Ex Parte Ferren et al

Patent Trial and Appeal Board

May 13, 2013

11072007 (P.T.A.B. May. 13, 2013)

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.
11/072,007 03/04/2005 Bran Ferren 0504-004-002J-000000 2534
44765 7590 05/13/2013
THE INVENTION SCIENCE FUND
CLARENCE T. TEGREENE
11235 SE 6TH STREET
SUITE 200
BELLEVUE, WA 98004
EXAMINER
CRANDALL, LYNSEY P
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
05/13/2013 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 BRAN FERREN, MURIEL Y. ISHIKAWA,
EDWARD K.Y. JUNG, NATHAN P. MYHRVOLD,
CLARENCE T. TEGREENE, and LOWELL L. WOOD JR.
__________

Appeal 2012-001153
Application 11/072,007
Technology Center 3700
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a system
for treating skin. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

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Statement of the Case
Background
“Embodiments of methods and systems for removal or modification
of hair using electromagnetic energy are described” (Spec. 2, ll. 1-2).
The Claims
Claims 32, 33, 40, 43, 48, 49, 53, 54, 62, and 64-71 are on appeal.
Claim 32 is representative and reads as follows:
32. A system for treating skin, comprising:
a) a laser array including a plurality of lasers in array;
b) a lens array including a plurality of lenses corresponding
to said plurality of lasers, each of said lenses being positioned with
respect to a corresponding laser of said plurality of lasers to
modify the profile of a beam generated by said corresponding laser
to form a highly convergent beam having a short beam waist;
c) a detector array including a plurality of photodetectors
mounted relative to said laser array such that said plurality of
photodetectors are oriented and positioned to detect light generated
by at least a subset of said plurality of lasers reflected from a skin
region when said laser array is within a desired distance range of
the skin surface but not when said laser array is outside said
desired distance range and to generate in response thereto at least
one signal indicative of detection of light, wherein said desired
distance range at which light reflected from said skin region is
detected by said plurality of photo detectors is determined by the
position and orientation of said plurality of photo detectors relative
to said laser array; and
d) a controller configured to receive as input said at least one
signal indicative of detection of light from said detector array and
to generate as output a control signal for driving said laser array;
wherein said laser array, lens array, and detector array are
positioned relative to each other such that when said laser array is
within said desired distance range of the skin surface each said
beam waist is positioned above and just adjacent to the skin
surface.

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The issues
A. The Examiner rejected claims 32, 33, 49, 53, 54, 62, 69, and 70 under
35 U.S.C. § 103(a) as obvious over Whatcott1 and Yamazaki2 (Ans. 6-9).
B. The Examiner rejected claims 40, 43, and 64-67 under 35 U.S.C.
§ 103(a) as obvious over Whatcott, Yamazaki, and Neev3 (Ans. 9-10).
C. The Examiner rejected claims 48 and 71 under 35 U.S.C. § 103(a) as
obvious over Whatcott, Yamazaki, and Asah4 (Ans. 10-11).
D. The Examiner rejected claim 68 under 35 U.S.C. § 103(a) as obvious
over Whatcott, Yamazaki, and Altshuler5 (Ans. 11).
A. 35 U.S.C. § 103(a) over Whatcott and Yamazaki
The Examiner finds that
Whatcott discloses a system for treating skin, comprising: a
laser array including a plurality of lasers in array (58 and
54a-c, Fig. 8); lens (49, Fig. 6) and a photo proximity
detector (not shown). The probe includes a controller
(actuator 36 and circuitry 60; Pars 0048 and 0055)
associated with a photo proximity sensor. . . . Whatcott
teaches “the probe is activated when the head is within an
established treatment range and/or deactivated when the
head is outside the established treatment range” (Par 0044).
This is interpreted as a detector oriented and positioned to
detect light generated by at least a subset of the plurality of
lasers reflected from a skin region when the laser array is
within a desired distance range of the skin surface but not
when the laser array is outside the desired distance range

(Ans. 6-7).

1 Whatcott et al., US 2006/0047330 A1, published Mar. 2, 2006.
2 Yamazaki et al., US 2002/0193779 A1, published Dec. 19, 2002.
3 Neev, J., US 6,168,590, issued Jan. 2, 2001.
4 Asah et al., US 6,074,382, issued Jun. 13, 2000.
5 Altshuler et al., US 2004/0133251 A1, published Jul. 8, 2004.
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The Examiner finds that Whatcott does not teach “a laser/lens array
that generates a highly convergent beam having a short beam waist” (Ans.
7). The Examiner finds that “Yamazaki discloses a laser beam irradiation
probe comprising a . . . a lens array . . . positioned with respect to the
corresponding laser array to modify the profile of a beam generated by said
corresponding laser to form a highly convergent beam having a short beam
waist” (Ans. 7). The Examiner finds it obvious “to choose the desired
position of the focal point of the laser based on the intended use of the
device, for example if the user desires to cut hair above the skin surface then
the user would focus the light above the skin to target hair” (Ans. 8).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Whatcott and Yamazaki render the
claimed systems obvious?
Findings of Fact
1. The Specification teaches that “[w]hen the active surface 106 of
depilation device 100 is positioned at a distance d1 from skin surface 108,
beam waist 120 is located at a distance d2 from skin surface 108. At this
distance, a hair 110 located in the beam may be severed at beam waist 120,
while the beam will have diverged before reaching the skin surface to reduce
the possibility of damage or irritation of the skin” (Spec. 4, ll. 12-16).
2. Whatcott teaches “light therapy being made available or
otherwise provided for by the use of one or more laser light sources, such as
laser diodes. The light beam power of the laser light source is dynamically
distributed to provide an influence on metabolism-related processes without
the destruction of tissue” (Whatcott 2 ¶ 0037).

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3. Whatcott teaches that
lens 49 is contained by bezel 48 of head portion 42. Heat
sink 62 includes an aperture that receives laser diode 58.
Disk 59 is a holographic diffuser and attenuator and is
configured to couple with laser light source 58 to
dynamically distribute the power of the laser light beam
generated by laser light source 58.

(Whatcott 3 ¶ 0054).
4. Whatcott teaches “a head that comprises multiple light sources,
including laser light sources and/or light emitting diodes” (Whatcott 4 ¶
0057).
5. Whatcott teaches that:
Probe 30 includes actuator 36, which selectively turns probe
30 on or off, and indicators 38 to communicate to the user
whether or not probe 30 is currently emitting laser light. For
example, in one embodiment a green light emitting diode is
lit at indicator 38a when probe 30 is actuated and a red light
emitting diode is lit at indicator 38b when probe 30 is not
actuated. In another embodiment, for example, a green light
emitting diode is lit at indicator 38a when probe 30 is
determined by a proximity detector to be within treatment
range and a red light emitting diode is lit at indicator 38b
when probe 30 is not within treatment range.

(Whatcott 3 ¶ 0048).
6. Whatcott teaches that
probe 10 also includes a proximity detector to determine the
distance between head 12 and the target treatment area of a
patient. Light source 18 emits light that is used to measure
the distance between head 12 and the target treatment area
of a patient. In a further embodiment, light source 18 is
further used to provide light therapy.

(Whatcott 2 ¶ 0043).
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7. Whatcott teaches that:
While the methods and processes of the present invention
have proven to be particularly useful in the areas of pain
management and wound healing, those skilled in the art can
appreciate that the methods and processes can be used in a
variety of different applications and in a variety of different
areas of manufacture to enable or otherwise provide light
therapy utilizing laser light sources.

(Whatcott 1 ¶ 0012).
8. Yamazaki teaches “a laser beam irradiation instrument whose
semiconductor lasers can project laser beams to one’s skin to carry out
beauty treatments for skin or depilation” (Yamazaki 1 ¶ 0001).
9. Yamazaki teaches that:
The spherical lenses 5 permit the laser beams to focus at a
relatively short distance, where all optical energy may be
converged. The optical energy thus converged is allowed to
diverge a relatively wide range beyond the focussing [sic]
line. The so diverging optical energy is not strong enough to
injure the skin even though such laser beams are thrown
onto the skin. Thus, the safety is assured.

(Yamazaki 2 ¶¶ 0035-0037).
Principles of Law
“[T]he [E]xaminer bears the initial burden, on review of the prior art
or on any other ground, of presenting a prima facie case of unpatentability.”
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Nevertheless, an
invention “composed of several elements is not proved obvious merely by
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demonstrating that each of its elements was, independently, known in the
prior art. … [I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.” Id. at 418.
Analysis
Appellants contend that “[c]laim 32 recites not just a ‘beam waist
positioned above and just adjacent to the skin surface,’ but ‘wherein said
laser array, lens array, and detector array are positioned relative to
each other such that when said laser array is within said desired distance
range of the skin surface each said beam waist is positioned above and just
adjacent to the skin surface’” (App. Br. 38). Appellants contend that “the
claim recitation specifies the relative positioning of the physical components
of the device, and does NOT merely recite an intended use of the device”
(App. Br. 38).
The Examiner finds that “Yamazaki clearly teaches positioning the
beam waist adjacent to the skin surface (Fig. 5 and Pars 0035-37), and that
focusing the beam waist above the skin surface is a matter of intended use”
(Ans. 13). The Examiner finds that the “operator could easily move the
device just above the skin surface if it is desired to cut the hair at a location
just above the skin surface. The specific focusing distance of the lenses and
the distance range detected by the proximity detector is considered a design
choice based on the intended use of the device” (Ans. 13).
We find that Appellants have the better position. The positioning of
the laser array, lens array, and detector array represent structural
relationships. Claim 32 requires a particular arrangement of these
components so that the beam waist of the laser is at a particular location
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relative to the skin surface so that the beam waist impinges hair above the
skin surface, rather than the skin surface itself (see Spec. 4, ll. 12-16; FF 1).
That this is not simply an “intended use” recitation, but imposes
specific structural and functional requirements on the components of the
system of claim 32, is evident from Whatcott, who teaches that “a green
light emitting diode is lit at indicator 38a when probe 30 is determined by a
proximity detector to be within treatment range and a red light emitting
diode is lit at indicator 38b when probe 30 is not within treatment range”
(Whatcott 3 ¶ 0048; FF 5). Thus, the structural relationship between the
detector array and the laser array determines whether the laser is within
treatment range or not, and consequently, whether the beam waist of the
laser focuses on hair, on skin, under the skin in follicles, or elsewhere.
The Examiner fails to identify any reason, teaching or suggestion in
either Whatcott or Yamazaki to position the structural components of the
laser array such that when the detector array indicates that the device is
within a desired distance range, the laser beam waist will be “positioned
above and just adjacent to the skin surface” as required by claim 32.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Whatcott and Yamazaki render the claimed systems obvious.
B-D. 35 U.S.C. § 103(a)
Each of these rejections relies upon the underlying obviousness
rejection over Whatcott and Yamazaki. Having reversed the rejection of
claim 32 over Whatcott and Yamazaki above, we necessarily also reverse
these dependent obviousness rejections, since the Examiner does not find
that Neev, Asah, or Altshuler teach the positioning of the device such that
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the laser beam waist will be “positioned above and just adjacent to the skin
surface” as required by claim 32 from which all of the claims depend.
SUMMARY
In summary, we reverse the rejection of claims 32, 33, 49, 53, 54, 62,
69, and 70 under 35 U.S.C. § 103(a) as obvious over Whatcott and
Yamazaki.
We reverse the rejection of claims 40, 43, and 64-67 under 35 U.S.C.
§ 103(a) as obvious over Whatcott, Yamazaki, and Neev.
We reverse the rejection of claims 48 and 71 under 35 U.S.C.
§ 103(a) as obvious over Whatcott, Yamazaki, and Asah.
We reverse the rejection of claim 68 under 35 U.S.C. § 103(a) as
obvious over Whatcott, Yamazaki, and Altshuler.

REVERSED

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