Ex Parte Hattendorf et al

Board of Patent Appeals and Interferences

Mar 18, 2011

11647612 (B.P.A.I. Mar. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JUDY HATTENDORF and STEVE CARLSON
__________

Appeal 2011-004974
Application 11/647,612
Technology Center 1600
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Before TONI R. SCHEINER, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a skin
treatment procedure. The Examiner has rejected the claims as obvious in

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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view of the prior art. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
STATEMENT OF THE CASE
The Specification discloses “the sequential topical application of
compositions in a prescribed fashion to enhance the effects of non-ablative
cosmetic techniques” (Spec. 1: 12-14), including pulsed dye laser procedures
(id. at 19: 7-10). The Specification defines a “corrective composition” as one
that “ha[s] an active ingredient for treating any undesirable dermatological
condition” (id. at 5: 12-14) and states that “preparatory compositions”
“include cleansers, foaming gels, toners, and combinations thereof” (id. at
8: 24 to 9: 1).
Claims 1-3, 5-14, and 16-22 are on appeal. Claim 1 is representative
and reads as follows:
1. A method comprising:
preconditioning an area of skin of a subject by sequential topical
application of a preparatory composition and a corrective composition to the
area of skin; and
performing a non-ablative pulsed dye laser procedure on the
preconditioned area of skin whereby the duration of the benefits received
from the non-ablative procedure are extended compared to skin that is not
preconditioned for receiving a non-ablative procedure.

Issue
The Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 103(a)2 as being obvious in view of Obagi I,3 Obagi II,4 and Tanzi.5

2 Claims 1-3, 5-14, and 16-22 also stand provisionally rejected for
obviousness-type double patenting in view of claims in copending
application numbers 11/647,610, 11/647,708, and 11/647,738 (Answer
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Claims 2, 3, 5-14, and 16-22 have not been argued separately and therefore
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that Obagi II discloses a skin care system that “is
‘the ultimate complement to skin rejuvenation procedures’” (Answer 3).
The Examiner finds that Obagi II discloses that “‘[f]or every patient
undergoing a skin rejuvenation procedure, the Nu-Derm System helps
restore skin health by building tolerance and improving hydration and
circulation. The result: enhanced outcomes, faster healing.’” (Id.) The
Examiner finds that the “Obagi Nu-Derm® system includes preparatory
compositions…, [and] corrective compositions” (id. at 4).
The Examiner finds that Tanzi discloses that “nonablative laser
systems including pulsed dye lasers (PDLs) are a new technique used in
dermatology for rhyidies [sic, rhytides] and scars” (id. at 5). The Examiner
finds Tanzi discloses that “[c]ommon side effects associated with PDL
treatment include mild edema, purpura,” etc. (id.). The Examiner concludes
that it would have been obvious “to use the Nu-Derm skin care products …
on a subject undergoing a non-ablative pulsed dye laser procedure …
because it is well known in the art that applying the Nu-Derm line of

8). Appellants do not dispute the rejection (Appeal Br. 5), and therefore we
summarily affirm it.
3 Obagi Nu-Derm System, Physician Prescribing Information (2003, last
accessed 8/2008). The Examiner cites Obagi I only in reference to
dependent claims (Answer 4), and therefore Obagi I is not discussed further
in this opinion.
4 Brochure on the Obagi Nu-Derm System (last accessed 02/2000)
5 Elizabeth L. Tanzi et al., Lasers in dermatology : Four decades of
progress, 49 J. AMER. ACAD. DERMATOL., 1-34 (2003).
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products … [as] taught by the Nu-Derm brochure is beneficial for skin
undergoing a skin rejuvenation procedure” (id. at 5-6).
Appellants contend one of ordinary skill in the art would not have
been motivated to combine Obagi II’s skin conditioning procedure with
Tanzi’s pulsed dye laser procedure (Appeal Br. 7-8; Reply Br. 4-5).
The issue presented is: Does the evidence of record support the
Examiner’s conclusion that one of ordinary skill in the art would have
considered it obvious to combine Obagi II’s skin conditioning procedure
with Tanzi’s pulsed dye laser procedure?
Findings of Fact
1. The Specification discloses that “‘corrective composition’ refers to
using the compositions of the present disclosure which have an active
ingredient for treating any undesirable dermatological condition” (Spec.
5: 12-14).
2. The Specification discloses that “preparatory compositions include
cleansers, foaming gels, toners, and combinations thereof” (id. at 8: 24 to
9: 1).
3. The Specification discloses that the corrective composition may be
an exfoliator, a hydroquinone composition, or a tretinoin composition (id. at
7: 1-8).
4. The Specification discloses that preconditioning the skin before a
non-ablative procedure “may enhance the benefits of the non-ablative
procedure, for example, by extending the duration of the cosmetic benefit
received” (id. at 2: 12-16).
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5. Obagi II discloses that the Obagi Nu-Derm System of skin health
restoration is the “perfect complement to a variety of rejuvenation
procedures” (Obagi II, 3)
6. Obagi II discloses that “[f]or every patient undergoing a skin
rejuvenation procedure, the Nu-Derm System helps restore skin health by
building tolerance and improving hydration and circulation. The result:
enhanced outcomes, faster healing.” (Id. at 6.)
7. Obagi II discloses that “[p]reoperative skin conditioning with Nu-
Derm helps regulate stratum corneum lipids and hydration to enhance
outcome” of laser resurfacing procedures (id.).
8. Obagi II discloses that the Obagi Nu-Derm System includes
cleansers and hydroquinone-containing creams (id. at 10).
9. Tanzi discloses that the “PDL [pulsed dye laser] has revolutionized
the treatment of many vascular lesions and is considered the laser of choice
for most benign congenital and acquired vascular lesions because of its
superior clinical efficacy and low risk profile” (Tanzi 4).
10. Tanzi discloses that “[n]onablative laser resurfacing is … ideal
for patients with either mild cutaneous pathology, or in those who are
unwilling or unable to undergo an expensive, labor-intensive procedure such
as ablative laser resurfacing” (id. at 14, right col.).
11. Tanzi discloses that “[c]linical studies have demonstrated the
ability of … PDL to reduce mild facial rhytides with minimal side effects.
The most common side effects of PDL treatment include mild edema,
purpura, and transient postinflammatory hyperpigmentation.” (Id. at 14-15,
endnotes omitted.)
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Analysis
Claim 1 is directed to a method comprising sequentially treating skin
with a preparatory composition and a corrective composition before a non-
ablative procedure, so that “the duration of the benefits received from the
non-ablative procedure are extended compared to skin that is not
preconditioned.”
Obagi II discloses a skin care system for preoperative skin
conditioning before skin rejuvenation procedures, including laser
resurfacing, that comprises preparatory compositions (cleansers) and
corrective (hydroquinone-containing) compositions. Obagi II discloses that
preoperative use of the Nu-Derm System enhances laser surgery outcome
(FF 7) and is the “perfect complement to a variety of rejuvenation
procedures” (FF 5). Tanzi discloses that pulsed dye laser (PDL) procedures
are nonablative treatments that are useful for the treatment of skin, including
for the treatment of facial rhytides (wrinkles). In view of these disclosures,
it would have been obvious to one of ordinary skill in the art to combine
Obagi II’s skin conditioning system with Tanzi’s PDL procedure because
Obagi II expressly discloses that its skin conditioning system provides
benefits for a variety of skin treatments and enhances the outcome for laser
surgery.
Appellants argue that Obagi II does not suggest using the Obagi Nu-
Derm system in combination with PDL procedures, and Tanzi does not cure
that deficiency, because Obagi II only “highlights the benefit of using the
Obagi Nu-Derm® system before and after laser resurfacing,
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microdermabrasion, chemical peels, collagen and botulinum toxin treatment,
and surgical facelifts,” but does not discuss PDL procedures (Appeal Br. 7).
This argument is not persuasive. As discussed above, Obagi II
discloses that the Nu-Derm skin conditioning system is the “perfect
complement to a variety of rejuvenation procedures” (FF 5, emphasis
added), including laser resurfacing (FF 7). Obagi II also discloses that the
Nu-Derm system provides “enhanced outcomes, faster healing” for “every
patient undergoing a skin rejuvenation procedure” (FF 6). Thus, it would
have been obvious to use the skin conditioning system disclosed by Obagi II
in combination with skin rejuvenation procedures generally, including
Tanzi’s PDL procedure.
Appellants argue that “there is no predictability as to how a topical
treatment regimen will affect a pulsed dye laser procedure as opposed to the
skin rejuvenation procedures described in [Obagi II] … and thus, no
reasonable expectation of success” in making the combination (Appeal Br.
8).
This argument is not persuasive because, as discussed above, Obagi II
discloses that its skin conditioning system restores skin health and is the
perfect complement to a wide variety of skin rejuvenation procedures. Thus,
the ordinary artisan would reasonably expect that using the Nu-Derm system
prior to a PDL procedure would also be beneficial.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that one
of ordinary skill in the art would have considered it obvious to combine
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Obagi II’s skin conditioning procedure with Tanzi’s pulsed dye laser
procedure.
SUMMARY
We affirm both the rejection of claims 1-3, 5-14, and 16-22 under 35
U.S.C. § 103(a), and we affirm the provisional rejection of claims 1-3, 5-14,
and 16-22 for obviousness-type double patenting.
TIME PERIOD FOR RESPONSE
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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