Ex Parte Ferren et al

Patent Trial and Appeal Board

Mar 18, 2013

11143116 (P.T.A.B. Mar. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte BRAN FERREN, MURIEL Y. ISHIKAWA,
EDWARD K.Y. JUNG, NATHAN P. MYHRVOLD,
and LOWELL L. WOOD JR.
__________

Appeal 2011-011096
Application 11/143,116
Technology Center 3700
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for producing a patterned distribution of a material in or on skin. The
Examiner rejected the claims as anticipated and as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Statement of the Case
Background
The Specification teaches that “methods are provided for forming
patterned distributions of materials in the skin of a subject. A desired pattern
may be formed by delivering a photoresponsive material to the skin and
exposing the skin to light or other electromagnetic energy to cause a reaction
or conversion of the photoresponsive material” (Spec. 3).
The Claims
Claims 1-4, 7-10, 12, 14, 58-67, 69, and 70 are on appeal. Claim 1 is
representative and reads as follows:
1. A method of producing a patterned distribution of
a material in or on skin, comprising:
delivering a photoresponsive material to at least a
skin region of a subject; and
delivering targeted light to said skin region
according to a pattern, said targeted light having a
wavelength content, time-averaged flux and/or fluence
sufficient to cause a transformation of said
photoresponsive material to a modified form.

The issues
A. The Examiner rejected claims 1-4, 7-10, 12, 58, 63-67, 69, and 70
under 35 U.S.C. § 102(b) as anticipated by Tankovich ‘9901 (Ans. 4-5).
B. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as obvious
over Tankovich ‘990 and Neuberger2 (Ans. 6).

1 Tankovich et al., US 6,050,990, issued Apr. 18, 2000.
2 Neuberger, W., US 6,355,054 B1, issued Mar. 12, 2002.
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C. The Examiner rejected claims 59 and 60 under 35 U.S.C. § 103(a) as
obvious over Tankovich ‘990 and Shain3 (Ans. 6-7).
D. The Examiner rejected claim 66 under 35 U.S.C. § 103(a) as obvious
over Tankovich ‘990 and Tankovich ‘9074 (Ans. 7).
A. 35 U.S.C. § 102(b) over Tankovich ‘990
The Examiner finds that Tankovich ‘990 teaches
a method of producing a patterned distribution of a material
in or on skin, comprising: delivering a photoresponsive
material to at least a skin region of a subject (Col 9, lines 28-
54); and delivering targeted light to said skin region
according to a pattern by delivering targeted light to a
plurality of location in said skin region according to a
pattern (Fig. 16A and Col 18, lines 58-66). Tankovich
discloses a photosensitizer chemical that is activated by laser
radiation (Col 9, lines 44-48). This is interpreted as an
inactive chemical that is modified into an active form. Also,
Tankovich discloses a photoresponsive material that changes
color upon illumination.

(Ans. 4).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Tankovich ‘990 anticipates the
method of claim 1?
Findings of Fact
1. Tankovich ‘990 teaches that
When the hair removal treatment to be employed on the
synchronized hairs utilizes an external contaminant
infiltrated into the hair ducts, the pretreatment method can

3 Shain et al., US 6,569,157 B1, issued May 27, 2003.
4 Tankovich, N., US 5,226,907, issued Jul. 13, 1993.
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incorporate the following steps. First, a contaminant, i.e.,
one containing light absorbing chromophore particles, is
gently applied to the skin section so that at least a portion of
the contaminant enters the upper region of the hair follicles.

(Tankovich ‘990, col. 9, ll. 28-34).
2. Tankovich ‘990 teaches that a “mild concentration of a
photosensitizer chemical (e.g., one that is activated by laser radiation to
produce singlet oxygen) can also be administered to a skin section, allowed
to become absorbed in hair growth cells, and then used to shock the hair
follicles” (Tankovich ‘990, col. 9, ll. 44-48).
3. Figure 16A of Tankovich ‘990 is reproduced below:

“FIG. 16A is a drawing showing a mask that receives a large incident laser
heam and transmits a plurality of small laser beams for infiltrating
contaminant particles into hair ducts” (Tankovich, col. 5, ll. 11-14).
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4. Tankovich ‘990 teaches that:
FIG. 16A is a drawing showing a mask 2 with a body 4
having contact area 6 and pinhole apertures 8. Incident light
beam 8 is transformed by the mask into a plurality of smaller
light beams 9. Attached to the mask is heat sink system 5. In
use, light from a light source, such as a laser, passes through
the apertures in the mask and is directed to a skin surface
and hair follicles through the small apertures in the mask,
which have a diameter in the range from about 0.5 mm to 1
mm and are spaced apart at a distance of about 0.5 mm to 1
mm as measured between the edges of the apertures. The
size of the apertures and their spacing or density in the body
of the mask are selected to create from the large light beam a
plurality of small beams.

(Tankovich ‘990, col. 18, ll. 54-66).
5. Tankovich ‘990 teaches that an “indicator material and its
pattern of coating should be selected to perform its indicator function while
absorbing a minimal amount of light energy” (Tankovich, col. 26, ll. 23-25).
6. Tankovich ‘990 teaches that to “minimize the laser absorption
of the open-work pattern, it can be printed in a half-tone, for example a fine
half-tone. Generally the ratio of the surface area covered by the indicator
material to that not covered by the indicator material (e.g. the open spaces
between the dots) is in the range from about 1:5 to about 1:10” (Tankovich
‘990, col. 26, ll. 50-55).
7. Tankovich ‘990 teaches that the “object is to deposit only
enough indicator material on the surface of the hydrogel film to be visible to
an operator, but not enough to substantially reduce the therapeutic radiation
reaching the patient” (Tankovich ‘990, col. 26, ll. 59-62).
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8. Tankovich ‘990 teaches that “[d]uring lasing a short pulse of
energy vaporizes some of the contaminant, and a puff of smoke and
fragments is produced, which fly off the skin surface as smoke or particles”
(Tankovich ‘990, col. 22, ll. 56-59).
9. Tankovich teaches that the “method can be used in connection
with a computerized system 72 in communication with a laser 74 so that the
laser operator can key in responses to a set of predetermined questions
regarding the . . . anatomical location to be lased with the result that a
preprogramed selection of individually tailored laser parameters is
transmitted to the laser before lasing is initiated” (Tankovich, col. 50, ll. 13-
20).
10. Tankovich teaches an “indicator material [which] is selected to
change color upon illumination with at least one frequency of light, such as
is provided by a laser” (Tankovich, col. 26, ll. 17-19).
Principles of Law
“A single prior art reference that discloses, either expressly or
inherently, each limitation of a claim invalidates that claim by anticipation.”
Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir.
2005).
Analysis
Claim 1
Tankovich ‘990 teaches delivering a photoresponsive material to at
least a skin region of a subject, specifically teaching that “a contaminant,
i.e., one containing light absorbing chromophore particles, is gently applied
to the skin section so that at least a portion of the contaminant enters the
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upper region of the hair follicles” (Tankovich ‘990, col. 9, ll. 28-34; FF 1).
Tankovich teaches delivering another photoresponsive material as well,
specifically an “indicator material [which] is selected to change color upon
illumination with at least one frequency of light, such as is provided by a
laser” (Tankovich, col. 26, ll. 17-19; FF 10).
Tankovich ‘990 teaches delivering targeted light to the skin region in
a pattern, specifically teaching “a mask that receives a large incident laser
heam and transmits a plurality of small laser beams for infiltrating
contaminant particles into hair ducts.” (Tankovich ‘990, col. 5, ll. 11-14; FF
3). Figure 3 of Tankovich shows that the light is delivered in a particular
pattern (FF 3).
Tankovich ‘990 teaches causing a transformation of said
photoresponsive material to a modified form, specifically teaching that
“[d]uring lasing a short pulse of energy vaporizes some of the contaminant,
and a puff of smoke and fragments is produced, which fly off the skin
surface as smoke or particles” (Tankovich ‘990, col. 22, ll. 56-59; FF 8).
This vaporization is reasonably interpreted as a modification of the
contaminant. Similarly, the indicator material is transformed to a modified
form, specifically from one color to another by the illumination of the laser
light (FF 10).
Appellants contend that “the Examiner failed to demonstrate where
the Examiner-cited portion of Tankovich discloses ‘delivering targeted light
to said skin region according to a pattern’” (App. Br. 25)5.

5 When we refer to the Appeal Brief, we are referring to the
Supplemental Appeal Brief filed March 15, 2011.
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We are not persuaded. Tankovich’s teaching to deliver light through a
mask is a direct teaching of a pattern, specifically the pattern formed by the
holes in the mask (FF 3). Figure 3 of Tankovich is “objective” evidence
showing a mask with holes which are in a particular pattern.
Appellants further contend that the “mischaracterization that
delivering light to hair follicles teaches an equivalent to ‘delivering targeted
light to said skin region’ is evidence that the Examiner did not consider
claim 1 as recited” (App. Br. 26).
We are not persuaded. When limited by a mask, the laser light will
inherently form a particular pattern on the skin region being illuminated,
based upon the constraints of the mask. This is inherent in the very use of a
mask. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here,
the claimed and prior art products are identical or substantially identical, or
are produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product.”) Appellants
have provided no evidence rebutting this inherency.
Appellants contend that “nowhere did the Examiner establish
evidence in Tankovich of light from the mask having a ‘wavelength content,
time-averaged flux and/or fluence sufficient to cause a transformation of
said photoresponsive material to a modified form’” (App. Br. 29).
We are not persuaded. Tankovich ‘990 teaches that “[d]uring lasing a
short pulse of energy vaporizes some of the contaminant, and a puff of
smoke and fragments is produced, which fly off the skin surface as smoke or
particles” (Tankovich ‘990, col. 22, ll. 56-59; FF 8). This vaporization of
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the photosensitive contaminant is reasonably understood as a transformation
to a modified form (FF 8).
Claims 3 and 4
Appellants contend that “[t]here is no teaching, and the Examiner
failed to point to any, in the Examiner-cited portion of Tankovich of an
equivalent to ‘wherein each location of said plurality of locations can be
characterized by an x coordinate and y coordinate in an effectively-planar
portion of the skin region’” (App. Br. 34).
We are not persuaded. We agree with the Examiner that any “location
being treated with light on the skin surface will have an x-coordinate, a
y-coordinate on the skin surface as well as a z-coordinate at a certain depth
beneath the skin surface, as light penetrates the skin to target the hair
follicle” (Ans. 10). Neither claims 2, 3 or 4 require targeting a particular
skin location, but simply require that the location have an X, Y, and Z
coordinate. Since every planar skin location will inherently be describable
in terms of an X, Y, and Z coordinate system, Tankovich inherently satisfies
the requirement of claim 3.
Claims 7 and 8
Appellants contend that the Examiner does not identify a teaching of
“delivering targeted light to said plurality of locations under microprocessor
control” (App. Br. 36).
The Examiner finds that Tankovich teaches “a computerized system is
used in conjunction with the laser to set anatomical locations to be lased and
the result is a selection of individually tailored laser parameters is
transmitted to the laser (Col 50, lines 6-20)” (Ans. 10).
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We find that the Examiner has the better position. Tankovich teaches
that the “method can be used in connection with a computerized system 72
in communication with a laser 74 so that the laser operator can key in
responses to a set of predetermined questions regarding the . . . anatomical
location to be lased with the result that a preprogramed selection of
individually tailored laser parameters is transmitted to the laser before lasing
is initiated” (Tankovich ‘990, col. 50, ll. 13-20; FF 9). This is an express
teaching to deliver targeted laser light to locations based upon anatomical
location (FF 9).
We find unpersuasive Appellants’ argument that a computer
“transmitting” a parameter to the laser of the specific anatomical location as
not equivalent to “delivering” the laser light “under software control”, since
the argument fails to correlate the argument with any claim limitation in
claims 7 or 8 that the control must occur simultaneous with the lasing
operation. Consistent with claims 7 and 8, Tankovich’s computer delivers
laser light to a plurality of locations based upon software and microprocessor
control (FF 9).
Claim 64
Appellants contend that the “Examiner failed to demonstrate, using
objectively-verifiable evidence, how a visible photochromic reaction or a
material that is modified under visible light is even relevant to Appellant's
claim 64” (App. Br. 39).
The Examiner finds that “Tankovich teaches that the indicator
material changes color in order to track the path of the laser, as discussed
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above. The surgeon/operator has to be able to see the color change, and
therefore the modified form is visible under natural light” (Ans. 11).
We find that the Examiner has the better position. Tankovich teaches
an “indicator material [which] is selected to change color upon illumination
with at least one frequency of light, such as is provided by a laser”
(Tankovich, col. 26, ll. 17-19; FF 10). Since claim 64 simply requires that
the “modified form is visible under at least one of natural light, or ultraviolet
light”, we agree with the Examiner that a material which has changed color
would be visible to the ordinary person under natural light. This is clearly
relevant to claim 64 and Appellants’ argument to the contrary is not
persuasive.
B. 35 U.S.C. § 103(a) over Tankovich ‘990 and Neuberger
The Examiner relies upon Tankovich ‘990 as discussed above and
finds that “Neuberger teaches a method for delivering a bio-fluid that aids in
the delivery of light, using an array of microneedles” (Ans. 6). The
Examiner finds it obvious to “include the needle delivery method as taught
by Neuberger in the method taught by Tankovich as an alternative
equivalent of delivering a material below the skin surface before the
application of light” (Ans. 6). An “[e]xpress suggestion to substitute one
equivalent for another need not be present to render such substitution
obvious.” In re Fout, 675 F.2d 297, 301 (CCPA 1982). As noted by the
Court in KSR, “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 421
(2007).
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The Examiner provides sound fact-based reasoning for combining
Neuberger with Tankovich ‘990. We adopt the fact finding and analysis of
the Examiner as our own. Appellants provide no specific reasons regarding
the combination of Neuberger and Tankovich ‘990, instead arguing “the
Examiner has not demonstrated that each and every recitation of claim 1, as
arranged in the claim, is found in Tankovich” (App. Br. 41). Since we have
found that argument unpersuasive for the reasons given above, we affirm
this rejection based upon the anticipation rejection over Tankovich ‘990.
C. 35 U.S.C. § 103(a) over Tankovich ‘990 and Shain
The Examiner relies upon Tankovich ‘990 as discussed above and
finds that “Shain discloses a photosensitive dye that undergoes a
photothermal change upon delivery of electromagnetic radiation. This
change can result in the removal of the dye from the skin” (Ans. 6). The
Examiner finds it obvious to “include this removal of a modified form of a
photoresponsive material as taught by Shain in the method taught by
Tankovich as an alternative way to indicate to the user an area that has
already been treated by the radiation” (Ans. 6-7).
The Examiner provides sound fact-based reasoning for combining
Shain with Tankovich ‘990. We adopt the fact finding and analysis of the
Examiner as our own. Appellants provide no specific reasons regarding the
combination of Shain and Tankovich ‘990, instead arguing “the Examiner
has not demonstrated that each and every recitation of claim 1, as arranged
in the claim, is found in Tankovich” (App. Br. 43). Since we have found
that argument unpersuasive for the reasons given above, we affirm this
rejection based upon the anticipation rejection over Tankovich ‘990.
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D. 35 U.S.C. § 103(a) over Tankovich ‘990 and Tankovich ‘907
The Examiner relies upon Tankovich ‘990 as discussed above and
finds that “Tankovich ‘907 discloses cleaning the skin using a dye removal
solution” (Ans. 7). The Examiner finds it obvious to “include removal of an
unmodified form of the photoresponsive material as taught by Tankovich
‘907 in the method taught by Tankovich ‘990 in order to remove dye stained
on the skin surface” (Ans. 7).
The Examiner provides sound fact-based reasoning for combining
Tankovich ‘907 with Tankovich ‘990. We adopt the fact finding and
analysis of the Examiner as our own. Appellants provide no specific reasons
regarding the combination of Tankovich ‘907 and Tankovich ‘990, instead
arguing “the Examiner has not demonstrated that each and every recitation
of claim 1, as arranged in the claim, is found in Tankovich” (App. Br. 43).
Since we have found that argument unpersuasive for the reasons given
above, we affirm this rejection based upon the anticipation rejection over
Tankovich ‘990.
Additional Argument
Appellants also argue “that the Examiner is relying on ‘personal
knowledge’ and/or is taking ‘official notice’ of one or more factors to reach
the factual conclusion of what the cited technical material” (App. Br. 47).
Appellants fail, however, to identify a specific fact relied upon by Examiner
that is not supported by the evidence of record. Therefore, we are not
persuaded by Appellants’ contention.

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SUMMARY
In summary, we affirm the rejection of claims 1-4, 7-10, 12, 58,
63-67, 69, and 70 under 35 U.S.C. § 102(b) as anticipated by Tankovich
‘990.
We affirm the rejection of claim 14 under 35 U.S.C. § 103(a) as
obvious over Tankovich ‘990 and Neuberger.
We affirm the rejection of claims 59 and 60 under 35 U.S.C. § 103(a)
as obvious over Tankovich ‘990 and Shain.
We affirm the rejection of claim 66 under 35 U.S.C. § 103(a) as
obvious over Tankovich ‘990 and Tankovich ‘907.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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