Ex Parte Cohen et al

Patent Trials and Appeals Board

May 2, 2019

11952745 - (D) (P.T.A.B. May. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/952,745 12/07/2007
22832 7590 05/06/2019
K&L Gates LLP-Boston
STATE STREET FINANCIAL CENTER
One Lincoln Street
BOSTON, MA 02111-2950
FIRST NAMED INVENTOR
Richard Cohen
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.
70139US 1827
EXAMINER
SHAY,DAVIDM
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
05/06/2019 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD COHEN, MICHAEL H. SMOTRICH, and
GREGORYB. ALTSHULER
Appeal2017---008182
Application 11/952,745
Technology Center 3700
Before JAMES P. CAL VE, WILLIAM A. CAPP, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1, 2, 4---6, 9, 11, 12, 19, 21-23, 26-28,
30-37, and 40-50. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM. 2
1 Palomar Medical Technologies, LLC is the real party in interest. Appeal
Br. 1.
2 This case came before the Board for regularly scheduled oral hearing on
April 25, 2019.
Appeal2017-008182
Application 11/952,745
THE INVENTION
Appellants' invention relates to medical treatment using
electromagnetic radiation (EMR). Spec. ,r 3. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A method of treating internal tissue, comprising:
inserting into a location internal to a body a treatment
device; and
irradiating portions of the internal tissue with concentrated
electromagnetic radiation from the treatment device to
form islets of damaged tissue separated by spared tissue
at a depth in a range of 50 microns to 500 microns below
a surface of the internal tissue to which radiation is
applied,
wherein said spared tissue causes healing in the damaged
tissue to allow the damaged tissue to reform as firm
tissue.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Hoskin
Kittrell
Eppstein
Altshuler
Anderson
us 5,000,752
us 5,304,173
us 5,885,211
WO 02/053050 Al
US 6,997,923 B2
Mar. 19, 1991
Apr. 19, 1994
Mar. 23, 1999
July 11, 2002
Feb. 14,2006
The following rejections are before us for review: 3, 4
1. Unpatentability under 35 U.S.C. § 103(a) over Anderson,
Eppstein, and Kittrell.
3 Each of the Examiner's three grounds of rejection under Section 103
encompass claims 1, 2, 4---6, 9, 11, 12, 19, 21-23, 26-28, 30-37, and 40-50.
4 A ground of rejection under Section 112, first paragraph, for lack of written
description has been withdrawn by the Examiner. Ans. 6.
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2. Unpatentability under 35 U.S.C. § 103(a) over Altshuler,
Eppstein, and Kittrell.
3. Unpatentability under 35 U.S.C. § 103(a) over Anderson, Eppstein,
and Hoskin.
Claim 1
OPINION
Unpatentability Over
Anderson, Eppstein, and Kittrell
The Examiner finds that Anderson discloses the invention
substantially as claimed except for treating tissue from a location internal to
a patient's body, for which the Examiner relies on Eppstein and Kittrell.
Final Action 7-8. The Examiner concludes that it would have been obvious
to a person of ordinary skill in the art at the time of the invention to employ
Anderson's treatment method on internal tissue using the catheter
arrangement of Kittrell. Id. at 8. According to the Examiner, a person of
ordinary skill in the art would have done this to treat internal tissue. Id.
Appellants argue that Anderson teaches treatment of skin by an
external, non-invasive approach. Appeal Br. 15, Reply Br. 2. According to
Appellants: "the tissue that Anderson seeks to treat is at a depth that can be
accessed by radiation applied from an external source to the surface of the
skin." Appeal Br. 15.
Appellants' challenge to Anderson is viewed as an individual attack
on a single reference in a rejection that is based on a combination of
references. It is well settled that 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
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1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,425 (CCPA 1981).
In the proposed combination, the Examiner relies on Eppstein and Kittrell as
applying EMR energy to internal tissue.
Appellants next argue that Eppstein is directed to a method for drilling
through tissue for transdermal drug delivery or analyte collection. Appeal
Br. 15. Appellants contend that transdermal drug delivery is a different field
of endeavor than fractional therapy. Id. at 16.
In response, the Examiner interprets Appellants' argument as an
argument that Epp stein constitutes non-analogous art. Ans. 9. The
Examiner observes, correctly, that, whether or not a reference is from a
different field of endeavor, it may be considered analogous art if it is
reasonably pertinent to the problem to be solved by the inventor. Id. ( citing
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). The Examiner directs
our attention to the Background of the Invention section of Appellants'
Specification, where, in describing the state of the art prior to Appellants'
date of invention, it states:
For applications in internal medicine, the EMR treatment is
typically performed with a device that works in combination
with an endoscope or catheter to deliver the EMR to internal
surfaces and tissues. As a general matter, the EMR treatment is
typically designed to (a) deliver one or more particular
wavelengths ( or a particular continuous range of wavelengths)
of EMR to a tissue to induce a particular chemical reaction,
(b) deliver EMR energy to a tissue to cause an increase in
temperature, ( c) deliver EMR energy to a tissue to damage or
destroy cellular or extracellular structures, or ( d) deliver EMR
energy to a tissue to activate an exogenous substance that has
been injected (as in the case of some cancer treatments) or
topically applied (as in the case of some acne treatments).
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Ans. 9-10 (quoting Spec. ,r 4). The Examiner finds that delivery of
photoactivatable substances to tissue to be treated is one aspect of
Appellants' invention. Id. at 10. The Examiner further finds that techniques
to promote delivery of substances to tissue is also one of the purposes of
Eppstein. Id. (citing Eppstein, col. 4, 11. 27-34). The Examiner also finds
that Appellants' invention addresses the problem of slow healing time,
something that is also addressed by Eppstein. Id. ( citing Spec. ,r 6 and
Eppstein, col. 4, 11. 23-26). Having considered the competing position of the
Examiner and Appellants, we agree with the Examiner's analysis and
conclusion that Eppstein is reasonably pertinent to the problem to be solved
by Appellants' invention and, therefore, constitutes analogous art for
purposes of an obviousness analysis. Bigio, 381 F.3d at 1325.
Next, Appellants further argue that Eppstein fails to disclose, teach,
suggest, or provide motivation to create islands of damage in internal tissue
to which radiation is applied. Appeal Br. 15. Furthermore, Appellants
challenge the Examiner's finding that the tissue treated by Anderson and
internal tissues such as mucous membranes are equivalent. Id. at 15-16,
Final Action 8. "Eppstein does not teach that skin and mucous membranes
are "equivalent" ... All Eppstein actually says is that skin and mucous
membranes are both biological membranes." Appeal Br. 16. Appellants
argue that the mere fact that both skin and mucous membranes can be
punctured by Eppstein's microporation does not make skin and mucus
equivalent and does not mean that it would have been obvious to apply
Anderson's technique to internal body structures. Id.
In response, the Examiner states that Eppstein teaches that skin and
mucous membranes are equivalent in the sense that they are equally
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desirable targets for the application of light to produce arrays of micropores.
Ans. 13. Indeed, Eppstein discloses that it is known to apply EMR energy to
internal tissue, i.e., mucous membranes, in a matter that produces an array of
damaged tissue surrounded by undamaged tissue. Eppstein, col. 33, 11. 1--4
("plurality of micropores").
Next, Appellants argue that Kittrell is directed to a catheter for
ablation of plaque accumulated within blood vessels. Appeal Br. 17.
Appellants argue that Kittrell lacks any teachings regarding forming islets of
damaged tissue. Id. Appellants argue that Kittrell is not reasonably
pertinent to the claimed invention and, therefore, constitutes non-analogous
art. Id.
Appellants' non-analogous art argument with respect to Kittrell is
without merit. Appellants' "Description of the Related Art" section of the
"Background of the Invention" section of the Specification states:
Electromagnetic radiation, particularly in the form of laser light,
has been used in a variety of cosmetic and medical applications,
including uses in ... internal medicine.
Spec. ,r 4. The foregoing statement is tantamount to an admission that
devices such as endoscopes and catheters that deliver EMR to internal
tissues are reasonably related to the problem to be solved by Appellants'
invention. Bigio, 381 F.3d at 1325 (explaining that a reference is analogous
art if it is reasonably pertinent to the particular problem with which the
inventor is involved). Whether or not Kittrell forms islets of damaged
tissue, it discloses a device for delivering EMR to internal issue, which is
sufficient to render it reasonably pertinent to the problem addressed by
Appellants' invention.
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Appellants' argument that Kittrell is directed to a catheter for ablation
of plaque accumulated within blood vessels is not indicative of Examiner
error. Appeal Br. 1 7. It is not necessary for the prior art to serve the same
purpose as that disclosed in Appellants' Specification in order to support the
conclusion that the claimed subject matter would have been obvious. See In
re Lintner, 458 F.2d 1013, 1016 (CCPA 1972).
An artisan must be presumed to know something about the art apart
from what the references disclose. See In re Jacoby, 309 F.2d 513, 516
(CCP A 1962). A person of ordinary skill in the art would readily understand
that EMR surgery techniques would have broader application in treating
internal tissue than just ablating plaque in blood vessels. Appellants
explicitly acknowledge such broader application of EMR techniques in the
Background of the Invention section of their Specification. Spec. ,r 6
("internal tissues, such as nerves or small structures"). Similarly:
For applications in internal medicine, the EMR treatment is
typically performed with a device that works in combination
with an endoscope or catheter to deliver the EMR to internal
surfaces and tissues.
Id. ,I 4.
EMR treatments of various tissues, including internal tissues
and tissues involved in surgical, medical, therapeutic, post-
operative, and other procedures, have some of the same
limitations as similar cosmetic treatments that apply EMR to
the surface of skin to perform, e.g., resurfacing or other
procedures.
Id. ,r 5. We view the Examiner's reliance on Kittrell as merely one example
of using EMR energy in surgery inside of the body. "A reference may be
read for all that it teaches, including uses beyond its primary purpose." In re
Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSRint'l Co. v.
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Application 11/952,745
Teleflex Inc., 550 U.S. 398, 418--421 (2007). A person of ordinary skill in
the art would readily understand that EMR surgery techniques could serve
purposes other than just ablating plaque in blood vessels.
Next, Appellants argue that the Examiner ignores the limitation in
claim 1 directed to allowing the damaged tissue to reform as firm tissue.
Appeal Br. 1 7. In response, the Examiner notes that this limitation relates to
an effect, namely, the behavior of the tissue that naturally occurs from
performing the steps of the method. Ans. 20-21. According to the
Examiner such a naturally occurring result does not distinguish from the
steps of the applied art. Id. at 22 (citing In re King, 801 F.2d 1324, 1326-27
(Fed. Cir. 1986)).
The Examiner's position is correct. The third limitation of claim 1
reciting: "wherein said spared tissue causes healing in the damaged tissue to
allow the damaged tissue to reform as firm tissue" merely describes the
naturally occurring outcome of performing the other steps recited in the
claim. Claims App. Such a clause does not limit or restrict the scope of the
claim. The determination of whether a "wherein" clause imposes a
limitation in a claim is determined on a case-by-case basis. See, e.g., Griffin
v. Bertina, 285 F.3d 1029, 1033-34 (Fed. Cir. 2002). A "wherein" clause
that merely states the result of the limitations in the claim adds nothing to
the patentability or substance of the claim. See MPHJ Tech, Inv., LLC v.
Ricoh Americas Corp., 847 F.3d 1363 (2017) (explaining that a "wherein"
clause that did not state a restriction as an integral part of the invention did
not limit the claim).
Furthermore, the Examiner finds that this naturally occurring outcome
is recognized in Anderson. Ans. 21-22. A person of ordinary skill in the art
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would have reasonably expected a similar outcome to occur if fractional
EMR techniques were applied to internal tissues.
Finally, Appellants argue that the Examiner fails to provide a
sufficient rationale to support the rejection. Appeal Br. 17. We disagree.
The Examiner finds that a person of ordinary skill in the art would have
modified the teachings of Anderson with the teachings of Kittrell so that
diagnosis and treatment can be applied to internal tissue. Final Action 8,
Ans. 4. Such rationale constitutes explicit articulated reasoning with rational
underpinning and is sufficient to support the rejection. In re Kahn, 441 F.3d
977,988 (Fed. Cir. 2006) (cited with approval inKSR, 550 U.S. at 418).
Furthermore, the Examiner explains that an artisan in the field of the
invention has a high level of skill, including extensive medical training.
Ans. 19-20. The Examiner reasons that a person with such a high level of
skill would have no difficulty in combining the teachings and principles of
Anderson and Kittrell. Id. at 20.
A motivation to combine can be found in "any need or problem
known in the field of endeavor at the time of the invention and addressed by
the patent." KSR, 550 U.S. at 420. "[T]he analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." Id. at 418.
Because the desire to enhance commercial opportunities by
improving a product or process is universal-and even
common-sensical-we have held that there exists in these
situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves.
DyStar Textilfarben GmBH & Co, v. C.H. Patrick Co., 464 F.3d 1356, 1368
(Fed. Cir. 2006).
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Application 11/952,745
In its Background of the Invention section, Anderson discloses that
various forms of EMR have been utilized for many years for a variety of
dermatology medical treatments. Anderson, col. 1, 11. 20-23. Anderson
then discusses some of the limitations of prior art EMR treatment, including
that treatments performed over a relatively large area can cause skin damage
over a substantial treatment area such as detachment of skin layers. Id.
col. 1, 11. 39--46. Anderson notes that such relatively large areas of skin
damage can take several weeks or more to heal. Id. at col. 1, 11. 46--49.
Anderson then summarizes its invention by disclosing the formation of
treatment islets within a volume of untreated tissue. Id. col. 1, 1. 53 - col. 2,
1. 10. Anderson teaches that one advantage of its invention is the "healing
occurs relatively quickly." Id. col. 14, 11. 49.
Kittrell teaches that it was known to deliver to EMR energy to internal
tissue. Kittrell, Abstract. The invention here takes a known surgical
device/technique for delivery EMR energy to internal tissue ( (Kittrell,
Spec. ,r 4) and modifies it to form islets surrounded by undamaged tissue
(Anderson).
It is well settled that if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill. KSR, 550 U.S. at 417.
Here, Appellants present no evidence or technical reasoning to support a
conclusion that combining the applied art requires more than ordinary skill
or that the invention achieves unexpected results.
In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and that
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the Examiner's legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner's unpatentability rejection of claim 1
over Anderson, Eppstein, and Kittrell.
Claim 28
Claim 28 depends from claim 1 and adds the limitation: "wherein the
internal tissue comprises fat tissue." Claims App. Appellants argue that the
Examiner's final rejection fails to address this limitation. Appeal Br. 21. In
response, the Examiner directs our attention to where Anderson discloses
destroying pockets of fat. Ans. 28-29 (citing Anderson, col. 5, 11. 1-5). The
Examiner's findings of fact are amply supported in the record, and we
sustain the Examiner's unpatentability rejection of claim 28.
Claim 31
Claim 31 depends from claim 1 and adds the limitation: "wherein the
method of treating the internal tissue comprises a liposuction treatment."
Claims App. Appellants argue that the Examiner's final rejection fails to
address the foregoing limitation. Appeal Br. 21. In response, the Examiner
directs our attention to where Kittrell incorporates an additional lumen for
suction and purge. Ans. 29 (citing Kittrell, col. 15, 11. 52-56). The
Examiner's findings of fact are amply supported in the record, and we
sustain the Examiner's unpatentability rejection of claim 31.
Claim 19
Claim 19 is an independent claim that is substantially similar in scope
to claim 1 except that it contains limitations directed to: (1) an optical
system having multiple foci for concentrating EMR energy; and (2) forming
coagulated treatment portions. Claims App.
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Besides repeating the arguments that we previously found
unpersuasive with respect to claim 1, Appellants argue that the applied art
fails to satisfy the multiple foci and coagulated treatment limitations.
Appeal Br. 21-22.
In response to the multiple foci argument, the Examiner directs our
attention to where Anderson discloses an "array of optical elements"
whereby each of the optical elements concentrates the radiation "to a
selectedportionofthevolume." Ans. 31 (citing Anderson, col. 5, 11. 6-10).
In response to the coagulated tissue argument, the Examiner directs our
attention to where Anderson teaches that:
[I]rradiation may occur at selected points along the blood
vessel. It is generally necessary to coagulate a blood vessel at a
selected one or more points along the vessel in order to stop
blood flow therein and kill the vessel.
Id. at 32 (quoting Anderson, col. 13, 11. 49-53).
Having reviewed the passages of Anderson cited in the Examiner's
Answer, we determine that the Examiner's findings of fact are supported by
a preponderance of the evidence. Accordingly, we sustain the Examiner's
unpatentability rejection of claim 19.
Claim 34
Claim 34 depends from claim 19 and adds the limitation: "wherein
the tissue volume comprises fat tissue." Claims App. We previously
discussed this limitation in connection with claim 28 above and sustain the
Examiner's rejection of claim 34 for the same reasons.
Claim 37
Claim 37 depends from claim 19 and adds the limitation: "wherein
the treatment comprises a liposuction treatment. We previously discussed
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this limitation in connection with claim 31 and sustain the Examiner's
rejection of claim 37 for the same reason.
Claim 21
Claim 21 is an independent claim that is substantially similar in scope
to claim 1 except that it recites an apparatus instead of a method. Claims
App.
Besides repeating the arguments that we previously found
unpersuasive with respect to claim 1, Appellants argue that the applied art
fails to satisfy the limitations of claim 21 directed to: ( 1) a plurality of
separated beams; and (2) three dimensional damaged portions within a
spared volume of tissue. Appeal Br. 23.
In response, the Examiner refers us back to findings that were
previously discussed in response to the Appellants' arguments concerning
the rejection of claim 19. Ans. 33-34. The Examiner's findings with
respect to claim 19 effectively rebut the Appellants' arguments regarding
claim 21. We agree with the Examiner that Anderson teaches a plurality of
separated beams that generates three dimensional damaged portions within a
spared volume of tissue and that Kittrell teaches insertion of an optical
system using a cannula. Ans. 8, 31, 34.
We determine that the Examiner's findings of fact are supported by a
preponderance of the evidence. Accordingly, we sustain the Examiner's
unpatentability rejection of claim 21.
Claims 22
Claim 22 depends from claim 21 and adds the limitation: "further
comprising a cooling system configured to cool the volume of internal
tissue." Claims App. Appellants argue that the Examiner's final rejection
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fails to address the foregoing limitation. Appeal Br. 24. In response, the
Examiner directs our attention to where Anderson teaches that the skin is
cooled so that a treatment portion is surrounded by cooled skin. Ans. 34--35
( citing Anderson, col. 4, 11. 14--23; col. 5, 11. 22-28).
The Examiner's findings of fact are amply supported in the record,
and we sustain the Examiner's unpatentability rejection of claim 22.
Claims 23
Claim 23 depends directly from claim 22 and indirectly from claim 21
and adds the limitation: "wherein the cooling system is configured to cool
the volume of internal tissue during operation to a selected temperature and
to a selected depth." Claims App. Appellants argue that the Examiner's
final rejection fails to address the foregoing limitation. Appeal Br. 24. The
passages in Anderson that the Examiner cites in response to Appellants'
claim 22 arguments resolve this issue in the Examiner's favor. Ans. 34--35
(citing Anderson, col. 4, 11. 14--23; col. 5. 11. 22-28). We sustain the
Examiner's unpatentability rejection of claim 23.
Claim 32
Claim 32 is an independent apparatus claim that differs from claim 21
primarily in that it contains a limitation directed to a motion sensor that is
used in connection with defining islets of damaged tissue. Claims App.
Besides repeating the arguments as to claim 1 that we previously
found unpersuasive, Appellants argue that the applied art fails to satisfy the
limitation of claim 32 directed to a motion sensor. Appeal Br. 25.
In response, the Examiner points out that Anderson uses a
two-dimensional or three-dimensional positioning system to apply EMR
energy in a geometric pattern. Ans. 3 7. The Examiner finds that a person of
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ordinary skill in the art would readily understand that such a positioning
system necessarily requires a means by which the device can ascertain when
it reaches the next location to produce an islet. Id. The Examiner further
finds that Anderson employs a controller to successively direct EMR energy
to the islet treatment portions. Id. at 38 ( citing Anderson, claim 1 ).
The Examiner reasons that, since Anderson uses a controller to direct
the localized application of EMR energy, it would have been within the
ambit of ordinary skill in the art to provide a suitable sensor for obtaining
data to feed to the controller. Id.
As such the employment of a motion sensor that measures the
speed of motion of the EMR-transmission mechanism to
furnish this information to the controller provides no
unexpected result over any other sensing mechanism which
produces this information in view of the requirement for a
sensor that determines when the next location for a
treatment islet has been reached, and is thus obvious.
Id. (citing KSR, 82 USPQ2d 1385, 1389).
We find the Examiner's technical reasoning on this issue persuasive.
Anderson creates a pattern of islets in a three-dimensional volume. To
achieve this, it employs a controller that necessarily processes data inputs to
navigate and position the EMR energy within a volume of tissue. We agree
with the Examiner that a person of ordinary skill in the art, familiar with
Anderson, would have considered a motion sensor as at least one obvious
alternative to provide a data input to Anderson's controller.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
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KSR, 550 U.S. at 421. Here, Appellants did not invent motion sensor
technology. They simply applied a well-known sensing technology to
achieve a predictable result. There is no evidence that integration of motion
sensor technology into Appellants' invention required more than ordinary
skill or produced unexpected results.
We sustain the Examiner's unpatentability rejection of claim 32.
Claims 2, 4-6, 9, 11, 12, 26, 27, 30, 32, 33, 35, 36, and 40---50
These claims depend, directly or indirectly, from one of either
independent claim 1, 21, or 32. Claims App. Appellants do not argue for
their separate patentability apart from arguments that we have previously
considered and found unpersuasive with respect to claims from which they
depend. See generally Appeal Br. Consequently, we sustain the Examiner's
unpatentability rejection of claims 2, 4--6, 9, 11, 12, 26, 27, 30, 32, 33, 35,
36, and 40-50.
Unpatentability Over
Altshuler, Eppstein, and Kittrell
In this ground of rejection, the Examiner substitutes the Altshuler
reference for the Anderson reference and finds that Altshuler discloses
comparable subject matter. 5 Final Action 9-10.
We find Appellants arguments in traverse of this ground of rejection
to be equally unpersuasive to those that we considered previously in
connection with the ground over Anderson, Eppstein, and Kittrell. We
hereby sustain the Examiner's rejection under this ground, adopting as our
5 Anderson and Altshuler list the same named inventors, albeit in a different
order. Substantial portions of the Specifications of Anderson and Altshuler
are verbatim repetitions of each other.
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own, the findings of fact and conclusions of law set forth in the Examiner's
well-reasoned Final Rejection and Answer.
Unpatentability over Anderson, Eppstein, and Hoskin
In this ground of rejection, the Examiner substitutes the Hoskin
reference for the Kittrell reference and finds that Hoskin discloses
comparable subject matter. Final Action 8-9.
Hoskin discloses a treatment apparatus that includes a pad supporting
a plurality of diamond tipped needles, each of which emits laser radiation,
albeit with the laser radiation being scattered "sideways." Hoskin, Abstract.
When the pad is supplied to the skin, the tips penetrate the skin and laser
radiation is applied to the needle tips such that a laminar radiation profile is
located below and spaced from the skin surface. Id.
We find unpersuasive the Examiner's conclusion that a person of
ordinary skill in the art would have considered it obvious to combine Hoskin
with Anderson and Eppstein to achieve the claimed invention. However, in
view of our decision to sustain the grounds of rejection over combinations
including the Kittrell reference, further elaboration and analysis regarding
Hoskin is deemed unnecessary. We do not sustain the Examiner's
unpatentability over Anderson, Eppstein, and Hoskin.
DECISION
The decision of the Examiner to reject claims 1, 2, 4--6, 9, 11, 12, 19,
21-23, 26-28, 30-37, and 40-50 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)(l)(iv).
AFFIRMED
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