Ex Parte Michael

Patent Trial and Appeal Board

Sep 27, 2016

12616421 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/616,421 1111112009
27572 7590 09/29/2016
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
FIRST NAMED INVENTOR
Kreindel MICHAEL
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.
8521-000050 2488
EXAMINER
DELLA, JAYMIE
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL KREINDEL 1
Appeal2014-007468
Application 12/616,421
Technology Center 3700
Before ANNETTE R. REIMERS, JILL D. HILL, and ERIC C. JESCHKE,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Kreindel ("Appellant") seeks review under 35 U.S.C.
§ 134(a) of the Examiner's decision, as set forth in the Final Office Action
dated October 24, 2013 ("Final Act."), rejecting claims 1-5 and 21-28. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 In an Application Data Sheet filed with the Specification on
November 11, 2009, the inventor was identified as "Kreindel Michael." In a
subsequent Application Data Sheet, filed on January 25, 2010, the inventor
was corrected to "Michael Kreindel." Various documents in the record
reflect the incorrect inventor name.
Appeal2014-007468
Application 12/616,421
BACKGROUND
The disclosed subject matter "relates to methods and [a] device for
skin tightening and fat destruction." Spec. i-f 1. Claims 1, 21, and 28 are
independent. Claim 1 is reproduced below:
1. An apparatus for fat destruction and body
contouring comprising:
at least two electrodes coupleable to a body
area to be treated;
a radiofrequency (RF) generator connected to
the at least two electrodes for delivering RF energy
to tissue to be treated to elevate tissue temperature
above a normal level; and
a high voltage (HV) pulse generator
connected to the at least two electrodes for
delivering to the tissue with the elevated tissue
temperature at least one HV pulse in a range of from
200V to 5kV to cause selective destruction of fat
cells wherein the RF and HV pulse generators are
respectively connected to common or different
connections of the at least two electrodes.
REJECTIONS
1. Claims 1, 3, and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chomenky '451 (US 2003/0149451 Al, published Aug. 7,
2003), Chomenky '703 (US 2006/0217703 Al, published Sept. 28, 2006),
and Rosenberg (US 2006/0211958 Al, published Sept. 21, 2006).
2. Claims 2 and 21-24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chomenky '451, Chomenky '703, Rosenberg, and
Kreindel (US 2003/0187488 Al, published Oct. 2, 2003).
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Application 12/616,421
3. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Chomenky '451, Chomenky '703, Rosenberg, and Ingle
(US 2001/0014819 Al, published Aug. 16, 2001).
4. Claim 25 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Chomenky '451, Chomenky '703, Rosenberg, Kreindel,
and Ingle.
5. Claims 26 and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chomenky '451, Chomenky '703, Rosenberg, Kreindel,
Bhargav (US 2009/0318905 Al, published Dec. 24, 2009), and Auth (US
4,492,231, issued Jan. 8, 1985).
6. Claim 28 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Chomenky '451, Chomenky '703, Rosenberg, Ingle,
Kreindel, Bhargav, and Auth.
DISCUSSION
Rejection 1 - The rejection of claims 1, 3,
and 5 under 35 U.S.C. § 103(a)
For this Rejection, Appellant argues the patentability of claim 1 and
does not separately argue claims 3 and 5, which depend from claim 1.
Appeal Br. 6-11. Thus, we address only claim 1, with claims 3 and 5
standing or falling with claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv) (2014).
The Examiner relied on Chomenky '451 to satisfy certain limitations
of claim 1, but stated that Chomenky '451 fails "to disclose a RF generator
connected to the electrodes via a common or different connection than the
HV pulse generator for delivering RF energy to the treated tissue to elevate
tissue temperature above a normal level such that it is preheated before
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Application 12/616,421
treating with the HY energy." Final Act. 3. The Examiner found, however,
that Chomenky '703
discloses using both a high voltage generator ( 109) for purposes
of delivering electroporation energy to electrodes (103-105) and
a radiofrequency generator (110) for purposes of delivering
radiofrequency energy to electrodes (103-105) to heat the target
tissue before electroporation treatment, the generators (109, 110)
being respectively connected to common connections of the two
electrodes (103-105).
Id. (citing Chomenky '751i-fi-18, 32, 54, Fig. 1). The Examiner also found
that Rosenberg "disclose[ s] an apparatus for fat destruction (100) which
teaches that adipose tissue temperature may be raised using RF current via
conducting electrodes prior to and/or simultaneously to a pressure pulse
treatment to enhance the effect of the cell disruption by the pressure pulse."
Id. at 3--4 (citing Rosenberg i-f 14). According to the Examiner, it would
have been obvious
to modify Chomenky [' 451] by having an RF generator for
delivering RF energy to the electrodes to pre-heat adipose tissue
in order to provide the benefit of heating the adipose target tissue
for a short period of time before treatment to reduce the
resistance of adipose cells to the treatment and enhance the effect
of adipose cell disruption by the treatment as taught by
Chomenky ['703] ([0008], [0032], [0054]; Fig. 1) and
[Rosenberg] ([0014]) since a predictable result would ensue.
Final Act. 4.
First, Appellant contends that Chomenky '703 "fails to disclose or
suggest a device for treating fat and skin, particularly elevating tissue
temperature with a radiofrequency (RF) generator and a HV pulse generator
connected to electrodes" as required by the limitation reciting "'for
delivering to tissue with the elevated tissue temperature at least one high
voltage pulse in the range of from 200V to 5kV to cause selective
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Application 12/616,421
destruction of fat cell."' Appeal Br. 8. Appellant also argues that
Rosenberg "is directed to treatment of soft tissue using a train of pressure
pulses" and "only uses high voltage to generate a shock wave in liquid." Id.
According to Appellant, "Rosenberg is thus not directed to a high voltage
pulse generator for selectively destroying fat cells with a high voltage pulse,
as generally claimed." Id.
Nonobviousness cannot be established by attacking the references
individually when the rejection is based upon a combination of prior art. See
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As noted by the
Examiner, Chomenky '703 is relied upon for certain teachings (Ans. 4--5),
but not to address the limitation identified by Appellant. See Final Act. 3
(relying on Chomenky '451 for the limitation at issue). Moreover, as noted
by the Examiner, Rosenberg is relied upon for certain teachings (Ans. 5), but
not to address the "high voltage (HV) pulse generator" limitation. See Final
Act. 3 (relying on Chomenky '451 for that limitation).
Second, Appellant contends that the "proposed combination of the
Chomenky ['451], Chomenky ['703], and Rosenberg references is improper
because the Examiner is inappropriately relying on speculation, unfound
assumptions, hindsight reconstruction, and 'common knowledge without
evidentiary support in the record."' Appeal Br. 8 (quoting In re Warner, 379
F.2d 1011, 1017 (CCPA 1967)). Appellant argues that "[e]ven if the
references could have been combined and modified as asserted by the
Examiner, the combination and modifications are not obvious because the
prior art failed to suggest their desirability." Id. at 8-9 (citing In re Mills,
916 F.2d 680, 682 (Fed. Cir. 1990)).
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Here, Appellant does not identify the alleged "speculation, unfound
assumptions, hindsight reconstruction, and common knowledge without
evidentiary support in the record" relied on by the Examiner. Appeal Br. 8
(internal quotation omitted). Specifically as to "hindsight reconstruction"
(id.), Appellant does not identify any knowledge relied on that was gleaned
only from the Specification and that was not otherwise within the level of
ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971); see also Ans. 5---6 (discussing McLaughlin). We
are also not apprised of error based on the requirement, from In re Mills, for
an express "suggestion or motivation" to modify the prior art as proposed.
See 916 F .2d at 682 ("While Mathis' apparatus may be capable of being
modified to run the way Mills' apparatus is claimed, there must be a
suggestion or motivation in the reference to do so."). The Supreme Court
has made clear that this is not the sole test for obviousness. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007) (holding that when the
teaching-suggestion-motivation test is applied as a rigid and mandatory
formula, it is incompatible with Supreme Court precedent).
Third, Appellant argues that Chomenky '703 "is directed to a Foley
type urethral catheter including a balloon configured to enter the bladder and
treat benign prostatic hyperplasia, which is a highly specialized procedure"
and that "[i]t would not have been obvious to one skilled in the art of fat cell
destruction to look to the teachings of Chomenky ['703], and the Examiner
failed to provide any evidence to support the conclusory statement that it
would have been." Appeal Br. 9. Appellant also argues that Rosenberg "is
directed to treatment of tissue with an acoustic wave or magnetic pulse, not a
high voltage pulse generated by a high voltage pulse generator as claimed."
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Id. According to Appellant, "[o]ne skilled in the art of treating skin with
high voltage pulses would thus not have looked to Rosenberg." Id.
Appellant also argues that the "Examiner's conclusory statements are
insufficient to establish a prim a facie rejection because no articulated
reasoning with rational underpinning was given for the proposed
combination, and no explanation as to how the combination could have been
made was provided." Id. at 10.
Rejections based on obviousness must be supported by "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR 550 U.S. at 418. Although Appellant contends
that the Examiner has failed to provide articulated reasoning, Appellant does
not persuasively address the reasoning provided by the Examiner as to why
one of ordinary skill in the art would have modified Chomenky '451 based
on the relied-upon teachings of Chomenky '703 and Rosenberg. See Final
Act. 3--4; Ans. 6-9. We determine that the Examiner's reasoning supports a
prima facie case of obviousness. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). By not persuasively addressing the reasoning provided,
Appellant has not shown error in the relevant findings or conclusion as to
obviousness. See id.
Moreover, we are not apprised of error based on the differences
identified between each of the prior art references---Chomenky '703 and
Rosenberg-and the claimed invention because Appellant has not
persuasively shown that the differences identified undermine the factual
findings or reasoning relied on to support the conclusion of obviousness.
See also KSR 550 U.S. at 420 (2007) ("[F]amiliar items may have obvious
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uses beyond their primary purposes, and in many cases a person of ordinary
skill will be able to fit the teachings of multiple patents together like pieces
of a puzzle.").
For these reasons, we sustain the rejection of claim 1 as unpatentable
over the combined teachings relied upon by the Examiner. Claims 3 and 5
fall with claim 1.
Rejection 2-The rejection of claims 2 and
21-24 under 35 U.S.C. § 103(a)
A. Claim 2
Appellant does not separately argue claim 2, which depends from
claim 1. Appeal Br. 6-11. Thus, for the reasons discussed above (see supra
Rejection 1 ), we sustain the rejection of claim 2.
B. Claims 21-24
For the claims in this group, Appellant argues the patentability of
claim 21 and does not separately argue claims 22-24, which depend from
claim 21. Appeal Br. 12-18. Thus, we address only claim 21, with claims
22-24 standing or falling with claim 21. See 37 C.F.R. § 41.37 (c)(l)(iv).
The Examiner relied on Chomenky '451 to satisfy certain limitations,
but stated that Chomenky '451 fails "to disclose a radiofrequency (RF)
generator connected to the first and the second electrodes for delivering RF
energy to skin drawn into the cavity to heat the skin." Final Act. 6-7. The
Examiner found, however, that Chomenky '703 "discloses using both a high
voltage generator (109) for purposes of delivering electroporation energy to
electrodes (103-105) and a radiofrequency generator (110) for purposes of
delivering radiofrequency energy to electrodes (103-105) to heat the target
tissue before electroporation treatment." Id. at 7 (citing Chomenky '7 51
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Application 12/616,421
iii! 8, 32, 54, Fig. 1 ). The Examiner also relied on the same findings
regarding Rosenberg and the same reasoning to modify Chomenky '451
based on Chomenky '703 and Rosenberg, as set forth above. See supra
Rejection 1; compare Final Act. 7 (claim 21 ), with id. at 3--4 (claim 1 ).
The Examiner stated that Chomenky '451 fails
to disclose the first and second electrodes mounted within a
housing cavity configured to receive skin and fat cells and an
inlet defined by the housing and extending from the cavity to an
exterior of the housing, the inlet configured to fluidly
communicate with a vacuum source for drawing skin and fat cells
into the housing with negative pressure.
Final Act. 6. The Examiner found, however, that Kreindel discloses
an apparatus for treating adipose tissue having electrodes (201,
202) mounted within a housing (701) cavity (106) and an inlet
(118) defined by housing (701) and extending from cavity (106)
to an exterior of the housing (106) to fluidly communicate with
vacuum source (706) such that a region (108) of skin is in contact
with the interior of the applicator is deformed to protrude into the
interior of the applicator to bring the adipose tissue (133) closer
to the electrodes (201, 202).
Id. According to the Examiner, it would have been obvious to modify the
prior art as proposed, based on Kreindel, in order "to provide the benefit of
bringing the subcutaneous adipose tissue closer to the electrodes to apply the
energy as taught by Kreindel." Id. (citing Kreindel iii! 18, 21, Figs. 1-3).
First, Appellant contends that because, in Kreindel, "[h ]igh voltage is
only mentioned as a method to generate a shock wave in liquid," Kreindel
"fails to disclose or suggest" the "high voltage (HV) pulse generator"
limitation at the end of claim 21. Appeal Br. 13-14. Appellant also argues
that Chomenky '703 "fails to disclose or suggest a device for treating fat and
skin as claimed," by Appellant, such as in the "radio frequency (RF)
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generator" limitation and "high voltage (H V) pulse generator" limitation.
Id. at 14. In addition, Appellant argues that Rosenberg "only uses high
voltage to generate a shock wave in liquid" and "is thus not directed to a
high voltage pulse generator for selectively destroying fat cells with a high
voltage pulse." Id. at 15.
As discussed above (see supra Rejection 1 (first argument)),
nonobviousness cannot be established by attacking the references
individually when the rejection is based upon a combination of prior art. See
Merck & Co., 800 F .2d at 1097. As noted by the Examiner, Kreindel is
relied upon for certain teachings (Ans. 9-10), but not to address the "high
voltage (HV) pulse generator" limitation. See Final Act. 5---6 (relying on
Chomenky '451 for that limitation). Moreover, as noted by the Examiner,
Chomenky '703 is relied upon for certain teachings (Ans. 10), but not to
address the aspects identified. Further, as noted by the Examiner, Rosenberg
is relied upon for certain teachings (Ans. 11 ), but not to address the "high
voltage (HV) pulse generator" limitation. See Final Act. 5---6 (relying on
Chomenky '451 for that limitation).
Second, Appellant contends that the "proposed combination of the
Chomenky ['451], Chomenky ['703], Rosenberg, and Kreindel references is
improper because the Examiner is inappropriately relying on speculation,
unfound assumptions, hindsight reconstruction, and 'common knowledge
without evidentiary support in the record."' Appeal Br. 15 (quoting Warner,
379 F.2d at 1017). Appellant also argues that "[e]ven ifthe references could
have been combined and modified as asserted by the Examiner, the
combination and modifications are not obvious because the prior art failed to
suggest their desirability." Id. (citing Mills, 916 F.2d at 682). For the same
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Application 12/616,421
reasons discussed above (see supra Rejection 1 (second argument)), we are
not apprised of error here.
Third, Appellant argues that Chomenky '703 "is directed to a Foley
type urethral catheter including a balloon configured to enter the bladder and
treat benign prostatic hyperplasia, which is a highly specialized procedure"
and that "[i]t would not have been obvious to one skilled in the art of fat cell
destruction to look to the teachings of Chomenky ['703], and the Examiner
failed to provide any evidence to support the conclusory statement that it
would have been." Appeal Br. 15. Appellant also argues that both
Rosenberg and Kreindel "are directed to treatment of tissue with an acoustic
wave or magnetic pulse, not a high voltage pulse generated by a high voltage
pulse generator as claimed." Id. According to Appellant, " [ o ]ne skilled in
the art of treating skin with high voltage pulses would thus not have looked
to the Rosenberg or Kreindel references." Id. Appellant also argues that the
"Examiner's conclusory statements are insufficient to establish a prima facie
rejection because no articulated reasoning with rational underpinning was
given for the proposed combination, and no explanation as to how the
combination could have been made was provided." Id. at 16.
Although Appellant contends that the Examiner has failed to provide
articulated reasoning, Appellant does not persuasively address the reasoning
provided by the Examiner as to why one of ordinary skill in the art would
have modified Chomenky '451 based on the relied-upon teachings of
Chomenky '703, Rosenberg, and Kreindel. See Final Act. 6-7; Ans. 12-14.
We determine that the Examiner's reasoning supports a prima facie case of
obviousness of claim 21. See Oetiker, 977 F.2d at 1445. By not
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persuasively addressing the reasoning provided, Appellant has not shown
error in the relevant findings or conclusion as to obviousness. See id.
Moreover, we are not apprised of error based on the differences
identified between each of the references---Chomenky '703, Rosenberg, and
Kreindel-and the claimed invention because Appellant has not persuasively
shown that the differences identified undermine the factual findings or
reasoning relied on to support the conclusion of obviousness. See also KSR,
550 U.S. at 420 ("[F]amiliar items may have obvious uses beyond their
primary purposes, and in many cases a person of ordinary skill will be able
to fit the teachings of multiple patents together like pieces of a puzzle.").
For these reasons, we sustain the rejection of independent claim 21 as
unpatentable over the combined teachings relied upon by the Examiner.
Claims 22-24 fall with claim 21.
Rejection 3 - The rejection of claim 4
under 35 U.S.C. § 103(a)
Appellant does not separately argue claim 4, which depends from
claim 1. Appeal Br. 6-11. Thus, for the reasons discussed above (see supra
Rejection 1 ), we sustain the rejection of claim 4.
Rejections 4 and 5 - The rejection of claims
25-27 under 35 U.S.C. § 103(a)
Appellant does not separately argue claims 25-27, which depend from
claim 21. Appeal Br. 12-18. Thus, for the reasons discussed above (see
supra Rejection 2, § B), we sustain the rejection of claims 25-27.
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Rejection 6-The rejection of claim 28
under 35 U.S.C. § 103(a)
Independent claim 28 recites, among other limitations, "a power
supply configured to power the vacuum pump, the RF generator, and the HV
pulse generator." Appeal Br. 30 (Claims App.). In the Rejection, the
Examiner stated that Chomenky '451, Chomenky '703, and Rosenberg fail
to disclose this limitation, but the Examiner found ( 1) that Kreindel
"discloses a common power supply powering both the generator (705) and
the vacuum pump (706) ([0018]; Fig. 1)" and (2) that Bhargav "disclose[s]
an apparatus for tissue treatment comprising a common power supply for
both radiofrequency and electroporative energy delivery modalities
([0037])." Final Act. 14--15. According to the Examiner, it would have
been obvious "to have a common power supply for the vacuum pump, RF
and HV generators in order to provide the benefit of reducing the number of
separate power supplies in the operating arena." Id. at 15.
Appellant argues that "Kreindel merely discloses a power source 705
and a vacuum source 706, each of which are included with control unit 704"
and does not disclose "that the power source 705 powers the vacuum source
706." Appeal Br. 22. The Examiner responds that "it naturally follows that
the power supply of the entire illustrated control unit (704) also powers the
vacuum pump (706) located within the control unit (704)." Ans. 18; see also
Kreindel, Fig. 1.
The paragraph in Kreindel relied on by the Examiner provides, in
relevant part:
A pump 706 is used to evacuate air from an interior chamber 106
in the applicator via a tube 118 extending from the pump 706
along the cable 702 to the interior chamber 106. The control unit
703 includes a power source 705. The power source 705 is
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connected to a pair of RF electrodes 201and202 in the applicator
701 via wires 115 and 116 that pass through the tube 118 in the
cable 702.
Kreindel i-f 18 (discussing Figs. 1, 2). This passage does not explicitly
describe the source of power for vacuum pump 706. Further, we do not
agree with the Examiner that power source 705 inherently (i.e., necessarily)
drives vacuum pump 706. Indeed, vacuum pump 706 could be driven by a
separate power source not disclosed in Kreindel. Because this finding
regarding Kreindel forms part of the basis for the conclusion of obviousness
(see Final Act. 14; Ans. 18), we do not sustain the Rejection of claim 28.
DECISION
We AFFIRM the decision to reject claims 1-5 and 21-27 under
35 U.S.C. § 103(a). We REVERSE the decision to reject claim 28 under
35 U.S.C. § 103(a).
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-IN-PART
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