Ex Parte Waldman et al

Patent Trial and Appeal Board

Dec 27, 2016

12912978 (P.T.A.B. Dec. 27, 2016)

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.
12/912,978 10/27/2010 Amir Waldman 1842MIZ-US 3031
7590 12/27/2016
David Klein
Dekel Patent Ltd.
Beit HaRof im
18 Menuha VeNahala Street, Room 27
Rehovot,
ISRAEL
EXAMINER
JENNESS, NATHAN JAY
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
12/27/2016 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 AMIR WALDMAN and GABI LAVI
Appeal 2015-005214
Application 12/912,978
Technology Center 3700
Before ANNETTE R. REIMERS, LISA M. GUIJT, and
PAUL J. KORNICKZY, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 17-28.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM and designate our affirmance as to claims 17 and 19—23
as containing a NEW GROUND OF REJECTION pursuant to our authority
under 37 C.F.R. § 41.50(b).
1 Appellants identify the real party in interest as Home Skinovations Ltd.
Appeal Br. 1.
2 Appeal is taken from the Final Office Action dated May 6, 2014 (“Final
Act.”).
Appeal 2015-005214
Application 12/912,978
CLAIMED SUBJECT MATTER
Claims 17 and 18 are independent. Claim 17, reproduced, is
illustrative of the subject matter on appeal.
17. A method for photothermolysis comprising:
providing photothermolysis apparatus that comprises a
cartridge mounted in a hand-held housing, said cartridge
comprising a light source connectable to a power supply external
to said cartridge, a reflector arranged with respect to said light
source to direct light emanating from said light source towards
skin via an opening formed in said cartridge to cause removal of
hair on said skin by photothermolysis, and a spectral filter for
filtering the light before the light exists said opening, wherein
said cartridge comprises an identification module that
communicates with control electronics disposed in said hand­
held housing;
using said identification module to permit operation of
said photothermolysis apparatus only if authorized identification
is established between said identification module and said
control electronics;
and further comprising selecting said reflector to reflect
and/or diffuse light emanating from said light source, depending
on a particular photothermolysis application.
REJECTIONS3
I. Claims 17 and 19-21 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over MacFarland (US 2005/0137655 Al; pub. June 23,
2005) and DeBenedictis (US 2006/0095096 Al; pub. May 4, 2006).
3 The Examiner has objected to the drawings “because it is difficult to see
the details of the apparatus.” Final Act. 2—3. This objection relates to
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Application 12/912,978
II. Claim 22 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over MacFarland, DeBenedictis, and Anderson (US
2005/0251118; pub. Nov. 10, 2005).4
III. Claim 23 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over MacFarland, DeBenedictis, Jay (US 2004/0092916 Al;
pub. May 13, 2004), and De Taboada (US 2010/0204762 Al; pub. Aug. 12,
2010).
IV. Claims 18 and 24—26 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over MacFarland, DeBenedictis, and Korenberg (US
2007/0239144A1; pub. Oct. 11, 2007).
V. Claim 27 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over MacFarland, DeBenedictis, Korenberg, and Anderson.5
VI. Claim 28 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over MacFarland, DeBenedictis, Korenberg, Jay, and
De Taboada.
petitionable, not appealable, subject matter. See 37 C.F.R § 1.181.
4 The Examiner’s rejection of claim 22 fails to identify the Anderson
reference by publication number, however, from a review of the record, we
understand the Examiner is relying on Anderson (US 2005/0251118; pub.
Nov. 10, 2005). See Final Act. 6—7; Notices of References Cited dated Dec.
28,2011.
5 Similar to claim 22 discussed supra, we understand the Examiner’s
rejection of claim 27 relies on Anderson (US 2005/0251118; pub. Nov. 10,
2005). See Final Act. 12—13; Notices of References Cited dated Dec. 28,
2011.
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Appeal 2015-005214
Application 12/912,978
ANALYSIS
Rejection I
Regarding independent claim 17, the Examiner finds, inter alia, that
MacFarland discloses an apparatus for photothermolysis, and that “it would
have been an obvious matter of design choice based upon the practitioner” to
“select[] [a] reflector to reflect and/or diffuse light emanating from said light
source, depending on a particular photothermolysis application,” as required
by claim 17. Final Act. 6 (citing McFarland 1 63). The Examiner reasons
that “McFarland discloses that the motivation behind modifying the
wavelength setting [(by changing the reflector)] is to vary the type of
treatment, size of lesion, degree of pigmentation, skin color, which is sought
to be treated.” Ans. 19 (citing McFarland 1 63). Moreover, the Examiner
determines that the definition of the claim term “diffusion” includes “filtered
light,” and that MacFarland discloses filtered light. Ans. 21 (citing
MacFarland 135).
Appellants argue that “MacFarland never teaches or suggests selecting
the reflector to reflect and/or diffuse light.” Appeal Br. 9. In support,
Appellants submit that “MacFarland never mentions diffusion of the light.”
Id.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See In re Am. Acad, of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Construing claims
broadly during prosecution is not unfair to the applicant . . . because the
applicant has the opportunity to amend the claims to obtain more precise
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Appeal 2015-005214
Application 12/912,978
claim coverage.” Id. The sole mention of the claim term “diffuse” in
Appellants’ Specification is that “[rjefiector 20 can he selected to reflect
and/or diffuse light emanating from light source 16, depending on the
application.” Spec. 3:24-26. An ordinary' meaning of the claim term
“diffuse,” in light of the Specification, is “to break up and distribute
(incident light) by reflection (as from a rough surface).” Webster’s Third
New Int’l Dictionary 630 (1993). An ordinary meaning of the term
“filter” is “of light, to pass through something that partially obstructs.” Id. at
850. Thus, we do not agree with the Examiner that a disclosure of filtering
light is the same as a disclosure of diffusing light.
Notwithstanding, Korea berg, which is titled “Methods of
Photothermolysis,” expressly discloses a method of photothermolysis,
wherein “reflector 72 may be arranged with respect to light source 71, which
reflects and/or diffuses light emanating from light source 71 towards skin
70,” and specifically teaches that “ft] he choice of whether reflector 72 is
reflective (that is, substantially non-diffusive) or diffusive may be based on
the particular application and treatment needs.).” Korenberg *[[ 55
(emphasis added). Therefore, we determine that the Examiner’s reasoning
based on design choice is supported by the record. In other words,
Korenberg provides Official Notice that designing the reflector to reflect
and/or diffuse light depending on a particular photothermolysis application
is considered to be common knowledge or well-known in the art.
Accordingly, we sustain the Examiner’s rejection of independent
claim 17, and because Appellants chose not to present separate arguments
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Application 12/912,978
for the patentability of claims 19—21, we also sustain the Examiner’s
rejection of claims 19-21. However, we designate our affirmance of the
Examiner’s rejection of claims 17 and 19—21 as a NEW GROUND OF
REJECTION to afford Appellants an opportunity to address the rejection as
articulated in this Decision.
Rejections II and III
Appellants chose not to present separate arguments for the
patentability of claims 22 and 23, which depend from independent claim 17.
Thus, for the reasons stated supra, we sustain the Examiner’s rejection of
claims 22 and 23, and similarly designate our affirmance as a NEW
GROUND OF REJECTION to afford Appellants an opportunity to address
the rejection as articulated in this Decision.
Rejections IV, V, and VI
Appellants argue that independent claim 18 recites a method and that
the Examiner’s rejection is “an attempt to make [an] apparatus purportedly
obvious.” Appeal Br. 10. Appellants conclude that “[i]t would be
impermissible hindsight to read such a method claimed in claim 18 in the
cited references.” Id. Appellants’ argument, however, does not apprise us
of any errors in the Examiner’s findings or reasoning with respect to the
rejection as articulated by the Examiner, nor do Appellants direct us to any
claimed method steps that are not disclosed by, or rendered obvious in view
of, the relied upon prior art. Further, Appellants do not identify any
knowledge that the Examiner relied upon that was gleaned only from
Appellants’ disclosure and that was not otherwise within the level of
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Application 12/912,978
ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d
1392 (CCPA1971).
Accordingly, we sustain the Examiner’s rejection of independent
claim 18.6 Appellants chose not to present separate arguments for the
patentability of claims 24—28 which depend from claim 18, and therefore,
we also sustain the Examiner’s rejection of claims 24—28.
DECISION
The Examiner’s rejections of claims 17 and 19—23 are AFFIRMED
and designated a NEW GROUND OF REJECTION.
The Examiner’s rejections of claims 18 and 24—28 are AFFIRMED.
This decision contains a new ground of rejection pursuant to
37 C.F.R.§ 41.50(b).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
6 Independent claim 18 does not require the reflector to “reflect and/or
diffuse light,” and therefore, the reasons for designating the affirmance of
the Examiner’s rejection of independent claim 17 as a new ground of
rejection are inapplicable to independent claim 18 and claims 24—28
depending therefrom.
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Appeal 2015-005214
Application 12/912,978
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner in which event the prosecution will be remanded
to the Examiner. The new ground of rejection is binding upon
the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection designated in
the decision. Should the examiner reject the claims, appellant
may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
The request for rehearing must address any new ground of
rejection and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of rejection
and also state all other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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; 37 C.F.R, $ 41.50(b)
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