Lumenis Ltd.

Patent Trials and Appeals Board

Apr 2, 2020

14242449 - (D) (P.T.A.B. Apr. 2, 2020)

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.
14/242,449 04/01/2014 Yoni IGER 35678-930001 7078
122004 7590 04/02/2020
ISUS Intellectual Property PLLC
A. Jason Mirabito
1300 I Street, NW
Suite 400
Washington, DC 20005
EXAMINER
STEINBERG, AMANDA L
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
admin@isusip.com
jason@isusip.com
officeus@isusip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte YONI IGER
__________

Appeal 2019-004295
Application 14/242,449
Technology Center 3700
__________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–7, 10–19, 21, 22, 27–34, 37, and 38. Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Lumenis, Ltd.
Appeal Br. 3.
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STATEMENT OF THE CASE
Appellant’s invention relates to “a medical laser apparatus”
particularly, for the “cosmetic treatment of skin.” Spec. ¶ 1. Claims 1, 12,
and 37 are the independent claims on appeal. Claim 1, reproduced below
with disputed limitations italicized for emphasis, is exemplary of the subject
matter on appeal.
1. A medical apparatus for treatment of skin tissue for
collagen synthesis and skin regeneration comprising: a first non-
ablative laser source that is configured by a controller to apply
a first laser light beam at a first wavelength to the skin tissue,
and a second, different laser source that is configured to apply a
second laser light beam at a second wavelength to the skin tissue,
the first laser light beam having a first, long pulse duration[2]
wherein the apparatus further comprises a treatment head and
wherein the first laser light beam is configured to be supplied to
the treatment head, the treatment head comprising a scanning
device, the scanning device being configured to direct the first
laser light beam to a plurality of locations within a first treatment
area having a first diameter to create a plurality of fractional
coagulated areas within the first treatment area which extend
into the skin tissue, the second laser light beam being configured
to be pulsed with a second, short pulse duration[3] directed to a

2 Notably, the claim term “long pulse duration” is a term of degree. Cf.
Spec. ¶ 36 (disclosing, with reference to the first laser source, that “a
relatively long pulse length” is a pulse length “of up to 0.5 s”). We decline
to exercise the discretion afforded to us in 37 C.F.R. § 41.50(b) to impose a
new ground of rejection under 35 U.S.C. § 112(b) directed to claims 1–7,
10–19, 21, 22, 27–34, 37, and 38; rather, we leave to the Examiner the
determination of whether such a new ground is appropriate. Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See MPEP 1213.02.
3 Notably, the claim term “short pulse duration” is a term of degree. Cf.
Spec. ¶ 36 (disclosing, with reference to the second laser source, that “a very
short, high-power pulse” may be “in the range [of] 1 to 100 ns”). We
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second treatment area, the second treatment area having a
second diameter overlapping the plurality of the fractional
coagulated areas in the first treatment area, the second treatment
area being larger than the plurality of the coagulated areas
formed in the first treatment area, the second treatment4 being
configured to cause one or more of photomechanical or
photoacoustic effects in the plurality of fractional coagulated
areas of the first treatment area, the controller being configured
to cause the apparatus to apply the first laser light beam and
subsequently the second laser light beam;
wherein the first wavelength is 1565 nm and the second
wavelength is 1064 nm.

THE REJECTIONS

I. Claims 1–7, 10–19, 21, 22, 27–34, 37, and 38 stand rejected under
35 U.S.C. § 103 as being unpatentable over Tankovich (US 2011/0313408

decline to exercise the discretion afforded to us in 37 C.F.R. § 41.50(b) to
impose a new ground of rejection under 35 U.S.C. § 112(b) directed to
claims 1–7, 10–19, 21, 22, 27–34, 37, and 38; rather, we leave to the
Examiner the determination of whether such a new ground is appropriate.
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See MPEP 1213.02.
4 The claim term “the second treatment” lacks antecedent basis. We decline
to exercise the discretion afforded to us in 37 C.F.R. § 41.50(b) to impose a
new ground of rejection under 35 U.S.C. § 112(b) directed to claims 1–7, 10,
11, 27–30, 32, 37, and 38; rather, we leave to the Examiner the
determination of whether such a new ground is appropriate. Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See MPEP 1213.02.
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A1; published Dec. 22, 2011) and Stumpp (US 2008/0255639 A1; published
Oct. 16, 2008), as evidenced Jansen.5
II. Claims 30 and 34 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Tankovich, Stumpp, and Altshuler (US 2008/0172047 A1;
published July 17, 2008), as evidenced by Jansen.

ANALYSIS
Interpretation of the claims
Independent claims 1 and 37 require, in relevant part, a medical
apparatus for treatment of skin tissue, comprising (i) a first laser source
configured to apply a first laser light beam to the skin tissue; and (ii) a
second laser source configured to apply a second laser light beam to the skin
tissue. Claims 1 and 37 also require, in relevant part, a scanning device
“configured to direct the first laser light beam to a plurality of locations
within a first treatment area having a first diameter to create a plurality of
fractional coagulated areas within the first treatment area which extend into
the skin tissue” and also that “the second laser light beam being configured
to be . . . directed to a second treatment area.” Thus, there are three “areas”
recited in claims 1 and 37: (i) the first treatment area with at least a
diameter; (ii) the second treatment area with at least a diameter; and (iii) a
plurality of fractional coagulated areas which extend into the skin within the
first treatment area. Claims 1 and 37 further require, in relevant part, that (i)
“the second treatment area ha[s] a second diameter overlapping the

5 Jansen et al., Effect of Pulse Duration on Bubble Formation and Laser-
Induced Pressure Waves During Holmium Laser Ablation, LASER IN
SURGERY AND MEDICINE 18:278–293 (1996).
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plurality of the fractional coagulated areas in the first treatment area”; and
(ii) “the second treatment area being larger than the plurality of the
coagulated areas formed in the first treatment area” (emphasis added).
Claims 1 and 37 do not expressly recite any boundaries (i.e.,
diameters) for the first and second treatment areas, other than to require that
the first and second laser light beams are directed to the first and second
treatment areas, respectively.
We look to the Specification to determine whether boundaries, and
specifically, diameters (i.e., transverse measurements of something, widths,
or thicknesses) of the first and second treatment areas can be ascertained.
Regarding the first treatment area, the Specification discloses that “beam 23
is directed at the skin 20, where a local fractional volume of the skin is
heated to coagulative level,” such that “[t]he treated areas have a width
which depends on the width of the first beam 23” and wherein “the regions
of skin 20 between the areas 24 are substantially unharmed and unaffected.”
Spec. ¶ 38. The Specification also discloses that “first laser light beam 23
may be directed to form an array of areas 24 in any suitable manner as
required, depending on the area and condition to be treated,” wherein
“[s]uitable patterns are illustrated in [Figure] 3, including hexagonal,
annular, circular, square, rectangular and linear arrangements of areas 24.”
Id.; see also Spec. ¶¶ 29, 30, Fig. 3 (depicting a plurality of alternative beam
locations during a first irradiation step).
The Specification further discloses that “a second laser light beam is
generated from the second laser source 12 and directed to the treated area of
skin 20” is shown in Figure 4, reproduced below, wherein “second laser
light beam 25 has a much larger diameter than the first laser light beam 23”
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and “as such will be able to cover a portion of the array of areas 24
illustrated in Fig. 3, thus irradiating a plurality of areas 24 simultaneously.”
Spec. ¶ 39.

Figure 4 depicts the subsequent irradiation step of directing second light
beam 25 to a second treatment area.
We decline to read into the claims a limitation that the first treatment
area has a diameter that is defined by a transverse measurement of the
boundaries of pattern formed by scanning the first laser light beam, because
the claims require the first laser light beam to create a plurality of locations
within a first treatment area having a first diameter, not to define the first
treatment area on the skin tissue. Similarly, we decline to read into the
claims a limitation that the second treatment area has a diameter that is
defined by the width of the second laser light beam, because the claims
require the second light beam to be directed to a second treatment area, not
to define the second treatment area on the skin tissue. Cf. Spec. ¶ 15
(disclosing directing the first and second laser light beams to “irradiation
area[s]”); id. ¶ 37 (disclosing directing the first laser light beam to a plurality
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of locations over “a desired area for treatment”). In other words, as written,
the claims do not allow for a construction that the first and second treatment
areas are identifiable only after irradiation by the first and second laser light
beams and by the beams (i.e., beam pattern widths, beam widths
themselves).
Independent claim 12 recites, in relevant part, a method of directing
laser light to a skin tissue surface for skin tissue treatment, comprising the
steps of (i) generating and directing a first laser light beam to a plurality of
first irradiation areas on the skin tissue to create a plurality of fractional
coagulated areas in a first treatment area having a first diameter of the skin
tissue; and (ii) subsequently generating and directing a second laser light
beam to a second treatment area on the skin tissue having a second diameter
overlapping the first diameter and being larger than the plurality of
coagulated areas formed in the first treatment areas. Similar to claims 1 and
37 supra, claim 12 does not specify that the fractional coagulated areas
define the first treatment area, or more particularly, that a diameter of the
pattern of the fractional coagulated areas defines the first treatment area; nor
does claim 12 specify that second treatment area is defined by the width of
the second laser light beam.
None of dependent claims 2–7, 10, 11, 13–19, 21, 22, 27–34, and 38
recite boundaries for the first and second treatment areas.
In sum, we interpret the first and second treatment areas to mean
predetermined areas on the skin that are desirable for treatment. Notably,
construing claims broadly during prosecution is not unfair to the applicant,
because the applicant has the opportunity to amend the claims to obtain
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more precise claim coverage. In re Am. Acad. of Sci. Tech Center, 367 F.3d
1359, 1364 (Fed. Cir. 2012).

Rejection I
Independent claim 1 and dependent claims 2, 3, 6, 7, 10, 11, 27, 28, and 30
Appellant argues claims 1–3, 6, 7, 10, 11, 27, 28, and 30 as a group.
Appeal Br. 8–11, 13. We select independent claim 1 as representative, and
claims 2, 3, 6, 7, 10, 11, 27, 28, and 30 standing or falling with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).
Regarding independent claim 1, the Examiner finds, inter alia, that
Tankovich discloses a medical apparatus for treatment of skin tissue for
collagen synthesis and skin regeneration comprising first and second laser
sources configured to apply first and second laser light beams to the skin, the
first laser light beam being directed to create a coagulated area in a first
treatment area having a first diameter and the second laser light beam being
directed to a second treatment area having a diameter that overlaps the
coagulated area in the first treatment area, as claimed. Final Act. 3–4 (citing
Tankovich ¶¶ 27, 68, Figs. 3, 5C). The Examiner also finds that
Tankovich’s second laser light beam is configured to cause one or more of
photomechanical or photoacoustic effects in the coagulated area of the first
treatment area, as claimed. Id. (citing Tankovich ¶¶ 68–72).
The Examiner determines that Tankovich does not teach a scanning
device for directing the first laser light beam to a plurality of locations
within the first treatment area to create a plurality of fractional coagulated
areas within the first treatment area, and the Examiner relies on Stumpp for
disclosing directing a laser light beam to a first treatment area to create a
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plurality of fractional coagulated areas within the first treatment area, as
claimed. Final Act. 4–5 (citing Stumpp ¶ 40). The Examiner reasons that it
would have been obvious to modify Tankovich’s “dual laser device” to
include a scanning head that directs the first laser light beam to a plurality of
locations within the first treatment area to create a plurality of fractional
coagulated areas within the first treatment area, as taught in Stumpp, for
example, “‘to penetrate as deeply as needed . . . without causing unwanted
side effects.’” Id. at 5 (citing Stumpp ¶¶ 3, 13, 15, 16).
The Examiner further finds that although Tankovich discloses that the
second laser light beam has a wavelength of 1064 nm, Tankovich fails to
disclose that the first laser light beam may have a wavelength of 1565 nm, as
claimed. Final Act. 4 (see, e.g., Tankovich, Table II). The Examiner relies
on Stumpp for teaching that laser light beams having wavelengths between
about 1500 and about 1620 nm (i.e., including 1565 nm, as claimed) “can be
used depending on ‘the desired size and depth of the coagulation zones’” for
treating skin tissue. Id. at 5 (citing, e.g., Stumpp ¶ 29). The Examiner
reasons that selecting a wavelength of 1565 nm for a first laser light beam is
“routine optimization,” because the choice of wavelengths for the first and
second laser light beams “‘can be optimized based on factors, such as, for
example, the desired diameter and depth of the coagulated zone, the desired
diameter and depth of the treatment zone, the type(s) of tissue being treated,
the type(s) of condition(s) being treated, the light scattering properties of the
wavelength(s), etc.’” Id. (quoting Stumpp ¶ 30) (citing In re Aller, 220 F. 2d
454, 456 (CCPA 1955)). In other words, the Examiner finds that Stumpp
discloses the general conditions of the claim and also that wavelength is
variable and that it is recognized in the prior art as result-effective, and
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specifically, a variable that effects the diameter and depth of the coagulated
and treatment zones and that is selected based on the tissue and the
conditions of the tissue being treated. Id.
First, Appellant argues that Tankovich’s method is “the exact
opposite” of the subject matter claimed, because, in Tankovich, a thermal
cavity is created (or a single coagulated area) to pre-heat the tissue followed
by the creation of droplets (or a plurality of fractional coagulated areas) for a
cumulative thermal effect—as compared to the claims, which require the
first laser light beam to create a plurality of fractional coagulated areas
followed by the second laser beam. Appeal Br. 9; see also id. 10 (“[t]here is
no suggestion in Tankovich to use the sequence of the events recited in the
claims”); Reply Br. 2–3.
The Examiner responds correctly that Tankovich alone is not relied on
for teaching Appellant’s claimed sequence of irradiation, but rather,
Tankovich as modified by Stumpp, results in the claimed sequence of
irradiation. Ans. 7. Indeed, Tankovich discloses: (i) first, heating a volume
of skin to create tissue damage, namely, a single thermal cavity (as
compared to mechanically damaging tissue by ablation), for example, using
a first non-ablative laser light beam characterized by a long pulse duration,
as claimed (i.e., longer than 1 microsecond as compared to a shorter pulse
duration intended to cause mechanical effects, such as ablation or tissue
disruption), wherein the wavelength for creating the thermal cavity “should
be chosen for low skin and blood absorption” (Tankovich ¶¶ 9, 11, 13); and
(ii) second, creating a plurality of tiny, precise, mechanically damaged tissue
areas (by ablation or disruption), or energy droplets, within the thermal
cavity, by applying a second laser light beam characterized by a short pulse
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duration in comparison to the first laser light beam which produces skin
damage through photodisruption and photoablation with minimal or no
thermal damage and by a wavelength of, for example, 1560 nm, where
absorption in the skin and blood is relatively high (id. ¶¶ 9, 11, 14, 15).
Tankovich discloses that
[s]uch specific distribution of energy is essential to a number of
medical and aesthetic applications of lasers and other sources of
radiation. Radiation that forms the thermal cavity does not
damage the tissue, but increase overall energy deposition close
to the damage threshold. In this case energy droplets provide
more accurate energy delivery which is just needed for specific
therapeutic effects due to supra threshold effects and spatial
modulation of those effects across thermal cavity area.
Id. ¶ 44.
Stumpp discloses “using a first fractional optical energy treatment to
coagulate a plurality of zones” in the tissue, and next, “directing a
subsequent fractional optical energy treatment through the coagulated zones
to the underlying portion in order to produce an effective treatment in the
underlying portion of a region of tissue.” Stumpp, Abstract. Stumpp
explains that
[b]y using the method of applying a first optical energy treatment
to create coagulated zones which act as beam paths, subsequent
optical energy treatments that either cannot [] reach the
underlying portion or that can damage an untreated overlying
layer can be applied through the beam paths directly to the
underlying portion, allowing the underlying portion to be treated
using an optimal subsequent optical energy treatment. . . . [T]he
aim of the first optical energy treatment is to produce a zone of
coagulated tissue with reduced light scattering . . . .”
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Stumpp ¶¶ 18, 21. Stumpp also discloses that the first treatment may be
ablative or non-ablative, in addition to creating a plurality of coagulated
zones in the tissue. Id. ¶ 19.
Thus, according to the Examiner’s proposed modification, rather than
creating Tankovich’s single thermal cavity in a first step, a first non-ablative
laser source is used to create a plurality of fractional coagulated areas, as
taught in Stumpp, followed by Tankovich’s second step of creating energy
droplets, which is consistent also with Stumpp’s second step of applying a
second fractional optical energy treatment. In other words, the Examiner
does not modify Tankovich’s second irradiation step to be a single, thermal
cavity, but rather, includes Tankovich’s second irradiation step of applying
energy droplets, consistent with Stumpp’s teaching of two, or subsequent,
fractional optical energy treatments through the coagulated zones. In sum,
Appellant’s argument does not address the Examiner’s rejection.
In the Reply Brief, Appellant addresses the Examiner’s rejection as
articulated in the Final Office Action supra, acknowledging that the
Examiner is “substituting” Stumpp’s fractional laser treatment for
Tankovich’s first treatment, such that Tankovich’s first step would result in
an area of fractional coagulated zones, rather than a thermal cavity, and next,
forming Tankovich’s fractionated plurality of energy droplets. Reply Br. 3.
Appellant argues “[t]his is not what is recited in Appellant’s claims.” Reply
Br. 3. However, such a conclusory statement does not apprise us of why
claim 1 fails to read on the Examiner’s proposed modification of Tankovich,
in view of Stumpp.
Second, Appellant argues that “there is no suggestion in Tankovich or
the other cited references to implement the specific wavelengths now recited
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in claim 1.” Appeal Br. 10; see also id. at 11 (arguing that the Examiner’s
reliance on Tankovich’s Hair Removal and Skin Rejuvenation examples for
disclosing specific wavelengths are improper). However, Appellant’s
argument does not address the Examiner’s finding that the selection of
wavelengths for subsequent laser light beam treatments is a result-effective
variable, as set forth supra.
Indeed, Tankovich and Stumpp involve the thermal and/or mechanical
treatment of skin tissue using a laser, recognizing that wavelength selection
is a critical parameter. See Tankovich ¶ 6 (discussing the selection of
wavelengths based on tissue to achieve “selective thermolysis”); Stumpp,
Abstract (“[t]he treatment parameters used to deliver the first and subsequent
treatments, including wavelength, can be optimized in order to provide a
first optical treatment that effectively coagulates the overlying portion and a
subsequent one or more optical treatments that effectively treat the
underlying portion”), ¶ 30 (as relied on by the Examiner supra). Appellant’s
argument does not apprise us of error in the Examiner’s finding that
wavelength, in the context of skin treatment, is recognized in the prior art as
a result-effective variable. “[W]ere the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456
(CCPA 1955); In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir.
2012) (a recognition in the prior art that a property is affected by a variable
is sufficient to find the variable result-effective).
Alternatively, Appellant argues that the Examiner’s findings
“overlook[] the specific choice of [the claimed] wavelengths as producing
‘unexpected improvements in the efficacy of the process.’” Appeal Br. 11
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(citing Spec. ¶ 40). However, the Examiner responds correctly that
paragraph 40 of the Specification does not provide evidentiary support that
the claimed wavelengths provide unexpected results. Ans. 4. Paragraph 40
of the Specification discloses that
[c]onsequently, by subsequently illuminating an area previously
treated in a non-ablative manner, with a pulsed laser source,
collagen synthesis and skin regeneration over the entire skin area
is increased, not simply within or just around the zones 24,
leading to an unexpected improvement in the efficacy of the
process.
Spec. ¶ 40. This passage does not discuss the selection of wavelengths or
provide evidence that the claimed wavelengths provide unexpected results.
See also In re Scherl, 156 F.2d 72, 74–75 (CCPA 1946) (applicant has the
burden of establishing criticality by a proper showing of the facts upon
which applicant relies).
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and claims 2, 3, 6, 7, 10, 11, 27, 28, and 30 which fall therewith.

Independent claims 12 and 37, and dependent claims 4, 5, 13–19, 21, 22,
31–34, and 38
Appellant chose not to present arguments for the patentability of
independent claims 12 and 37, and claims 4, 5, 13–19, 21, 22, 31–34, and 38
depending therefrom, apart from the arguments presented for independent
claim 1 supra. Appeal Br. 12, 13. Accordingly, for essentially the same
reasons stated supra, we also sustain the Examiner’s rejection of claims 4, 5,
13–19, 21, 22, 31–34, and 38.

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Rejection II
Appellant chose not to present arguments for the patentability of
claims 30 and 34 apart from the arguments presented for independent claim
1 supra. Appeal Br. 13. Accordingly, for essentially the same reasons
stated supra, we also sustain the Examiner’s rejection of claims 30 and 34.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 10–19,
21, 22, 27–
34, 37, 38
103 Tankovich,
Stumpp, as
evidenced by
Jansen
1–7, 10–
19, 21, 22,
27–34, 37,
38

30, 34 103 Tankovich,
Stumpp, Altshuler,
as evidenced by
Jansen
30, 34
Overall
Outcome
1–7, 10–
19, 21, 22,
27–34, 37,
38

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED