Ex Parte Pearl et al

Patent Trial and Appeal Board

Jun 26, 2013

11563675 (P.T.A.B. Jun. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HENRY PEARL and DAVID MICHAEL SINOFSKY
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Appeal 2011-009327
Application 11/563,675
Technology Center 3700
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Before TONI R. SCHEINER, DEMETRA J. MILLS, and
LORA M. GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal1 under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-3. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 The Real Party in Interest is Lexington LaserComb IPAG (App. Br. 1).
Appeal 2011-009327
Application 11/563,675

2
STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as follows
(emphasis added):
1. A handheld hair treatment device, comprising:
a housing;
a plurality of light sources secured in or to the housing, each of the
light sources generating a discrete light beam; and
a plurality of non-light emitting teeth extending from the housing,
each of the non-light emitting teeth associated with one of the discrete light
beams from the light sources, each of the non-light emitting teeth and its
associated discrete light beam are substantially parallel to one another and
offset from one another such that as the handheld hair treatment device is
moved over the user’s scalp, the non-light emitting teeth part the user’s hair
such that the associated discrete light beam which follows it is substantially
unobstructed from coming in contact with the scalp of the user’s hair;
whereby the users scalp is exposed during application of light to the
scalp.

The following grounds of rejection are before us for review:
I. Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Kwan2 and Lo3 (Ans. 3).
II. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being rendered
obvious by the combination of Kwan and Lo as further combined
with Lundahl4 (Ans. 3)

2 Kwan, US 6,053,180, Apr. 25, 2000.
3 Lo, US 2002/0077679 A1, Jun. 20, 2002.
4 Lundahl et al., US 6,709,446 B2, Mar. 23, 2004.
Appeal 2011-009327
Application 11/563,675

3
ANALYSIS
We agree with the Examiner’s finding and conclusions as to the
obviousness rejections, and thus adopt them as our own (see Ans. 3-5).
Appellants argue that as Kwan discloses a single light source that is
disposed within a housing, Kwan does not teach discrete light beams, and
the light is obstructed by the housing itself (App. Br. 4). Appellants argue
further that Kwan teaches away from the claimed invention (id.). According
to Appellant, Kwan’s disclosure “of a ‘penetrating effect’ of the UV light
concedes that the hair obstructs the UV light” (id.). Appellants also argue
that the Examiner states that the UV light would come through the openings
8 without substantial obstruction, which is not the same as “‘substantially
unobstructed,’” and in fact serves as a concession “that Kwan’s UV light is
obstructed.” (id.).
Appellants assert that Lo’s teaching of a pair of far IR lights fails to
remedy the above deficiencies of Kwan (id.). And in fact, Appellants assert,
“Lo’s light sources are substantially obstructed by a plurality of ‘comb
fingers’ as clearly shown in FIG. 1” (id. at 5).
We have carefully considered Appellants’ arguments, but do not find
them convincing.
During prosecution before the Office, claims are to be given their
broadest reasonable interpretation consistent with the Specification as it
would be interpreted by one of ordinary skill in the art. In re American
Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“An essential purpose of patent examination is to fashion claims that are
precise, clear, correct, and unambiguous. Only in this way can uncertainties
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Application 11/563,675

4
of claim scope be removed, as much as possible, during the administrative
process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). Moreover, it is
during prosecution that applicants have “the opportunity to amend the claims
to obtain more precise claim coverage.” American Academy, 367 F.3d at
1364.
Here, claim 1 does not require that the light source be “substantially
unobstructed” as argues by Appellants, but that “the non-light emitting teeth
part the user’s hair such that the associated discrete light beam which
follows it is substantially unobstructed from coming in contact with the scalp
of the user’s hair.” Thus, giving the claim language its broadest
interpretation, it is the parting of the hair by the teeth that allows the light to
reach the scalp substantially unobstructed. Stated differently, the claim does
not require, as argued by Appellants, that the light source itself be
“substantially unobstructed.” As found by the Examiner, the devices of both
Kwan and Lo have teeth that part the hair (see Ans. 3-4; see also Kwan,
Figs. 1a, 1b, and 1c; Lo, Figs. 1-3). Appellants have not provided any
reason as to why the teeth of the devices of Kwan and Lo would not function
to part the hair when used at the scalp “such that the associated discrete light
beam which follows it is substantially unobstructed from coming in contact
with the scalp of the user’s hair.” We thus affirm the rejection of claims 1
and 2 over the combination of Kwan and Lo.
As to the rejection of claim 3 over the combination of Kwan and Lo as
further combined with Lundahl, Appellants only argue that Lundahl fails to
remedy the above deficiencies of the combination of Kwan and Lo (App. Br.
7). That argument is not convincing for the reasons set forth above.
Appeal 2011-009327
Application 11/563,675

5
SUMMARY
The rejections on appeal are affirmed.

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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