Ex Parte Lemberg et al

Patent Trial and Appeal Board

Aug 22, 2017

13314548 (P.T.A.B. Aug. 22, 2017)

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.
13/314,548 12/08/2011 VLADIMIR LEMBERG F615US04 4037
122004 7590 08/24/2017
ISUS Intellectual Property PLLC
A. Jason Mirabito
1875 I Street, N.W.
5 th Floor
Washington, DC 20006
EXAMINER
JENNESS, NATHAN JAY
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
08/24/2017 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):
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silia@isusip.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VLADIMIR LEMBERG, VITALI EPSHTEIN, YONIIGER, and
JOHN LEE PANNELL
Appeal 2016-006413
Application 13/314,54s1
Technology Center 3700
Before JOHN G. NEW, RICHARD J. SMITH, and DAVID COTTA,
Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a laser
system. The Examiner rejected the claims on appeal as obvious under
35 U.S.C. § 103(a).
We affirm.
STATEMENT OF THE CASE
The Specification discloses: “The present invention generally relates
to the field of laser treatment of tissue, and particularly, to a system and
method for creating microablated channels in skin. The present invention is
1 According to Appellants, the real party in interest is Lumenis, Ltd. Br. 3.
Appeal 2016-006413
Application 13/314,548
more particularly directed to treating subsurface tissue through the created
channels.” Spec. 13.
Claims 1—11, 13, and 34—36 are on appeal. Claim 1 is illustrative and
reads as follows:
1. A laser system comprising:
a laser source;
a laser emitting device coupled to the laser source and
configured to apply laser pulses to tissue in one or more
ablative pulses, the tissue comprising an epidermis region, a
dermis region below the epidermis region, and a hypodermis
region below the dermis region; and
a controller configured to control application of the laser
pulses by the laser emitting device based on treatment
parameters received via an input interface, the controller
directing the laser emitting device to apply laser energy to
supply at least one ablative laser pulse at a plurality of sites
within a treatment area of the tissue to cause ablation of a
microchannel at the plurality of sites, each of the ablated
microchannels;
(i) having a depth that extends at least into the
dermis region of the tissue,
(ii) having a depth greater than its diameter and
wherein the microchannel diameter ranges from 10 pm to
500 pm and the microchannel depth ranges from 200 pm
to 2 mm;
wherein the controller is configured to determine the
number of sites within the treatment area and the density of the
microchannels formed within the treatment area and to cause
the laser emitting device to apply laser energy to supply at least
one ablative pulse to form microchannels at the sites such that
at least a portion of tissue between the plurality of sites is not
ablated.
App. Br. 13.
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Application 13/314,548
The claims stand rejected as follows:2
Claims 1—11 and 34—36 were rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Hobart3 and Altshuler.4
Claim 13 was rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Hobart, Altshuler and Clement.5
ANALYSIS
Appellants argue both rejections together and argue claims 1—11, 13,
and 34—36 together. Because both rejections rely on the underlying
combination of Hobart and Altshuler, we discuss both rejections together.
We designate claim 1 as representative.
In rejecting claim 1 as obvious, the Examiner found that Hobart
disclosed a laser system comprising: a laser source, a laser emitting device
configured to apply pulses to tissue, and a controller configured to control
the application of the pulses. Final Act. 6—7.6 The Examiner also found that
Hobart’s controller was configured to “direct the laser emitting device to
apply at least one ablative laser pulse at a plurality of sites within a treatment
area of the tissue to ablate a channel.” Id. at 7. (internal citations omitted).
The Examiner acknowledged that Hobart did not “explicitly disclose”
the dimensions of the channels formed by the ablative laser. Id. However,
2 In the Examiner’s Answer, the Examiner withdrew the pending rejection of
claims 1—11, 13, 35, and 36 under 35 U.S.C. § 112, second paragraph, in
view of Appellants’ amendments to those claims. Ans. 2.
3 Hobart et al., US Patent Publication No. 2001/0016732 Al, published Aug.
23, 2001 (“Hobart”).
4 Altshuler et al., US Patent Publication No. 2006/0004347 Al, published
Jan. 5, 2006 (“Altshuler”).
5 Clement et al., US Patent No. 6,881,212 Bl, issued Apr. 19, 2005
(“Clement”).
6 Office Action mailed Apr. 22, 2015 (“Final Act.”)
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Application 13/314,548
the Examiner found that this element was supplied by Altshuler, which
disclosed “a method for fractionally ablating and/or coagulating select
regions of tissue (islets)” which “can be between 1 pm to 30 mm in any
dimension, including cylindrical islets with diameters of 10 pm to 1 mm and
depths of 10 pm to 4 mm.” Id. at 8.
Based on the disclosures of Hobart and Altshuler, the Examiner
concluded:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the system of
Hobart by configuring the controller to ablate a plurality of
channels having diameters smaller than their depths including
channels having diameters of 10 pm to 500 pm and depths of
200 pm to 2 mm based on the desired treatment, as taught by
Altshuler in order to predictably perform fractional tissue
treatment while preventing the development of bulk tissue
damage.
Id. at 8.
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 3—6; Final Act. 2—11) and agree that
the claims are obvious over Hobart and Altshuler. We address Appellants’
arguments below.
Appellants argue that Hobart discloses “craters” with “short
penetration depths” and that the exemplary crater depths disclosed in Hobart
(25 and 75 microns) “hardly can be said to disclose or even suggest the
claim language of claim 1 of the present invention that recites: ‘having a
depth that extends at least into the dermis region of the tissue.’” App. Br. 8.
Appellants further argue that Hobart does not disclose “that his ‘craters’
have a depth greater than their diameter.” Id. We are not persuaded.
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Appellants’ arguments addressing Hobart individually fail to
substantively address the combination of prior art as cited by the Examiner
and therefore do not demonstrate error in the Examiner’s rejection. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness
by attacking references individually where, as here, the rejections are based
on combinations of references.”)
Here, Hobart discloses a laser with controllable depth. See e.g.,
Hobart H 10 and 22—23. Altshuler discloses a method of ablating regions of
tissue (islets) within the epidermis and dermis. See e.g., Altshuler || 129
and 144—145. Altshuler further teaches that depth of the islets “depends on
the cosmetic or medial application” and, more specifically, that the islets can
“be shallow islets that penetrate only surface layers of a tissue (e.g., 0-50
gm), deeper islets that span several layers of a tissue (e.g., 50-500 gm), or
very deep, subsurface islets ((e.g., 500 gm-4 mm).” Altshuler || 162—163;
see also, 1158 (“Thus, in some embodiments, the islets can have a
maximum dimension in the range from 1 gm to 10 gm, 10 gm to 100 gm,
100 gm to 1 mm, 1 mm to 10 mm, or 10 mm to 30 mm, as well as all
possible ranges within 1 gm to 30 mm.”). We agree with the Examiner that,
based on the combined disclosures of Hobart and Altshuler, it would have
been obvious to configure the controller to ablate channels having the
claimed dimensions, “as taught by Altshuler in order to predictably perform
fractional tissue treatment while preventing the development of bulk tissue
damage.” Final Act. 8; see also, e.g., Altshuler at || 10, 111—116, and 188
(discussing uses and benefits of fractional treatment).
Appellants argue that Altshuler uses the word “ablate” in only a few
places and that its references to ablation are “frankly somewhat off-the-cuff
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Application 13/314,548
and out of context.” App. Br. 9-10. In addition, Appellants contend that
Altshuler teaches away from the use of ablation by disclosing that “ablative
approaches ‘typically deliver more pronounced clinical results, but entail
considerable post-operative recovery time and care, discomfort, and
increase[d risk] of infection’” while at the same time disclosing “a non­
ablative approach, one of tissue coagulation, which ‘entail[s] considerably
less post-operative recovery time and care, discomfort, and risk of
infection.’” Id. We are not persuaded.
As the Examiner explained, “the overarching concept of [Altshuler’s]
invention is using electromagnetic radiation treated islets, including those
formed via ablation, separated by non-treated tissue rather than large,
continuous regions in order to lower the risk of bulk tissue damage and
provide increased healing.” Ans. 4. The passages of Altshuler relied upon
by Appellants (paragraphs 192—194) do not discourage the use of ablation,
but instead are best characterized as a discussion of the relative advantages
and disadvantages of ablative and non-ablative approaches. For example,
paragraph 192 of Altshuler teaches that ablative techniques “typically
deliver more pronounced clinical results, but entail considerable post­
operative recovery time and care, discomfort and risk of infection.”
Altshuler 1192. This is not sufficient to constitute a teaching away. See, In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that a reference
teaches away from a claimed invention if it “criticize [s], discredits], or
otherwise discourage[s]” modifying the reference to arrive at the claimed
invention).
Finally, Appellants argue that there is “no basis to combine these two
very disparate references.” App. Br. 11. We are not persuaded because, as
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the Examiner explained, “both Hobart and Altshuler are directed towards the
formation of ablative microchannels in the skin via laser radiation and are
therefore combinable.” Ans. 6. Accordingly, we affirm the Examiner’s
rejection of claim 1 over as obvious the combination of Hobart and
Altshuler. Because they were not argued separately, we also affirm the
Examiner’s rejection of claims 2—11, and 34—36 as obvious over Hobart and
Altshuler, and the Examiner’s rejection of claim 13 as obvious over the
combination of Hobart, Altshuler and Clement.
SUMMARY
For these reasons and those set forth in the Examiner’s Answer and
Final Office Action, we affirm the Examiner’s rejection of claims 1—11, 13,
and 34—36.
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).
AFFIRMED
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