LUMENIS LTD.Download PDFPatent Trials and Appeals BoardDec 9, 20202020001954 (P.T.A.B. Dec. 9, 2020) Copy Citation 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. 14/964,987 12/10/2015 Ray Choye 35678-615006 4558 122004 7590 12/09/2020 ISUS Intellectual Property PLLC A. Jason Mirabito 1300 I Street, NW Suite 400 Washington, DC 20005 EXAMINER NGANGA, BONIFACE N ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 12/09/2020 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 RAY CHOYE and VLADIMIR LEMBERG __________ Appeal 2020-0019541 Application 14/964,987 Technology Center 3700 __________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 3–6, 12, and 14, which constitute all the claims pending in this application. Final Act. 1 (Office Action Summary). Claims 1, 2, 7–11, 13, and 15–17 have been canceled. Appeal Br. 12–13 1 The Examiner identifies the following U.S. Patent Application as related to the present Appeal: 13/314,548 (Appeal No. 2016-006413; decision rendered Aug. 24, 2017). See Ans. 3. 2 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. Appeal 2020-001954 Application 14/964,987 2 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we AFFIRM the Examiner’s rejection. CLAIMED SUBJECT MATTER The disclosed subject matter “relates to the field of laser treatment of tissue, and particularly, to a system and method for creating microablated channels in skin.” Spec. 1.3 Method claim 14 is the sole independent claim. See Appeal Br. 6. Claim 14 is representative of the claims on appeal and is reproduced below. 14. A cosmetic method for creating fractional treatment patterns in human skin tissue comprising: applying light energy with an ablative laser device by directly accessing the skin tissue to ablate the skin tissue and form a plurality of microchannels in the skin tissue; delivering one or more substances into the plurality of microchannels after the step in which the plurality of microchannels have been formed in the skin tissue; wherein each of the plurality of microchannels have a width from 20μm to 70μm and a depth; wherein the depth of the plurality of microchannels into the skin tissue from applying the light energy with the ablation laser device reaches to the hypodermis; and wherein the ablative laser device comprises a CO2 laser. REFERENCES Name Reference Date Altshuler et al. (“Altshuler”) US 2006/0004347 A1 Jan. 5, 2006 Hwang et al. (“Hwang”) US 2006/0149223 A1 July 6, 2006 3 We refer to the page numbers because neither the lines on each page of the Specification nor the paragraphs thereof are enumerated. Appeal 2020-001954 Application 14/964,987 3 THE REJECTION ON APPEAL Claims 3–6, 12, and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Altshuler and Hwang. Final Act. 4. ANALYSIS Appellant provides separate arguments for independent claim 14, and each of dependent claims 4 and 6. See Appeal Br. 7–10. Regarding the remaining claims, Appellant states that they “stand or fall with independent claim 14.” Appeal Br. 7. Thus, we address claims 14, 4, and 6 (in that order), with dependent claims 3, 5, and 12 standing or falling with claim 14. See 37 C.F.R. § 41.37(c)(1)(iv)(2018). Claim 14 Claim 14 is directed to treating skin tissue and includes the step of “applying light energy with an ablative laser device by directly accessing the skin tissue to ablate the skin tissue and form a plurality of microchannels in the skin tissue.” Appeal Br. 13 (Claims App.). Claim 14 further recites, “wherein the depth of the plurality of microchannels into the skin tissue from applying the light energy with the ablation laser device reaches to the hypodermis” and “wherein the ablative laser device comprises a CO2 laser.” Appeal Br. 13 (Claims App.). The Examiner primarily relies on Altshuler for disclosing the limitations of claim 14, which includes teaching the delivery of substances into microchannels and the recited dimensions of the microchannels. See Final Act. 4–5. The Examiner relies on Hwang for disclosing “an alternative technique (multipulse method) for creating hole(s) deeper in skin tissue using a CO2 laser using a sequence of micropulses that enables CO2 laser Appeal 2020-001954 Application 14/964,987 4 energy to penetrate deep into the dermis [0041].” Final Act. 5; see also Ans. 3–4. The Examiner concludes that it would have been obvious “to have modified the method of Altshuler . . . with an ablative CO2 laser source.” Final Act. 6. This is in order “to increase permeability through the skin tissue for a longer period and to allow for prolonged delivery of the at least one or more substance.” Final Act. 6. Appellant initially states that there is an “admission that Altshuler dissuades using a CO2 laser, and thus dissuades using a CO2 laser for delivering substances into the skin.” Appeal Br. 7; see also Reply Br. 2. Appellant contends, this “is a strong indication of teaching away from the delivery of substances into the hypodermis using a CO2 laser, as recited.” Appeal Br. 8. Appellant seems to be referencing the Examiner’s reliance on paragraph 192 of Altshuler concerning CO2 and Er:YAG lasers. See Final Act. 5. To be clear, paragraph 192 of Altshuler discloses that [t]he ablative techniques typically deliver more pronounced clinical results, but entail considerable post-operative recovery time and care, discomfort, and risk of infection. For example, laser skin resurfacing (e.g., using a CO2 laser an[d] with absorption coefficient of ~900 cm-1, or an Er:YAG laser with an absorption coefficient of ~13,000 cm-1) requires weeks of recovery time, followed by a period of up to several months during which the treated skin is erythematous. As understood, Altshuler is disclosing the disadvantages of using a CO2 laser having a certain absorption coefficient value for ablative purposes. Altshuler, instead, favors the use of “electromagnetic radiation (EMR)” for the described ablation procedure. See Altshuler ¶¶ 003, 111. But Altshuler is silent as to the patient recovery time when employing that preferred etching method. Regardless, Altshuler acknowledges, in the Background Appeal 2020-001954 Application 14/964,987 5 section, that treatment by “optical energy” “is widely used in two approaches for skin remodeling: ablative skin resurfacing, typically performed with either CO2 (10.6µ) or Er:YAG (2.94µ) lasers, and non- ablative skin remodeling” using other laser types. Altshuler ¶ 10. Thus, we do not view Altshuler’s discussion in Paragraph 192 above as discouraging ablation or discouraging the use of CO2 lasers––but rather, as merely identifying certain circumstances surrounding such usage should that process be chosen. This is consistent with Appellant’s disclosure that acknowledges that the use of CO2 lasers for ablative resurfacing is known and further that, for Appellant’s process, “[a]ny suitable type of laser may be used” (including CO2).4 Spec. 2, 10. The Examiner responds stating that “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” Ans. 5 (referencing In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971)); see also id. at 6 (“Altshuler does not [] criticize, discredit, or otherwise discourage the solution claimed” (citation omitted)). Furthermore, Hwang specifically states, “[t]he present invention provides a method and apparatus that would enable the CO2 laser beam to be delivered deep into dermis yet cause minimum thermal damage to the epidermal and superficial dermal tissue.” Hwang ¶ 13. 4 See also Merck & Co. Inc. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“‘the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.’”) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). Appeal 2020-001954 Application 14/964,987 6 Accordingly, and based on the above, we thus are not persuaded that Altshuler teaches away from the use of CO2 lasers for ablation purposes. Appellant also contends that “Hwang does not even disclose width dimensions of his ‘microchannels’ nor the depth of his ‘microchannels’ extending to the hypodermis.” Appeal Br. 8. However, Hwang was not relied upon for disclosing the recited dimensions, Altshuler was. See Final Act. 5, 6. Appellant also questions Altshuler’s teaching of the “delivery of substances” and references paragraphs 158, 189, and 195 of Altshuler for support. Appeal Br. 8; see also Reply Br. 2. The Examiner also referenced paragraphs “[0175-0177]” of Altshuler for this teaching (Final Act. 4), and Appellant does not explain how paragraph 175 of Altshuler fails to disclose this limitation. See Altshuler paragraph 175 discussing the “percutaneous delivery of cosmetic or therapeutic agents locally to the epidermis and dermis.” Appellant further contends that “in the voluminous specification of the Altshuler reference, the word ‘ablate’ is used only 4 times.” Appeal Br. 8. Although this may be true, a word search for related terms such as “ablated,” “ablative,” and “ablation” reveals that these other forms of “ablate” are recited many times throughout Altshuler’s written description. See Altshuler, passim. As such, any intimation of Altshuler’s disclosure being relevant to non-ablative techniques that use non-ablative lasers, rather than ablative techniques that use ablative lasers such as CO2 lasers, is unpersuasive. Appellant additionally makes the following arguments which we enumerate as follows: (1) “neither of Altshuler or Hwang disclose[s] or even suggest[s] drilling microchannels down to the hypodermis level with a CO2 laser and delivering substances there” (Appeal Br. 8); Appeal 2020-001954 Application 14/964,987 7 (2) “[p]aragraph [0195] of Altshuler, . . . is part of a discussion beginning with paragraph [0189] that is directed to Tissue Remodeling, and has nothing to do with nor ever mentions delivery of substances” (Appeal Br. 8); (3) “paragraph [0158] of Altshuler is in a section of Altshuler that discusses the size of [(electromagnetic radiation (EMR))]-treated islets and again has nothing to do with the delivery of substances” (Appeal Br. 8); (4) “when used in paragraphs [0205] and [0159], [the term ‘ablate’] is used in connection with ablating the stratum corneum (SC), not in connection with ablating down to ‘the hypodermis’, as recited in claim 14” (Appeal Br. 8); (5) “paragraphs [0010] and [192]” does not describe “‘fractional treatment’, as recited in claim 14, but rather the known technique of ablating large surfaces of the SC [(stratum corneum)]” (Appeal Br. 9); (6) “paragraph [0175] of Altshuler” does not disclose “delivering substances into the hypodermis, as far as such microchannels are as set forth in the present invention” (Appeal Br. 9; see also Reply Br. 2 (“for the delivery of therapeutic agents/compounds Altshuler discloses only affecting the stratum corneum”)); and (7) “Hwang does not disclose the introduction of substances into the ‘microchannels’ formed in the skin tissue” (Appeal Br. 9). These arguments lack merit in that they do not address the Examiner’s rejection, which relies on Altshuler for teaching “accessing skin tissue to form a plurality of microchannels,” “wherein the thermal and damage islets have a depth [that] can be relative[ly] deep into the dermis and hypodermis,” and for the delivery of substances thereinto. See Final Act. 4, 5. The Appeal 2020-001954 Application 14/964,987 8 Examiner relies on Hwang for disclosing “creating hole(s) deeper in skin tissue using a CO2 laser.” Final Act. 5, 6; see also Ans. 7. “Non- obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references []. [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). See also Ans. 7, 8. In regard to Appellant’s corresponding arguments as enumerated above: (1) the Examiner relies on Altshuler for drilling microchannels down to the hypodermis level and delivering substances there, and on Hwang for using a CO2 laser to create holes deep into skin tissue (see Final Act. 4–5); (2), (3), (6), (7) as noted above, the Examiner additionally relies on paragraphs 175–177 of Altshuler, for teaching the delivery of substances (see Final Act. 4); and (4), (5) the Examiner relies on paragraph 195, rather than paragraphs 10, 159, 175, 192, and 205, of Altshuler for teaching “fractional treatment” comprising ablating down to the hypodermis (see Final Act. 5). In view of the above, it is apparent that Appellant’s contentions attack the cited references individually or otherwise fail to address the Examiner’s rejection. Consequently, the above contentions by Appellant do not apprise us of Examiner error. Appellant also contends that “the high ratio of depth to width in Appellants’ invention facilitates the injection of substances deep into the tissue.” Appeal Br. 9. However, the Examiner correctly responds that “the pending claims do not recite a ratio of depth to width of microchannels.” Appeal 2020-001954 Application 14/964,987 9 Ans. 8. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). Appellant further argues that “there is no basis for combining the teachings of Altshuler and Hwang to reach the present[ly] recited invention, other than through reading of Appellants’ disclosures.” Appeal Br. 7; see also Reply Br. 2–3. The Examiner, on the other hand, reasons that it would have been obvious to modify the method of Altshuler with Hwang’s technique of using CO2 laser to “cause[] minimum damage to the epidermal and superficial dermal tissue.” Final Act. 5–6 (citing Hwang ¶¶ 13, 38, 41, 49); see also Ans. 4–5. In view of this stated rationale, we are not persuaded that the Examiner’s rejection is based upon improper hindsight, or that the stated rejection was gleaned only from Appellant’s disclosure. Accordingly, and based on the record presented, we sustain the Examiner’s rejection of claims 3, 5, 12, and 14 as being obvious in view of Altshuler and Hwang. Claim 4: Claim 4 recites “wherein the step of delivering the one or more substances includes ultrasonic delivery.” Appeal Br. 12 (Claims App.). Appellant contends that the device the Examiner cited by referencing “paragraph [0524] of Altshuler” is “an entirely different device than that which is recited in claim 4 which incorporates that which is recited in claim 14.” Appeal Br. 9–10. Appellant states, “[t]he device discussed in paragraph [0524] is a device to make the SC [(stratum corneum)] more permeable and involves no ablation at all.” Appeal Br. 10. Appeal 2020-001954 Application 14/964,987 10 The Examiner responds that “an obviousness rationale was set forth in the Office action in view of Altshuler[’s] teaching of ultrasonic delivery in other embodiments, not necessarily the embodiment as modified in claim 1[4].” Ans. 8. Moreover, claim 4 does not preclude using a device for “ultrasonic delivery” that is separate from the “ablative laser device” of claim 14. See In re Self, 671 F.2d at 1348. We further note that the Examiner does not rely on paragraph 524 of Altshuler for ablating the hypodermis, but rather for teaching “the use of ultrasound to enhance permeability.” Final Act. 6. For these reasons, we sustain the Examiner’s rejection of claim 4. Claim 6: Claim 6 recites “wherein the applying of light energy is controlled by a controller.” Appeal Br. 12 (Claims App.). Appellant contends that “nowhere does [paragraph 287 of Altshuler] disclose that the controller controls ablating microchannels into the skin tissue ‘to at least the hypodermis’, as recited in claim 14.” Appeal Br. 10. Once again, Appellant’s contention does not address the rejection because the Examiner does not rely on paragraph 287 of Altshuler for ablating to the hypodermis, but instead relies upon paragraph 195, as discussed above. See Final Act. 5. The Examiner, however, does reference paragraph 287 of Altshuler for disclosing “a controller that operates to control light energy.” Final Act. 7. Appellant does not explain how the Examiner erred by additionally relying on paragraph 287 of Altshuler to reject claim 6. Accordingly, we sustain the Examiner’s rejection of claim 6. Appeal 2020-001954 Application 14/964,987 11 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 3–6, 12, 14 103(a) Altshuler, Hwang 3–6, 12, 14 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 Copy with citationCopy as parenthetical citation