Ex Parte Shadduck

Patent Trial and Appeal Board

Feb 9, 2018

13620164 (P.T.A.B. Feb. 9, 2018)

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.
13/620,164 09/14/2012 John H. Shadduck EDGE.004C4 6427
20995 7590 02/13/2018
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
BUI, VY Q
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
02/13/2018 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):
jayna.cartee@knobbe.com
efiling @ knobbe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN H. SHADDUCK
Appeal 2016-003 6501
Application 13/620,1642
Technology Center 3700
Before KENNETH G. SCHOPFER, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
5—27. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief (“Appeal Br.,” filed Aug. 13,
2015) and Reply Brief (“Reply Br.,” filed Feb. 29, 2016), and the
Examiner’s Answer (“Ans.,” mailed Dec. 31, 2015) and Final Office Action
(“Final Act.,” mailed Aug. 15, 2014). Appellant’s request for an oral
hearing has been waived. See Waiver of Hearing by Appellant, filed Jan. 16,
2018.
2 According to Appellant, “[t]he real parties in interest are Axia
Medsciences, LLC the assignee of record of the present application and
Edge Systems LLC the exclusive licensee of the present application.”
Appeal Br. 3.
Appeal 2016-003650
Application 13/620,164
BACKGROUND
According to Appellant:
The present invention relates to devices for dermatology
and more particularly to a hand-held instrument with a working
end that carries (i) a negative pressure aspiration system, (ii) a
source for delivery of a sterile fluids to the skin; and (iii) a skin
interface surface in the working end that has specially shape
structure for abrading surface layers of the patient’s epidermis
as the working end is moved over the patient’s skin while at the
same time causing rapid penetration of the fluids into the skin
for therapeutic purposes.
Spec. 12.
ILLUSTRATIVE CLAIM
Claim 5 is illustrative of the appealed claims and recites:
5. A handheld device for resurfacing a skin surface,
comprising:
a body comprising a housing;
a working end portion removably attached to a first end
of the body, the working end portion comprising a distal end
configured to contact a skin surface being treated by the device,
wherein the working end portion comprises a perimeter along
the distal end, an entirety of the perimeter extending along a
single plane;
an abrasive surface entirely surrounded by the perimeter
of the working end portion, the abrasive surface configured to
abrade skin when the abrasive surface is moved relative to the
skin surface; and
at least one opening positioned between the perimeter of
the working end portion and the abrasive surface, wherein the at
least one opening is configured to be in fluid communication
with a vacuum source via at least one passageway to aspirate
skin debris away from the working end portion when the
vacuum source is activated.
Appeal Br. 11.
2
Appeal 2016-003650
Application 13/620,164
REJECTIONS
1. The Examiner rejects claims 5—27 on the ground of nonstatutory double
patenting.
2. The Examiner rejects claims 5—7, 10-22,3 and 25—27 under 35 U.S.C.
§ 102(e) as anticipated by Ramey.4
3. The Examiner rejections claims 8—10 and 23—25 under 35 U.S.C.
§ 103(a) as unpatentable over Ramey in view of Parkin.5
DISCUSSION
Double Patenting
Appellant does not present arguments regarding the double patenting
rejection and requests only that they “be held in abeyance until claims in this
case are indicated as being in condition for allowance.” Appeal Br. 6.
Accordingly, we summarily sustain this rejection.
Anticipation
We are persuaded of reversible error with respect to the anticipation
rejection because we agree with Appellant that the Examiner has not shown
that Ramey discloses an abrasive surface or structure that is configured to
abrade skin, as required by independent claims 5, 13, and 18. See Appeal
Br. 6-8.
With respect to claims 5, 13, and 18, the Examiner finds, inter alia,
that Ramey discloses an “abrading member/structure 32” with an “abrasive
surface 34 [that] is configured to abrade skin when the abrasive surface is
3 Although the heading for this rejection does not include claim 22, the body
of the rejection makes clear that claim 22 is included in this rejection. See
Final Act. 3.
4 Ramey et al., US 2002/0151826 Al, pub. Oct. 17, 2002.
5 Parkin et al., US 6,432,113 Bl, iss. Aug. 13, 2002.
3
Appeal 2016-003650
Application 13/620,164
moved relative to the skin surface.” Final Act. 4. Further, in response to
Appellant’s arguments, the Examiner finds that the portions of Ramey cited
by Appellant do “not necessarily exclude ‘the broad, substantially flat
contact surface 34’ to be ‘an abrasive surface’ capable of abrading skin as
recited in [the independent claims].” Ans. 4 (emphasis omitted). Further,
the Examiner finds that abrasive may be interpreted to mean “causing
irritation,” and under this interpretation the surface 34 “is qualified” as an
abrasive surface. Id. at 5. Finally, the Examiner asserts:
Further, Ramey (F 4, section [0058]) discloses barrier 50
between skin 80 and flat surface 34 to “reduce or prevent
possible irritation from direct contact between skin 80 and the
device 10” (see section [0058]). ft is recognizable to a person
of ordinary skill in the art that at least substantially flat surface
34 of Ramey device will irritate, or wear skin 80 when Ramey
device 10 is rubbing directly on skin 80.
Id. at 6 (emphasis omitted).
Regarding the Examiner’s findings, we first note that the claims
require an abrasive surface that is “configured to abrade skin” rather than
merely a surface that is capable of abrading skin. Thus, the claims require
an abrasive surface that is designed to accomplish the function claimed, i.e.
it is designed to abrade skin. See Aspex Eyewear, Inc. v. Marchon Eyewear,
Inc., 672 F.3d. 1335, 1349 (Fed. Cir. 2012) (noting that claim language
“configured to” is construed more narrowly than “capable of’ and holding
that in cases where claim language including the phrase “adapted to” is to be
construed consistent with “configured to” language, it requires that the
structure must be “designed or configured to accomplish the specified
objective, not simply that [it] can be made to serve that purpose.”) Thus, to
the extent the Examiner simply relies on Ramey’s surface 34 as being
4
Appeal 2016-003650
Application 13/620,164
“capable of abrading skin,” the Examiner has not set forth a sufficient
showing of anticipation.
Further, we also find that Ramey’s contact surface 34 is not
configured to abrade skin even if we were to agree with the Examiner that
the term abrasive may be construed broadly to mean “causing irritation.” In
particular, we find that Ramey’s device, including surface 34, is designed or
configured to avoid irritation rather than being designed or configured to
cause irritation, as the claims require. Most significantly, Ramey discloses a
massaging device and that an object of the invention is to “reduce the
potential for skin irritation or abrasion.” Ramey 126. Further, Ramey
describes other objects of the invention as providing a device that avoids
pinching the skin and avoids uncomfortable contact with sharp edges. Id. at
1115, 27. Ramey also discloses that an object of the device is to provide a
device that avoids inhibiting or restricting movement of the device along the
skin of the patient. Id. at 125. Further, Ramey describes contact surface 34
of post 32 as a “substantially flat contact surface.” Id. at || 44, 53. Ramey
also discloses that “post 32 is designed to be substantially circular with
rounded edges adjoining the broad, substantially flat contact surface. A
relatively long radius of curvature used in rounding edges increases the
comfort to both patient and user and prevents uncomfortable contact with the
device.” Id. at 148. As indicated, we find that this evidence shows that
Ramey’s device, including Ramey’s post 32 and contact surface 34, is
designed to avoid irritating skin during use.
Based on the foregoing, we are persuaded of reversible error with
respect to the rejection of independent claims 5,13, and 18. Accordingly,
we do not sustain the rejection of those claims. We also do not sustain the
5
Appeal 2016-003650
Application 13/620,164
rejection of claims 6, 7, 10—12, 14—17, 19-22, and 25—27, each of which
depend from one of claims 5, 13, or 18.
Obviousness
With respect to the obviousness rejection, it is not readily apparent on
the record before us that Parkin cures the deficiency found above with
respect to the rejection of the independent claims. Accordingly, we do not
sustain the rejection of claims 8—10 and 23—25 over Ramey in view of
Parkin for the reasons discussed above.
CONCLUSION
We summarily AFFIRM the double patenting rejection of claims
5—27. We REVERSE the anticipation rejection of claims 5—7, 10-22, and
25—27. We REVERSE the obviousness rejection of claims 8—10 and 23—25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
6