Ex Parte Hattendorf et al

Board of Patent Appeals and Interferences

Mar 18, 2011

11647663 (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 2010-011906
Application 11/647,663
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 fractional
resurfacing procedures” (Spec. 1: 11-13). The Specification defines a
“corrective composition” as one that “ha[s] an active ingredient for treating
any undesirable dermatological condition” (id. at 5: 22-24) and states that
“preparatory compositions” “include cleansers, foaming gels, toners, and
combinations thereof” (id. at 9: 10-12).
Claims 1-3, 5-15, and 17-23 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 fractional resurfacing procedure on the preconditioned
area of skin.

The claims stand rejected under 35 U.S.C. § 103(a)2 as obvious in
view of either Karen’s testimony,3 Manstein,4 and Obagi I,5 or Obagi II,6
Manstein, and Obagi I.

2 Claims 1-3, 5-15, and 17-23 also stand provisionally rejected for
obviousness-type double patenting in view of claims in copending
application numbers 11/647,610, 11/647,738, 11/648,290, 11/647,708, and
11/647,612 (Answer 12). Application 11/648,290 is now abandoned and
therefore the rejection based on this application is moot. With regard to the
other applications, Appellants do not dispute the rejection (Appeal Br. 5),
and therefore we summarily affirm it.
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I.
Issue
The Examiner has rejected all of the claims on appeal as being
obvious in view of Karen’s testimony, Manstein, and Obagi I. Claims 2, 3,
5-15, and 17-23 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 Karen’s testimony discloses using the Obagi
Nu-Derm® system to condition skin “both before and after” laser resurfacing
(Answer 4) “by washing it with Obagi’s Foaming Gel and Toner” and then
“applying ClearTM (comprises hydroquinone USP, 4%),” among other
things (id.). The Examiner finds that Karen’s testimony discloses that “the
Nu-Derm® system restores skin health prior to surgery and builds skin
tolerance to ensure a much better surgical result and allows for quicker
healing time” (id.).
The Examiner finds that Manstein discloses that fractional
resurfacing, or fractional photothermolysis, is a known treatment performed
with a laser to achieve skin restoration (id. at 5). The Examiner concludes
that the claimed method would have been obvious based on Karen’s
testimony and Manstein “because fractional resurfacing, like laser
resurfacing cause skin damage and/or irritation … [and] the ordinarily

3 Contemplating Cosmetic Procedures, http://web.archive.org/web/
20031203005324/www.obagi.com/heal/heal_main_frm.html, (dated 2003, last
accessed May 8, 2008)
4 Dieter Manstein et al., Fractional Photothermolysis: A New Concept for
Cutaneous Remodeling Using Microscopic Patterns of Thermal Injury, 34
LASERS IN SURGERY AND MEDICINE, 426-438 (2004)
5 Obagi Nu-Derm System, Physician Prescribing Information (2003)
6 Brochure on the Obagi Nu-Derm System (2000)
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skilled artisan would be motivated to use the skin rejuvenation, Nu-Derm®
line of products because Nu-Derm® helps aid in skin health restoration pre-
and post-treatment” (id. at 5-6).
Appellants contend that one of skill in the art would not have been
motivated to combine the skin conditioning procedure disclosed in Karen’s
testimony with Manstein’s fractional resurfacing because the ablative laser
procedure disclosed in Karen’s testimony is different from Manstein’s
fractional resurfacing procedure (Appeal Br. 8-9).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that one of ordinary skill in the art would
have been considered it obvious to combine the skin conditioning procedure
disclosed in Karen’s testimony with Manstein’s fractional resurfacing?
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: 22-24).
2. The Specification discloses that a corrective composition may be,
for example, an exfoliator or a composition containing hydroquinone or
tretinoin (id. at 7: 10-18).
3. The Specification discloses that “preparatory compositions include
cleansers, foaming gels, toners, and combinations thereof” (id. at 9: 10-12).
4. Karen’s testimony discloses that Karen, a cosmetic procedure
patient, received a procedure that included laser resurfacing (Karen’s
testimony 1, left col.).
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5. Karen’s testimony discloses that, before the procedure, Karen
preconditioned her skin using the Nu-Derm System (id.).
6. Karen’s testimony discloses that “Karen’s doctor explained that
restoring her skin health [with the Nu-Derm System] prior to surgery would
build her skin’s tolerance, ensure a much better surgical result, and allow for
quicker healing time” (id.)
7. Karen’s testimony discloses that “[e]very morning and evening,
Karen prepared her skin by washing it with Obagi’s Foaming Gel and Toner.
This allowed her skin to be more receptive to the correction process.” (Id. at
1, right col.)
8. Karen’s testimony discloses that “[a]fter preparation, Karen
corrected her skin by applying Clear evenly to her entire face” (id.).
9. Obagi I discloses that Obagi Nu-Derm ClearTM contains
hydroquinone USP, 4% (Obagi I, left col.).
10. Manstein discloses a “concept of skin rejuvenation called
fractional photothermolysis (FP).… FP creates microscopic thermal wounds
and specifically spares tissue surrounding each wound” (Manstein 427).
11. Manstein discloses that fractional photothermolysis “is the
distribution of microscopically small volumes of thermal damage … within
the skin. Epidermal repair is fast due to small wounds and short migratory
paths for keratinocytes.” (Id. at 427, legend to Fig. 1.)
Analysis
Claim 1 is directed to a method comprising sequentially treating skin
with a preparatory composition and a corrective composition before a
fractional resurfacing procedure.
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Karen’s testimony discloses preconditioning the skin by sequentially
applying a preparatory composition (Obagi’s Foaming Gel and Toner, FF 7)
and a corrective composition (hydroquinone-containing Obagi Nu-Derm
Clear, FFs 8, 9) prior to laser resurfacing in order to “ensure a much better
surgical result, and allow for quicker healing time” (FF 6). Manstein
discloses that fractional laser resurfacing is a known alternative to laser
ablative resurfacing, and allows fast epidermal repair (FFs 10, 11). In view
of these disclosures, it would have been obvious to one of ordinary skill in
the art to combine the skin conditioning procedure disclosed in Karen’s
testimony with Manstein’s fractional laser resurfacing procedure in order to
improve skin health prior to the procedure and reduce healing time.
Appellants argue that those of skill in the art would not have been
motivated to combine the skin conditioning procedure of Karen’s testimony
with Manstein’s factional laser procedure because the laser resurfacing
procedure described in Karen’s testimony is a different procedure, with more
severe side effects, than the fractional resurfacing procedure (Appeal Br. 8-
10). Appellants also argue that, because of the differences between the two
laser procedures, those skilled in the art would not have had a reasonable
expectation of success in combining the cited references (Appeal Br. 10-11).
These arguments are not persuasive. Karen’s testimony discloses that
the purpose of the skin conditioning procedure is to “restor[e] … skin health
prior to surgery” in order to “build [the] skin’s tolerance, ensure a much
better surgical result, and allow for quicker healing time” (FF 6). Karen’s
testimony does not disclose that its presurgery treatment regimen was
specifically tailored to the laser resurfacing procedure. Thus, the ordinary
artisan would expect that the treatment regimen disclosed by Karen’s
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testimony would improve skin health, and provide the disclosed benefits,
prior to any skin surgical procedure, including fractional resurfacing.
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 the
skin conditioning procedure disclosed in Karen’s testimony with Manstein’s
fractional resurfacing.
II.
Issue
The Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 103(a) as being obvious in view of Obagi II, Manstein, and Obagi I.
Claims 2, 3, 5-15, and 17-23 have not been argued separately and therefore
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner relies on Manstein and Obagi I as discussed above.
The Examiner finds that Obagi II discloses a skin care system that “is ‘the
ultimate complement to skin rejuvenation procedures’” (Answer 7). 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.). The Examiner concludes that it would have
been obvious to one of ordinary skill in the art to combine the disclosures of
Obagi II and Manstein “because fractional resurfacing, like laser resurfacing
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cause skin damage and/or irritation … [and] Nu-Derm® helps aid in skin
health restoration pre- and post-treatment” (id. at 9).
Appellants contend that one of ordinary skill in the art would not have
been motivated to combine Obagi II’s skin conditioning system with
Manstein’s fractional resurfacing because Obagi II only “highlights the
benefit of using the Obagi Nu-Derm® system before and after laser
resurfacing, microdermabrasion, chemical peels, collagen and botulinum
toxin treatment, and surgical facelifts,” but does not discuss fractional
resurfacing (Appeal Br. 11).
The issue with respect to this rejection 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 system
with Manstein’s fractional resurfacing procedure?
Additional Findings of Fact
12. 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)
13. 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.)
14. 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.).
15. Obagi II discloses that the Obagi Nu-Derm System includes
cleansers and hydroquinone-containing creams (id. at 10).
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Analysis
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 14) and is the “perfect complement to a variety of rejuvenation
procedures” (FF 12). Manstein discloses that its fractional laser resurfacing
procedure is an alternative to laser ablative resurfacing, and allows fast
epidermal repair. 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 Manstein’s fractional resurfacing procedure because Obagi II
expressly discloses that the skin conditioning system is applicable to a
variety of skin rejuvenation procedures and enhances the outcome for laser
surgery.
Appellants contend that Obagi II does not suggest using the Obagi
Nu-Derm system in combination with fractional resurfacing, and Manstein
does not cure that deficiency because it discloses fractional resurfacing as a
“new modality for the treatment of photoaged skin with significantly
reduced side effects” (Appeal Br. 11).
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 12, emphasis
added), including laser resurfacing (FF 14). Obagi II also discloses that the
Nu-Derm system provides “enhanced outcomes, faster healing” for “every
patient undergoing a skin rejuvenation procedure” (FF 13). Thus, one of
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ordinary skill in the art would have considered it obvious to use the skin
conditioning system disclosed by Obagi II in combination with skin
rejuvenation procedures generally, including Manstein’s fractional
resurfacing procedure.
Appellants also argue that “there is no predictability as to how a
topical treatment regimen will affect a fractional resurfacing procedure as
opposed to the [Obagi II] skin rejuvenation procedures … and thus, no
reasonable expectation of success” in making the combination (Appeal Br.
11-12).
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 variety of skin rejuvenation procedures. Thus, one
of skill in the art would reasonably expect that using the Nu-Derm system
prior to a fractional resurfacing 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
Obagi II’s skin conditioning procedure with Manstein’s fractional
resurfacing procedure.
SUMMARY
We affirm both of the rejections of claims 1-3, 5-15, and 17-23 under
35 U.S.C. § 103(a), and the provisional rejection of claims 1-3, 5-15, and 17-
23 for obviousness-type double patenting.
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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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