Ex Parte Wang

Patent Trial and Appeal Board

Jun 14, 2013

11697770 (P.T.A.B. Jun. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SEAN XIAOLU WANG
1

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Appeal 2011-011320
Application 11/697,770
Technology Center 3700
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Before TONI R. SCHEINER, MELANIE L. McCOLLUM, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
phototherapy apparatus and a skin tissue treatment method. The Examiner
has rejected the claims as obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.
STATEMENT OF THE CASE
Claims 1, 4, 6, 7, 10, and 12 are pending and on appeal (App. Br. 2 &
4). Claim 1 is representative and reads as follows:

1
Appellant identifies BWT Property as a real party in interest (App. Br. 1).
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Application 11/697,770

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1. A phototherapy apparatus for treatment of skin tissue of human or
animal targets, the phototherapy apparatus comprising:
at least one light source to produce light radiation in one or more
wavelengths, wherein the light radiation is non-invasively applied or
directed to the skin tissue to be absorbed thereof for sterilization, bio-
stimulation, and/or photo-rejuvenation; and
a high frequency ultrasonic imaging module, operatively coupled to
the light source, to provide a high-resolution ultrasonic image revealing
inner structural information of the skin tissue, wherein the inner structural
information of the skin tissue is utilized to control and optimize a plurality of
parameters of the light source and to evaluate the effectiveness of the
phototherapy procedure;
wherein the ultrasonic frequency of the high frequency ultrasonic
imaging module ranges from about 20 MHz to about 100 MHz.
Claims 1, 4, 6, 7, 10, and 12 stand rejected under 35 U.S.C. § 103(a)
as obvious over Chen (US 6,210,425 B1, Apr. 3, 2001) in view of Snow et
al. (US 6,299,622 B1, Oct. 9, 2001) and Babaev (US 6,761,729 B2, Jul. 13,
2004) (Ans. 3).
The Examiner relies on Chen for disclosing
a phototherapy apparatus and methods of use for non-invasive
treatment of body tissue of a human patient, the apparatus
comprising: a plurality of light sources adapted to produce
treatment radiation in one or more wavelengths; and an
ultrasonic imaging unit coupled to the light source to provide
ultrasonic image of the inner structure information of the body
tissue.
(Id. at 3-4.) The Examiner acknowledges that Chen “does not teach the use
of ultrasonic imaging device modulating in the range of between 20 MHz to
100 MHz as claimed” (id. at 4).
The Examiner relies on Babaev for disclosing “an alternative
treatment device and method of use, the device comprising treatment light
and ultrasonic sources” and for teaching “that the use of ultrasonic waves for
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Application 11/697,770

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imaging tissue structure is known in the art” (id.). The Examiner notes that
the “ultrasonic imager of Babaev operates in the frequency range between 1-
10 MHz” (id. at 8-9).
The Examiner relies on Snow for disclosing “a treatment apparatus
and method of use, comprising an ultrasonic imaging device 220 that
modulates in the ranges of 20 MHz to 50 MHz” (id. at 4). The Examiner
concludes that it would have been obvious “to modify Chen in view of Snow
et al. and Babaev to use ultrasonic imaging device modulating in the range
of 20 MHz to 100 MHz as claimed” because an “[u]ltrasonic imaging device
that modulates in the higher frequency range would enhance the quality of
the image” (id.).
ISSUE
Has the Examiner set forth a prima facie case that it would have been
obvious to incorporate Snow’s ultrasonic imaging device, which operates in
a frequency range between 20 MHz to 50 MHz, into the system of Chen
and/or Babaev?
PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citation omitted).
ANALYSIS
As noted by Appellant (App. Br. 5), Chen discloses an ultrasonic
imaging device that is placed outside the patient’s body for imaging an
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internal treatment site (Chen, col. 2, l. 66, to col. 3, l. 26, & col. 4, ll. 49-67).
However, as acknowledged by the Examiner, Chen “does not teach the use
of ultrasonic imaging device modulating in the range of between 20 MHz to
100 MHz as claimed” (Ans. 4). In addition, the Examiner does not rely on
Babaev, which discloses an imaging device that emits ultrasonic waves
having a frequency of 1-10 MHz (Babaev, col. 1, ll. 22-35), to overcome this
deficiency (Ans. 4 & 8-9).
Instead, the Examiner relies on Snow for disclosing “a treatment
apparatus and method of use, comprising an ultrasonic imaging device 220
that modulates in the ranges of 20 MHz to 50 MHz” (id. at 4). However, as
noted by Appellant, unlike Chen’s device, “the Snow imaging device is
inserted into a body lumen for imaging the material to be cut” (App. Br. 5,
citing, inter alia, Snow, Abstract & col. 4, ll. 9-19). Thus, we agree with
Appellant that the Examiner has not adequately explained why one of
ordinary skill in the art would have incorporated Snow’s ultrasonic imaging
device, which operates in a frequency range between 20 MHz to 50 MHz
(Snow, col. 8, ll. 21-24), into Chen’s system.
In this regard, we note the Examiner’s statement that Snow “teaches
that the ultrasonic imager operating between 20 – 100 MHz provides a high
resolution image” (Ans. 9). Although we agree that Snow teaches an
ultrasonic imager operating between 20 and 100 MHz (Snow, col. 8, ll. 21-
25), the Examiner does not clearly identify and we do not find a teaching
that this imager would provide a “high resolution image,” as stated by the
Examiner. Moreover, the Examiner has not adequately addressed
Appellant’s argument that, based on the differences between Chen and
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Snow, it would not have been obvious to use the frequencies taught by Snow
in Chen’s system (App. Br. 5-6).
We also note the Examiner’s reliance on Zhang et al. (US 7,615,008
B2, Nov. 10, 2009) to show that “it is known in the art that ultrasonic imager
operating at 10 MHz provides a high resolution image of the body tissue”
(Ans. 9). In fact, we note that Zhang discloses that frequencies of, for
example, “10-20 MHz . . . can yield very high resolution images” (Zhang,
col. 5, ll. 57-58 (emphasis added)). However, the Examiner does not rely on
Zhang to teach a frequency within the claimed range, nor is Zhang even
included in the basis of rejection. Thus, we have not considered whether
Zhang suggests the claimed ultrasonic frequency.
CONCLUSION
The Examiner has not set forth a prima facie case that it would have
been obvious to incorporate Snow’s ultrasonic imaging device, which
operates in a frequency range between 20 MHz to 50 MHz, into the system
of Chen and/or Babaev. We are therefore compelled to reverse the
obviousness rejection.

REVERSED

cdc