be stored and/or executed by a second CPU ... remotely located from the hardware controlled by the CPU [in the skin treatment apparatus]")). In addition, regarding the claimed "codes ... accessible ... via a network," the Examiner finds this limitation taught by Skover's disclosure of an external data interface for network accessibility of data, including skin data. Ans. 36-37 (quoting Skover i-f 128). Because Appellants fail to address and rebut the findings based on Skover relied upon by the Examiner, Appellants have not shown error in the rejection of claim 6, and we therefore sustain the rejection of claim 6. 6 Appeal2013-009658 Application 12/197,047 Claim 8 Appellants further contend White does not teach a "code printed on a material used to seal an opening of a fluid container," as recited in claim 8. Reply Br. 5---6 (citing App. Br. 13-15). In particular, Appellants argue White's container does not have an opening at the top. Reply Br. 5. Appellants argue White teaches a fluid container having a bottom opening opposite the printed label on the top. Reply Br. 5 (citing White, Fig. 1 ). We disagree with Appellants' contention because the contention does not address the Examiner's specific findings. See Ans. 37. The Examiner finds the top fused edge of White's container seals a top opening in the container. White Fig. 1; Ans. 3 7. Thus White's container teaches or suggests that the top opening is fused/ sealed by material and the label ("code") is printed on the seal material. White Fig 1; Ans. 37. This is consistent with the broadest reasonable interpretation of "opening." Specifically, "an opening," as recited in claim 8 means that the recited "fluid container" may have more than one opening, such as an opening for filling the container with fluid, at the top of White's container, and another opening for drawing the fluid out of the container, at the bottom of White's container. See Ans. 37. Appellants also assert the invention is concerned with a code printed on a material used to seal an opening of a fluid container that would be broken in order to use the fluid contained within, yet prevent the use of the fluid container after refill. App. Br. 14 (quoting Spec. i-f 144). Appellants' arguments are not persuasive because they are not commensurate with the scope of the claim. Appellants' argued features are 7 Appeal2013-009658 Application 12/197,047 not recited in the claims. Ans. 37. In light of these findings, we are not persuaded of Examiner error, and we sustain the rejection of claim 8. Independent Claim 13 Appellants argue Penny does not teach "if the code is not valid, disallowing power to flow from the supply line to the second switch, thereby disallowing a fluid flow through a valve between a hand piece of the microdermabrasion system and a console of the microdermabrasion system," as recited in claim 13. App. Br. 17; Reply Br. 6. Specifically, Appellants argue Penny teaches delivering energy to a handpiece of gas plasma system. App. Br. 17 (citing Penny col. 3, 11. 4--40); Reply Br. 6 (citing Penny col. 32, 11. 42-53). Appellants further contend the technique in Penny would not function as intended if a fluid were allowed to flow through its device. App. Br. 17. The Examiner finds Penny teaches that, if the code is found invalid, energy pulses are not supplied to the handpiece. Ans. 39 (quoting Penny col. 32, 11. 42-53). Penny further teaches energy pulses supplied to the handpiece cause a flow of plasma from the handpiece. See Penny col. 32, 11. 3-9 ("The coil 521 ... is resonant at the operating frequency of the radio frequency voltage supplied thereto ... to promote the conversion of the gas into plasma which exits from the tube 516 and is directed on to tissue to be treated."). This teaching in Penny suggests that when energy pulses are not supplied to the handpiece, flow of plasma from the handpiece is disallowed. The Examiner relies upon Ignon, not Penny, to teach fluid flow. Final Act. 14--15 (citing Ignon Figs. 4, 6, 18, 19, i-fi-188-91). 8 Appeal2013-009658 Application 12/197,047 We note Appellants' arguments largely attack the individual teachings of Penny and fail to appreciate what the teachings of Penny in combination with Ignon and Todd would have suggested to a person of ordinary skill in the art. "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted). The test for obviousness is not whether the claimed invention is "expressly suggested in any one or all of the references"; rather, "the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d413, 425(CCPA1981) (citations omitted). As such, we find the combination of Penny, Ignon, and Todd teaches the disputed limitation, and we therefore sustain the rejection of claim 13. Claims 16 and 17 Appellants argue Ignon does not teach that a switch is electrically coupled to a security system and can be enabled or disabled by a control signal from the security system. App. Br. 17, 18; Reply Br. 6 (citing Ignon i-fi-f 16, 131, and 13 6-3 7). Appellants further allege Todd does not teach using a switch to pass power to a component. App. Br. 17, 18. We are not persuaded by Appellants' arguments because they attack the teachings of Ignon and Todd individually instead of the combination relied upon by the Examiner. The Examiner finds Ignon teaches a switch to control fluid flow from a bottle to the handpiece. Ans. 40 (quoting Ignon i-fi-1 16, 131 ). The Examiner further finds Todd teaches electronic enablement of the component. Ans 42--43 (quoting Todd i-fi-157, 58). As such, we therefore 9 Appeal2013-009658 Application 12/197,047 agree with the Examiner's findings and we sustain the rejection of claims 16 and 17. Independent Claim 19 With respect to independent claim 19, Appellants rely on arguments substantially similar to those advanced for claim 13, namely, the cited references do not teach a valve electrically coupled to a security circuit. App. Br. 18-19. The Examiner finds, and we agree, the combination of Ignon and Todd teaches the valve electrically coupled to a security system. Ans. 43. As such, we are not persuaded of Examiner error, and therefore, we sustain the rejection of claim 19. Claims 11, 12, and 21 Appellants' arguments with respect to dependent claims 11 and 12 and independent claim 21 do little more than quote the limitations of the claims, and generally allege that a claim limitation is not taught and that the references are in disparate areas of technology and cannot be combined. See App. Br. 15 (claim 11), App. Br. 16 (claim 12), and App. Br. 19-20 (claim 21). To show error in the Examiner's position, Appellants must explain why the relied-upon disclosure does not teach or suggest the claimed feature under its broadest reasonable interpretation in light of the specification, rather than merely alleging that the feature is not shown or is different because it is described in different terms. See 37 C.F.R. § 41.37(c)(l)(iv); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). As such, we sustain the rejections of dependent claims 11 and 12 and independent claim 21. 10 Appeal2013-009658 Application 12/197,047 Remaining Dependent Claims Appellants do not present additional persuasive arguments regarding dependent claims 4, 5, 7, 10, 14, 15, 18, 20, and 22-28, and, therefore, we sustain the rejections of these claims. DECISION We affirm the Examiner's rejections of claims 1, 2, 4--8, and 10-28. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED hh 11 Copy with citationCopy as parenthetical citation