Ex Parte Liu et al

Patent Trials and Appeals Board

Jan 29, 2019

13366202 - (D) (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/366,202 02/03/2012 Harvey I-Heng Liu
86528 7590 01/31/2019
Slayden Grubert Beard PLLC
401 Congress Avenue
Suite 1650
Austin, TX 78701
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
16591.105096 1862
EXAMINER
JENNESS, NATHAN JAY
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
01/31/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
trosson@sgbfirm.com
patent@sgbfirm.com
dallen@sgbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARVEY I-HENG LIU, PATRICK REICHERT,
TOBIN C. ISLAND, and ROBERT GROVE
Appeal2017-011772 1
Application 13/366,202
Technology Center 3700
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1, 6-22, 24--30,
34--45, and 47-53. We have jurisdiction to review the case under 35 U.S.C.
§§ 134 and 6.
1 The Appellants identify TRIA Beauty, Inc. as the real party in interest.
Appeal Br. 2.
Appeal2017-011772
Application 13/366,202
The invention relates generally to devices for radiation-based
dermatological treatment. Spec. 1 lines 18-21.
Claim 1 is illustrative:
1. A self-contained, hand-held device for providing radiation-
based dermatological treatments, the device comprising:
a cordless, self-contained device body configured to be
handheld by a user;
a battery supported in the handheld device body;
a laser device supported in the handheld device body and
electrically connected to the battery, the laser device including a
laser source configured to emit laser radiation;
a heat sink supported in the handheld device body and
thermally coupled to the laser source to remove heat from the
laser source;
an application end of the handheld device body having an
outer surface configured to be manually moved across the
surface of the skin during a treatment session;
at least one sensor located at the application end and
configured to emit sensor radiation toward the skin, receive
sensor radiation returned from the skin, and generate sensor
signals based on the received sensor radiation returned from the
skin;
a processor; and
computer instructions stored in a non-transitory
computer-readable medium and executable by the processor to:
pulse the laser source to emit a sequence of pulsed
beams to the skin to generate an array of treatment spots on the
skin, wherein adjacent treatment spots generated on the skin are
spaced apart from each other by areas of non-treated skin
between the adjacent treatment spots, to thereby provide a
fractional treatment to the skin, wherein each treatment spot is
defined by a contiguous area on the skin surface receiving at
least l/e2 times the maximum intensity of a respective beam
pulse, which maximum intensity is sufficient to cause a lesion
in the skin, and the areas of non-treated skin receive insufficient
radiation to qualify as a treatment spot;
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Appeal2017-011772
Application 13/366,202
determine at least one of a displacement or a speed of
the application end relative to the skin surface based on the
sensor signals generated by the at least one sensor; and
control the pulsing of the laser source based on the
determined displacement or speed of the application end to
inhibit the generation of successive treatment spots that overlap
each other on the skin surface;
wherein each pulsed beam is divergent in at least one
direction upon outwardly passing through a plane defined by
the outer surface of the application end of the handheld device
body and thereby upon incidence with the skin surface;
wherein each treatment spot on the skin has an
instantaneous area of less than 1.0 mm2; and
wherein the device includes, downstream of the laser
source, only an open air interface, a window, or other structure
that does not deflect or influence the angular distribution profile
of the pulsed beams from the laser source to the skin.
The Examiner rejected claims 1, 6-10, 12-22, 25, 27, 29, 52, and 53
under 35 U.S.C. § I03(a) as unpatentable over Durkin et al.
(US 2008/0091179 Al, pub. Apr. 17, 2008) ("Durkin"), Altshuler et al.
(US 2008/0058783 Al, pub. Mar. 6, 2008) ("Altshuler"), and Hawkins et al.
(US 2008/0262484 Al, pub. Oct. 23, 2008) ("Hawkins").
The Examiner rejected claim 11 under 35 U.S.C. § I03(a) as
unpatentable over Durkin, Altshuler, Hawkins, and Miller (US 5,658,323,
iss. Aug. 19, 1997).
The Examiner rejected claims 24, 26, and 28 under 35 U.S.C. § I03(a)
as unpatentable over Durkin, Altshuler, Hawkins, and Moench et al.
(WO 2011/010239 Al, pub. Jan. 27, 2011) ("Moench").
The Examiner rejected claims 30, 34--45, and 47-51 on the ground of
non-statutory obviousness-type double patenting over claims 1-29 of Liu et
al. (US 8,961,578 B2, iss. Feb. 24, 2015) and Island et al.
(US 2004/0176823 Al, pub. Sept. 9, 2004).
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Appeal2017-011772
Application 13/366,202
We AFFIRM.
ANALYSIS
Reiection of Claims l, ~10, 12-22, 25, 27, 29, 52, and 53
The Appellants argue independent claims 1, 52, and 53 together as a
group by advancing one set of arguments which applies to each of the three
claims. Appeal Br. 15. We select claim 1 as representative. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
We are not persuaded by the Appellants' argument that Durkin fails to
disclose a laser beam that is divergent upon passing through the outer
surface of the device body, as generally recited in each of claims 1, 52,
and 53, on the basis that Figure 4 does not show a laser diode as an energy
source, and on the basis that parallel radiation lines 68 in Figure 4 are not
displayed as divergent lines. Appeal Br. 11.
In spite of what the Appellants argue on the basis of the simplified
visual representation in Durkin's Figure 4, Durkin discloses in the detailed
description of the figure that the energy source 60 can be a diode laser.
Durkin ,r 69. The Examiner finds a laser diode "inherently produces a beam
that diverges in a least one direction when emitted absent the presence of
collimating optics." Final Act. 6 ( emphasis omitted). In support of this
assertion of inherency, the Examiner cites two supporting references, "Sun
and Newport," and the Appellants' Specification, which states that laser
diodes typically have highly divergent beams. Answer 12-13 (citing Spec. 2
lines 20-21 ). The Appellants acknowledge that Durkin teaches the use of a
laser diode that creates divergent beams. Reply Br. 3; see also id. at 6
("Appellant[ s] agree that laser diodes typically emit diverging beams").
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Appeal2017-011772
Application 13/366,202
In spite of the laser diode inherently producing divergent beams, the
Appellants further argue that the parallel lines labeled as radiation 68 in
Durkin's Figure 4 mean that optics are present, to convert divergent beams
into parallel beams, which violates the claim language of there being no
downstream optics. Appeal Br. 11-12. As evidence of the existence of
optics in Figure 4, the Appellants argue that embodiments shown in
Durkin's Figures 5 and 6 have optics, and Figure 4 does not explicitly show
that optics are not present. Appeal Br. 14; see also Reply Br. 2-5.
We are not persuaded by this argument. Durkin fully describes the
embodiment shown in Figure 4, and optics are not described. Durkin ,r,r 65-
69. In contrast, Figure 5 shows optics elements 96 and 100 that are
described as optics elements, and Durkin indicates Figure 5 is "another
embodiment." Id. ,r 70. Durkin describes a third embodiment in Figure 6
using optical fiber 80 and diffusing optic 100'. Id. ,r 72. Thus, Durkin's
Figures 5 and 6 do not provide evidence that the embodiment in Figure 4
includes undisclosed optics.
Because the Appellants have failed to show error in the Examiner's
rejection of claims 1, 52, and 53, we sustain the obviousness rejection of
these claims. We also sustain the rejection of dependent claims 6-10, 12-
22, 25, 27, and 29 that were rejected along with claims 1, 52, and 53, and
were not argued separately.
Rejections of Claims 11, 24, 26, and 28
In addition, because no separate arguments were advanced for the
remaining obviousness rejections, we also sustain the rejections of
dependent claims 11, 24, 26, and 28.
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Appeal2017-011772
Application 13/366,202
Double Patenting Reiection
The Appellants do not advance arguments directed to the Examiner's
double-patenting rejection of independent claim 30 and dependent
claims 34--45, and 47-51. Instead, the Appellants agree to file a terminal
disclaimer to overcome the rejection. Reply Br. 2. Therefore, we sustain the
double-patenting rejection.
DECISION
We affirm the rejections of claims 1, 6-22, 24--29, 52, and 53 under
35 U.S.C. § 103(a).
We affirm the rejection of claims 30, 34--45, and 47-51 on the basis
of non-statutory, obviousness-type double patenting.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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