Ex Parte Ferren et al

Patent Trial and Appeal Board

Mar 18, 2013

12005709 (P.T.A.B. Mar. 18, 2013)

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.
12/005,709 12/28/2007 INV001Bran Ferren 0504-004-002F-DIV002 4911
44765 7590 03/18/2013
THE INVENTION SCIENCE FUND
CLARENCE T. TEGREENE
11235 SE 6TH STREET
SUITE 200
BELLEVUE, WA 98004
EXAMINER
CRANDALL, LYNSEY P
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
03/18/2013 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 BRAN FERREN, MURIEL Y. ISHIKAWA,
EDWARD K.Y. JUNG, NATHAN P. MYHRVOLD,
and LOWELL L. WOOD JR.
__________

Appeal 2011-003887
Application 12/005,709
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 within skin. The
Examiner rejected the claims as anticipated and as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

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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 55-73 are on appeal. Claim 55 is representative and reads as
follows:
55. A method of producing a patterned distribution of
a material within a skin region, comprising:
delivering a photoresponsive material to a skin
region of a subject in a first pattern; and
delivering targeted light to the skin region in a
second pattern, said second pattern overlapping partially
with said first pattern, wherein photoresponsive material
in the areas of overlap between said first pattern and said
second pattern undergoes photomodification to form an
overlap pattern of modified photoresponsive material
within said skin region.

The issues
A. The Examiner rejected claims 55, 56, 58-63, 65, 67, 68, 70, 72, and
73 under 35 U.S.C. § 102(b) as anticipated by Tankovich
1
(Ans. 4-5).
B. The Examiner rejected claims 69 and 71 under 35 U.S.C. § 103(a) as
obvious over Tankovich (Ans. 6).

1
Tankovich et al., US 6,050,990, issued Apr. 18, 2000.
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C. The Examiner rejected claims 57 and 64 under 35 U.S.C. § 103(a) as
obvious over Tankovich and Neuberger
2
(Ans. 6-7).
D. The Examiner rejected claim 66 under 35 U.S.C. § 103(a) as obvious
over Tankovich and Eckhardt
3
(Ans. 7).
A. 35 U.S.C. § 102(b) over Tankovich
The Examiner finds that Tankovich teaches
a method of producing a patterned distribution of a material
within a skin region, comprising: delivering a
photoresponsive material to a skin region of a subject in a
first pattern (contaminant 14, Figs. 17, 18A-F and 20A-C) or
indicator material . . . depending on the specific treatment;
and delivering targeted light (#7, Figs. 20A-C and #9, Fig.
16A) to the skin region in a second pattern, said second
pattern overlapping partially with said first pattern, wherein
photoresponsive material in the areas of overlap between
said first pattern and said second pattern undergoes
photomodification (photomechanical and photothermal
response, Figs. 20A-B) to form an overlap pattern of
modified photoresponsive material within said skin region.

(Ans. 4.)
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Tankovich anticipates the method of
claim 55?
Findings of Fact
1. Tankovich teaches that Figure 17 shows “occlusive dressing 10
covering a section of skin 12 to which a contaminant 14 containing particles

2
Neuberger, W., US 6,355,054 B1, issued Mar. 12, 2002.
3
Eckhardt et al., US 2003/0018373 A1, published Jan. 23, 2003.
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has been applied and infiltrated into hair ducts 31” (Tankovich, col. 20, ll.
51-53).
2. Figure 17 of Tankovich is reproduced below:

“FIG. 17 is a drawing showing an occlusive dressing covering a section of
skin to which a lotion containing carbon particles has been applied and
infiltrated into hair ducts” (Tankovich, col. 5, ll. 20-23).
3. Tankovich teaches that “during illumination of the skin section,
the heated particles will transfer energy to the portion of the hair cells
surrounding the lower region of the hair follicle that are responsible for hair
growth” (Tankovich, col. 20, ll. 63-67).
4. Tankovich teaches that:
To indicate the track of the laser beam over the
surface of the hydrogel composite during use, in one
embodiment shown in FIG. 19 the exterior surface of the
thermoplastic hydrogel film . . . has a coating 30 of an
indicator material. . . . The indicator material 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. 8-19.)
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5. 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).
6. 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.

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(Tankovich, col. 18, ll. 54-66.)
7. Tankovich teaches that the “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).
8. Tankovich 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, col. 26, ll. 50-55).
9. Tankovich 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, col. 26, ll. 59-62).
10. Tankovich teaches that:
In a hair follicle, carbon particles with an average diameter
of approximately 1.0 micron will vaporize when illuminated
via a Nd:YAG laser. . . . These explosions translate
mechanical energy to kinetic energy in the form of a
shockwave, which causes both heat and motion. It has been
discovered that the shockwave caused by exploding
chromophore particles contributes substantially to the
damage to the skin tissue that feeds growing hair follicles.

(Tankovich, col. 30, ll. 19-29.)
11. Tankovich teaches that the indicator material is incorporated
into a hydrogel which either “has a coating 30 of an indicator material. The
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coating can be partial, for example in a discontinuous or openwork pattern.
Alternatively, the coating can be eliminated if the hydrogel film incorporates
an indicator material” (Tankovich, col. 26, ll. 12-16).
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
We agree with the Examiner that Tankovich teaches delivering a
photoresponsive material to a skin region (FF 1-2, 7-9). We also agree that
Tankovich teaches delivering targeted light to the skin region in a pattern,
where the targeted light induces photomodification of the photoresponsive
material (FF 5-6, 10).
The Examiner, in the rejection, identifies two possible elements which
can serve as photoresponsive material, the contaminant 14 or the indicator
material, both of which the Examiner finds are delivered to a skin region to
produce a patterned distribution of a material within a skin region (see Ans.
4, 7).
There are two separate disputes, however, which depend upon claim
interpretation. First, the Examiner and Appellants dispute the meaning of
the term “pattern” in claim 55. Second, the Examiner and Appellants
dispute what constitutes delivery to a “skin region” to produce a patterned
distribution “within a skin region” as required by claim 55. We therefore
begin with claim interpretation for each term. During prosecution, claim
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terms are given their broadest reasonable interpretation as they would be
understood by persons of ordinary skill in the art in the light of the
Specification.
“pattern”
Beginning with the first term “pattern,” we first turn to the
Specification which teaches that “[p]atterned distributions of dyes, pigments,
or other light absorbing, reflecting, or emitting materials, (or any other
materials that may produce a visually or optically detectable effect) may be
used for aesthetic, decorative, or cosmetic purposes (for example, as tattoos
or permanent or semi-permanent cosmetics)” (Spec. 6).
We agree with Appellants that the term “pattern” is reasonably
interpreted, in light of the Specification, as the designed placement of
components rather than as the natural or chance configuration. This is
particularly reasonable in the context of a method claim where performance
of the method requires delivery in a “first pattern” or designed arrangement,
unlike a product claim which might arguably inherently comprise a pattern,
even if the pattern resulted from purely from chance.
Therefore, we agree with Appellants that the application of a
contaminant containing particles that infiltrate hair ducts (FF 1, 2) cannot be
reasonably interpreted as satisfying the requirement in claim 55 for
“delivering a photoresponsive material to a skin region of a subject in a first
pattern.”
“within a skin region”
The Specification teaches that “a general distribution of a
photoresponsive material within a skin region may be obtained by injecting
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the photoresponsive material 132 into skin 12 with an hypodermic needle
140” (Spec. 9). The Specification alternatively teaches that
“photoresponsive material may be distributed into a skin region 12 with the
use of a microneedle array 150” (id.). The Specification teaches a third
alternative where “photoresponsive material may be delivered to at least a
skin region of a subject by delivering the photoresponsive material to the
subject systemically” (id. at 10). The Specification teaches a fourth
embodiment where “photoresponsive material may be distributed only to the
skin region of interest (skin region 202 in the present example), by, for
example, topical application or local injection” (id.).
We interpret the phrase “within a skin region” in light of these various
delivery modes to require that the photoresponsive material must be
“within” the skin, that is, incorporated into at least the epidermal layer and
possibly into lower layers of the skin.
Tankovich teaches that the indicator material is incorporated into a
hydrogel which either “has a coating 30 of an indicator material. The coating
can be partial, for example in a discontinuous or openwork pattern.
Alternatively, the coating can be eliminated if the hydrogel film incorporates
an indicator material” (Tankovich, col. 26, ll. 12-16; FF 11). Thus, the
indicator material of Tankovich will not be “within” a skin region since the
material is located on a hydrogel on top of the skin rather than “within” the
skin as required by claim 55.
Therefore, neither of the alternatives in Tankovich identified by the
Examiner as satisfying the limitation for “delivering a photoresponsive
material to a skin region of a subject in a first pattern,” the contaminant or
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the indicator coating, satisfy the requirements of claim 55 as interpreted in
light of the Specification.
Conclusion of Law
The evidence of record does not support the Examiner‟s conclusion
that Tankovich anticipates the method of claim 55.
B.-D. 35 U.S.C. § 103(a) over Tankovich with Neuberger or Eckhardt
This rejection relies upon the underlying anticipation rejection over
Tankovich which we reversed above. For the same reasons we reverse the
anticipation rejection over Tankovich for a failure to present a prima facie
case of anticipation of claim 55, we also reverse these obviousness rejections
since the Examiner does not identify teachings which teach or suggest the
missing element of “delivering a photoresponsive material to a skin region
of a subject in a first pattern” as required by all pending claims, which all
depend from independent claim 55.
SUMMARY
In summary, we reverse the rejection of claims 55, 56, 58-63, 65, 67,
68, 70, 72, and 73 under 35 U.S.C. § 102(b) as anticipated by Tankovich.
We reverse the rejection of claims 69 and 71 under 35 U.S.C. § 103(a)
as obvious over Tankovich.
We reverse the rejection of claims 57 and 64 under 35 U.S.C. § 103(a)
as obvious over Tankovich and Neuberger.
We reverse the rejection of claim 66 under 35 U.S.C. § 103(a) as
obvious over Tankovich and Eckhardt.

REVERSED
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