11183000 (P.T.A.B. Sep. 27, 2012)

Ex Parte James

Patent Trial and Appeal BoardSep 27, 2012

11183000 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte TERRY L. JAMES ____________________ Appeal 2010-004586 Application 11/183,000 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, LYNNE H. BROWNE, and HYUN J. JUNG, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004586 Application 11/183,000 2 STATEMENT OF CASE Appellant seeks review of the Examiner’s rejection of claims 1-25 under 35 U.S.C. § 103(a) as being unpatentable over Choi (US 5,964,729; iss. Oct. 12, 1999), Gartstein (US 2004/0087992 A1; pub. May 6, 2004), and Postlethwaite (US 5,436,228; iss. Jul. 25, 1995). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. THE INVENTION Appellant’s claimed invention relates to an apparatus and a method “to deliver optimal elements in order to enhance the aesthetic appearance of the skin.” Spec. 1:4-6. Claims 1 and 13 are the independent claims on appeal, and claim 1, reproduced below, is illustrative of the claimed subject matter (emphasis added): 1. An apparatus for delivering a bioactive material to a subterranean layer of a skin, comprising: a head including one or more needles that are operable to penetrate a stratum corneum of a skin, wherein a bioactive material is disposed on one or more of the needles, whereby movement of the head operates to pick up the bioactive material and to deliver a portion of the bioactive material to a selected location, the selected location being a dermis, or an epidermis, or both the dermis and the epidermis, wherein rolling the apparatus over an area of the skin fifteen times will result in at least 200 pricks/centimeter squared, and wherein the bioactive material is formulated to cause collagen proliferation. OPINION The Examiner found that Choi discloses an apparatus and a method wherein rolling the apparatus over an area of the skin fifteen times will result Appeal 2010-004586 Application 11/183,000 3 in at least 200 pricks per centimeter squared as called for in independent claims 1 and 13.1 Ans. 4. This finding is based upon the following analysis. The Examiner measured the diameter of needle disc 13 in Choi’s Figure 4 as 6.5 centimeters. Ans. 5. Then, assuming 200 needles 14 per needle disc 13, the Examiner calculated that Choi’s needle disc 13 has 9.799 needles per centimeter along its circumference.2 Ans. 5; see also Choi, col. 5, l. 66-col. 6, l. 1. The Examiner also determined that the device shown in Choi’s Figure 17 is 13 centimeters along its longest axis based upon the size of the device in relation to the human hand holding that device in the figure. Ans. 6. Then, because Choi’s device includes 27 needle discs 13, the Examiner calculated that the needle discs 13 are spaced 0.482 centimeters apart. Id. Given this spacing of needle discs 13, the Examiner determined that two of Choi’s needle discs 13 would pass within each square centimeter of a user’s skin, causing 19.56 pricks per centimeter squared with each pass of the roller.3 Ans. 5 (9.799 pricks from each of two needle discs 13). While a drawing is available as a reference for all that it teaches a person of ordinary skill in the art (see In re Aslanian, 590 F.2d 911, 914 (CCPA 1979)), for the reasons that follow, the Examiner’s finding is not adequately supported by the reference. Choi’s Figures 4 and 17 are not marked as to scale, and Choi is silent regarding any dimensions of needle disc 13 or the device 300 depicted in Figure 17. Choi, col. 10, ll. 32-33; figs. 4, 17. Because Choi is silent 1 The Examiner also found that such disclosure was inherent. Ans. 6. 2 Using circumference = π multiplied by the diameter. 3 Claims 1 and 13 call for 200 pricks per centimeter squared when passed over the skin 15 times, amounting to 13.33 pricks per centimeter squared per roll of the apparatus. Appeal 2010-004586 Application 11/183,000 4 regarding dimensions, these figures are not to scale and do not define precise proportions of the needle discs 13.4 See In re Nash, 230 F.2d 428, 431 (CCPA 1956) (“[I]t is well settled that the drawings of patent applications are not necessarily scale or working drawings.…”); In re Olson, 212 F.2d 590, 592 (CCPA 1954) (“Ordinarily drawings which accompany an application for a patent are merely illustrative of the principles embodied in the alleged invention claimed therein and do not define the precise proportions of elements relied upon to endow the claims with patentability” (citation omitted)); see also Manual of Patent Examining Procedure (MPEP) § 2125 (8th Ed., Rev. 9, Aug. 2012). Further, Choi’s Figure 4 is an exploded, perspective view, further detracting from the accuracy of measurements taken from that drawing.5 Choi, col. 5, ll. 11-13, 61-63; Fig. 4. Beyond these problems with reliance on the drawings for specific dimensions, the rejection utilizes measurements taken from Figures 4 and 17 as if these figures depict the same embodiment so that the measurements of Figure 17 are applicable to Figure 4. However, Choi’s Figure 4 depicts a first embodiment, and Choi’s Figure 17 depicts how all six embodiments are utilized but does not identify the embodiment depicted. Choi, col. 5, ll. 5- 12; col. 10, ll. 30-33. 4 We note that Figures 3 and 6 each depict a first embodiment (Choi, col. 5, ll. 5-12, 16-17), yet Figure 3 includes 13 needle discs 13 and Figure 6 includes 27 needle discs 13. Such difference is not explained by the Examiner or the reference, and further suggests the figures do not define precise proportions. 5 Contrast the accuracy of measurements taken from a perspective view to measurements taken from a view that is orthogonal to the aspect being measured. Appeal 2010-004586 Application 11/183,000 5 In light of this, we cannot agree that a preponderance of the evidence supports the Examiner’s finding that Choi discloses an apparatus and a method wherein rolling the apparatus over an area of the skin fifteen times will result in at least 200 pricks per centimeter squared as called for in independent claims 1 and 13.6 See App. Br. 8-10; Reply Br. 2-4; contra, Ans. 4, 6. Accordingly, we cannot sustain the rejection of claims 1 and 13 and their respective dependent claims 2-12 and 14-25. DECISION We reverse the Examiner’s decision to reject 1-25. REVERSED hh 6 For similar reasons, we also cannot find that Choi necessarily, and thus inherently, makes such disclosure. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”) (Citations and internal quotation marks omitted).