Ex Parte Liu et al

Patent Trials and Appeals BoardApr 22, 2019

13366256 - (D) (P.T.A.B. Apr. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/366,256 02/03/2012 Harvey I-Heng Liu 86528 7590 04/24/2019 Slayden Grubert Beard PLLC 401 Congress Avenue Suite 1650 Austin, TX 78701 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 16591.105102 2247 EXAMINER JENNESS, NATHAN JAY ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 04/24/2019 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): trosson@sgbfirm.com patent@sgbfirm.com dallen@sgbfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HARVEY I-HENG LIU, TOBIN C. ISLAND, JOHN P. BEALE, and PATRICK REICHERT Appeal2018-004875 Application 13/366,256 Technology Center 3700 Before JENNIFER D. BAHR, STEFAN STAICOVICI, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's Decision rejecting claims 1, 4--7, 10, 12-21, and 23. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. Appeal2018-004875 Application 13/366,256 CLAIMED SUBJECT MATTER Claims 1 and 19--21 are independent. Claims 4--7, 10, and 12-18 depend from claim 1. Claim 23 depends from claim 19. Claim 1 is reproduced below: 1. A self-contained, hand-held device for providing laser- based dermatological treatments, the device comprising: a device body configured to be handheld by a user; an edge-emitting laser beam source supported in the device body and configured to emit a diverging laser beam having a wavelength in the range of 1400 nm to 1500 nm or 1800 nm to 2600 nm; an application end having an outer surface configured to be manually moved across the skin during a treatment session; a processor; and computer instructions stored in a non-transitory computer- readable medium and executable by the processor to control the edge-emitting laser beam source to pulse the laser source during the treatment session such that the laser source emits a sequence of pulsed laser beams to the skin at a delivered fluence at the skin of between 5 J/cm2 and 50 J/cm2 to generate an array of treatment spots on the skin, wherein each pulsed laser beam has a pulse duration and a total pulse energy being a function of the pulse duration, wherein adjacent treatment spots generated on the skin are spaced apart from each other by areas of non- treated skin between the adjacent treatment spots, wherein each treatment spot is defined by a contiguous area on the skin surface receiving at least l/e2 times the maximum intensity of a respective beam pulse, and the areas of non-treated skin receive insufficient radiation to qualify as a treatment spot; wherein the device includes, downstream of the edge- emitting laser beam source, only an open air interface, a window, or other structure that does not deflect or influence the angular distribution profile of the pulsed beams from the edge- emitting laser beam source to the skin; 2 Appeal2018-004875 Application 13/366,256 wherein the device is configured to generate only one treatment spot at a time; wherein the pulsed laser beam remains divergent along a fast axis by a fast axis divergence angle and divergent along a slow axis by a slow axis divergence angle along a path extending from the edge-emitting laser beam source, passing outwardly through a plane defined by the outer surface of the application end of the device, and to the skin; wherein an emitting surface of the edge-emitting laser beam source is arranged proximate the plane defined by the outer surface of the application end such that each treatment spot on the skin has an area of less than 1.0 mm2; wherein an accessible energy (AE) for each pulsed laser beam emitted from the outer surface of the application end of the device is less than an accessible energy limit (AEL) for that pulsed laser beam as defined by IEC 60825-1, such that the pulsed laser beam meets the Class IM or better eye safety classification per the IEC 60825-1 standards for diverging radiation in the wavelength range of 1400 nm to 1500 nm and 1800 nm to 2600 nm; wherein the accessible energy (AE) for each pulsed laser beam is defined, according to IEC 60825-1, by the equation AE = 2.5x10-3Q/[tan (F/2) tan (S/2)]mJ, wherein Q is the total beam energy in mJ, F is the fast axis divergence angle of the pulsed laser, and S is the slow axis divergence angle of the pulsed laser beam, and wherein the accessible energy (AEL) for each pulsed laser beam is defined, according to IEC 60825-1, by the equation AEL = 4.4 t0.25 mJ, wherein tis the pulse duration of the pulsed laser beam. REJECTIONS 1. Claims 1, 4--7, 10, 14, 15, 18-21, and 23 are rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Durkin (US 2008/0091179 Al, 3 Appeal2018-004875 Application 13/366,256 published Apr. 17, 2008), Moench (WO 2011/010239 Al, published Jan. 27, 2011), and Altshuler (US 2008/0058783 Al, published Mar. 6, 2008). 2. Claims 12, 13, 16, and 17 are rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Durkin, Moench, Altshuler, and Hawkins (US 2008/0262484 Al, published Oct. 23, 2008). OPINION Appellants argue claims 1, 4--7, 10, 14, 15, 18-21, and 23 as a group. Appeal Br. 10-18. We select claim 1 as representative. Claims 4--7, 10, 14, 15, 18-21, and 23 stand or fall with claim 1. The Examiner finds that Durkin teaches the majority of limitations recited in claim 1, but is silent regarding the laser beam source being an edge-emitting laser beam source, a fractional treatment producing space[d] apart treatment spots, and an accessible energy for each pulsed laser beam being less than an accessible energy limit (AEL) defined by IEC 60825-1 such that the laser beam meets the Class 1 M standard. Non-Final Act. 9. The Examiner finds that Moench and Altshuler teach the missing limitations and proposes modifying the teachings of Durkin accordingly. Id. at 9-11. Appellants do not dispute the Examiner's findings related to Moench or Altshuler, or the Examiner's rationale to modify the teachings of Durkin. Appellants explain that "[t]he central disagreement between the Appellants and the Examiner regarding Durkin relates to the proper interpretation of Durkin 's Figure 4." Appeal Br. 12. Appellants provide argument related to "two possible ways to interpret Figure 4," either "as a 'schematic representation' ... that illustrates a general arrangement of 4 Appeal2018-004875 Application 13/366,256 selected components of a handheld device, each represented by a generic rectangular box, as opposed to the actual shape, size, and arrangement of such components" or "as an accurate and thorough technical or engineering drawing that shows all components of the handheld device to scale." Id. As made clear in the Answer, "[t]he Examiner notes Durkin indicates the Figures are schematic drawings and the Examiner has interpreted them as such." Ans. 13 (emphasis omitted). Appellants agree that Figure 4 of Durkin is schematic. Appeal Br. 13. Accordingly, we focus on Appellants' arguments related to Figure 4 of Durkin being a schematic representation. Appellants do not dispute that Durkin fails to include "downstream optics" in its Figure 4 or state in any definitive manner that "downstream optics" are included in the embodiment of Figure 4. Rather, Appellants contend that "one of ordinary skill in the art would not have interpreted the absence of optics from the selected components shown in Figure 4 as a teaching to provide a laser 60 with no downstream optics, as recited in Appellants' claims." Appeal Br. 13. Appellants, however, provide no basis for us to reach such a conclusion, other than stating that "Durkin would not produce a collimated beam as shown at 68, without the use of downstream optics." Id. Appellants' contention is not persuasive. There is no dispute that Durkin's Figure 4 shows no optics downstream of laser diode 60. That Figure 4 also fails to show the actual shape of the radiation beam emitted from laser diode 60 is consistent with the understanding that the Figure is a schematic illustration. Appellants provide no persuasive explanation or evidence to the contrary. Rather, as the Examiner points out (Non-Final Act. 4 ), Durkin explains that the "handheld device [can] includ[ e] a diode laser 5 Appeal2018-004875 Application 13/366,256 alone" (Durkin ,r 63) ( emphasis added). Appellants contend that "[ o ]ne of ordinary skill in the art would [not] have interpreted the lone ambiguous phrase 'a diode laser alone' as meaning to omit all downstream optics, as this would contradict the consistent, repeated teachings of Durkin." Appeal Br. 18. The "repeated teachings" referenced by Appellants, however, are those related to other embodiments of Durkin. See Appeal Br. 16-17 (addressing Figure 2 of Durkin). For at least these reasons, we are not apprised of error in the Examiner's findings related to Durkin. As the findings related to Durkin are the only issues disputed by Appellants 1, we are not apprised of Examiner error and sustain the Examiner's decision to reject claims 1, 4--7, 10, 14, 15, 18-21, and 23. As Appellants do not present separate arguments with respect to dependent claims 12, 13, 16, and 17, we likewise sustain the rejection of these claims as well. DECISION We AFFIRM the Examiner's decision to reject claims 1, 4--7, 10, 12- 21, and 23. 1 Appellants contend, for the first time in the Reply Brief, that "Durkin does not teach or make it obvious to arrange a laser diode as claimed ... with the emitting surface of the laser diode so close to the outer surface of the application end of the device that the divergent beam is captured at the skin in a treatment spot with an area of less than 1.0 mm2." Reply Br. 4. Our rules do not allow such new argument without good cause. 3 7 C.F .R. Â§ 41.41 (b )(2 ). Appellants fail to provide good cause for the new argument. See Reply Br. 7-9. 6 Appeal2018-004875 Application 13/366,256 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 7