Ex Parte Sinofsky et al

Patent Trial and Appeal Board

Feb 6, 2017

11397123 (P.T.A.B. Feb. 6, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/397,123 04/03/2006 Edward Sinofsky 10124/05601 5713
30636 7590 02/06/2017
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
CRANDALL, LYNSEY P
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
02/06/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EDWARD SINOFSKY and
JON T. McINTYRE
__________________

Appeal 2015-004682
Application 11/397,123
Technology Center 3700
____________________

Before JAMES P. CALVE, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1–8. Appeal Br. 1. Claims 9–27 have been withdrawn.1 Id. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 The Examiner denied entry of Appellants’ Amendment Under Rule 116,
which was filed after the Final Action that has been appealed, and which
proposed to cancel claims 9–27 and add new claim 28. Adv. Act. (mailed
Aug. 8, 2014).
Appeal 2015-004682
Application 11/397,123

2
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below.
1. A probe for coupling to a tissue treatment device, the
probe for detecting changes in tissue properties comprising:
an illumination element for delivering light to a target
area;
a sensing element for receiving light after reflection from
a target portion of tissue; and
a controller for detecting changes in a property of the
light received by the sensing element and determining a change
in the target tissue below a surface of the target tissue, the
controller controlling energy delivery from the tissue treatment
device to the target tissue based on a depth position of a treated
portion within the target tissue determined by the controller.

REJECTION
Claims 1–8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sinofsky (US 2004/0059397 A1, pub. Mar. 25, 2004) and
Budnik (US 5,868,731, iss. Feb. 9, 1999).
ANALYSIS
The Examiner found that Sinofsky teaches the tissue treatment system
of claim 1 including illuminator 56, a sensing element (reflectance fiber 32,
reflectance monitor 64), and controller 54 that detects changes in a property
of light received by the sensing element and determines changes in the target
tissue below a surface of the target tissue, but does not control delivery of
energy to target tissue based on a depth position of a treated portion. Final
Act. 3–4; Ans. 3; but see Ans. 6 (disavowing reliance on Sinofsky to teach
determining a change in target tissue below a surface). The Examiner found
that Budnik uses light reflected from tissue to determine penetration depth of
laser treatment and control the laser operation. Final Act. 4.
Appeal 2015-004682
Application 11/397,123

3
The Examiner determined that it would have been obvious to modify
Sinofsky’s controller, as taught by Budnik, to determine depth of treatment
in target tissue, provide feedback to control laser operation, ablate tissue to a
desired depth, and prevent ablation at undesired depths. Id.; Ans. 3, 7.
Appellants argue that Sinofsky does not teach or suggest a controller
for “determining a change in the target tissue below a surface of the target
tissue,” as recited in claim 1, and Budnik does not cure these deficiencies.
Appeal Br. 4; Reply Br. 7, 9. Appellants also argue that the Examiner has
admitted that Sinofsky does not teach this limitation by asserting that “the
examiner never took the position that Sinofsky taught determining a change
in the target tissue below a surface,” and “the examiner is not responding to
these arguments [that Sinofsky does not teach this feature], as they do not
pertain to the rejection.” Reply Br. 7–8 (quoting Ans. 6). Appellants further
argue that Sinofsky does not teach this feature because Sinofsky detects the
changes in light reflected from a surface of tissue to be treated to determine
if the laser light treatment device is positioned properly at the surface of the
tissue to be treated and does not determine a change in target tissue below
the surface of the target tissue. Reply Br. 6–7; Appeal Br. 3–5. We agree.
The Examiner has not established by a preponderance of evidence that
Sinofsky, either alone or in combination with Budnik, teaches or suggests a
controller for “determining a change in the target tissue below a surface of
the target tissue,” as recited in claim 1. The Examiner admits that Sinofsky
does not teach this feature. Ans. 6. We agree that Sinofsky does not teach
this feature for the reasons set forth by Appellants in their briefs, as well as
the Examiner’s representation that Sinofsky is not relied upon to teach this
feature.
Appeal 2015-004682
Application 11/397,123

4
In this regard, Sinofsky teaches a method of photothermal treatment
that ensures proper positioning of an optical assembly at a treatment site in
contact with tissue to be treated. Sinofsky ¶¶ 6–9, 70, 85, 89, Figs. 4A–4C.
To achieve this objective, light is emitted in frequencies that are absorbed by
blood, body fluids, and tissue (e.g., green light at 500–600 nm wavelengths).
Id. ¶ 26. When the device is positioned properly in contact with the surface
of the tissue to be treated (so there is no blood, body fluid, or tissue between
the device and tissue), this light is reflected back from the tissue surface and
detected by reflectance fiber 32 so reflectance monitor 64 signals controller
54, which determines placement accuracy based on the detected light. Id.
¶¶ 7–8, 13, 27, 70, 79, 82–87, Figs. 1–5. If the device is not positioned at
the treatment site, the light is absorbed by intervening blood, body fluids,
and tissue, rather than being detected by reflectance fiber 32. Id. ¶¶ 26–27.
The Examiner’s reliance on Budnik to teach a “controller controlling
energy delivery from the tissue treatment device to the target tissue based on
a depth position of a treated portion within the target tissue determined by
the controller” (Final Act. 4; Ans. 3) does not explain how Budnik teaches or
suggests “determining a change in the target tissue below a surface of the
target tissue,” as recited in claim 1. Thus, we do not sustain the rejection of
claim 1 or its dependent claims 2–8, because the Examiner’s findings as to
Sinofsky’s teachings of features of these dependent claims does not resolve
this issue, either. See Final Act. 5; Ans. 4.
DECISION
We reverse the rejection of claims 1–8.

REVERSED