Ex Parte Stamatas et al

Patent Trial and Appeal Board

Mar 8, 2017

10735188 (P.T.A.B. Mar. 8, 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.
10/735,188 12/12/2003 Georgios Stamatas J&J-5092 2589
27777 7590 03/10/2017
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
EXAMINER
IP, JASON M
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
03/10/2017 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):
j nju spatent @ corn s .j nj. com
lhowd@its.jnj.com
pair_jnj @ firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGIOS STAMATAS and NIKIFOROS KOLLIAS1
Appeal 2015-003469
Application 10/735,188
Technology Center 3700
Before LORA M. GREEN, MELANIE L. McCOLLUM, and ULRIKE W.
JENKS, Administrative Patent Judges.
McCOLLUM, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a method
of determining the effect of a skin treatment. The Examiner has rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
1 Appellants identify the real party in interest as Johnson & Johnson
Consumer Companies, Inc., which is a subsidiary of Johnson & Johnson
(Br. 2).
Appeal 2015-003469
Application 10/735,188
STATEMENT OF THE CASE
Claims 11—43 are on appeal (Br.2 2). Claim 11 is illustrative and
reads as follows:
11. A method of treating the skin of a subject and determining the
effect of the treatment on the skin of the subject, said method comprising:
(i) treating an area of skin with a treatment selected from the group
consisting of: cosmetic treatments, pharmaceutical treatments, laser
treatment, and abrasive treatment;
(ii) exposing the treated area of skin to a first exposure radiation to
induce the treated area of skin to emit a first fluorescent emission, wherein
the first exposure radiation comprises primarily of wavelengths of from
about 290 nm to about 300 nm and wherein the treated area of skin was
exposed to said treatment;
(iii) measuring the intensity of the first fluorescent emission having a
wavelength of from about 320 nm to about 350 nm;
(iv) exposing the treated area of skin to a second exposure radiation to
induce the treated area of skin to emit a second fluorescent emission,
wherein the second exposure radiation comprises primarily of wavelengths
of from about 330 nm to about 420 nm;
(v) measuring the intensity of the second fluorescent emission having
a wavelength of from about 380 nm to about 470 nm;
(vi) calculating a ratio of the intensity measured in step (iii) to the
intensity measured in step (v) to cancel the effect of skin pigmentation of the
treated area of skin on the fluorescent emissions being measured;
(vii) repeating steps (ii) to (vi) for an untreated area of skin, wherein
the untreated area of skin was not exposed to said treatment; and
(viii) comparing the ratio for the treated area of skin to the ratio for
the untreated area of skin; and
2 “Br.” refers to the Appeal Brief filed November 3, 2014. We note that a
Supplemental Appeal Brief was filed on December 8, 2014, which was after
the date of the Examiner’s Answer. However, the statements in the initial
Appeal Brief that we rely on herein appear to be repeated in the
Supplemental Appeal Brief.
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Appeal 2015-003469
Application 10/735,188
(ix) determining the effect of the skin treatment based on the
compared ratios.
Claims 11—43 stand rejected under 35 U.S.C. § 103(a) as obvious over
Trepagnier et al. (US 2002/0016534 Al, Feb. 7, 2002) in view of Leffell et
al. (US 4,894,547, Jan. 16, 1990) (Ans. 3).
The Examiner finds:
Trepagnier teaches a method of determining and reporting the
effect of a treatment to the skin of a subject by measuring factors
that assess changes of structural matrix of the skin, cells of skin,
and other cellular components reflective of metabolic activity
(cellular components reflective of the health of the skin) such as
tryptophan and NADH .... To measure tryptophan and NADH
respectively, Trepagnier teaches directing light in the about
295 nm range causing the skin to fluoresce at approximately
345 nm, and directing light in the about 370 nm range causing
the skin to fluoresce at approximately 420-520 nm . . . (exposing
at about 295 nm and about 390-410 nm and measuring at about
340 nm and 440 nm) and calculating relative peak ratios from the
measured fluorescence .... The results can then be compared to
measurements of developed standards or surrounding normal
tissue for use in measuring treatment related changes including
topical steroid application (pharmaceutical treatments').
(Id.) The Examiner also finds that, “[ajlthough Trepagnier does not
explicitly disclose calculating a ratio to cancel the effect of skin
pigmentation, Trepagnier does teach that differences in pigmentation can be
eliminated through selection of control input” (id.).
In addition, the Examiner finds:
Leffell discloses directing light at predetermined ultraviolet
wavelength ranges at sun-exposed skin such as the forehead (skin
having undergone treatment), measuring fluorescence emitted,
and creating a ratio of the measured fluorescent intensities. This
ratio is then compared to a ratio of the fluorescent intensity that
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Appeal 2015-003469
Application 10/735,188
is induced from directing light at a predetermined ultraviolet
wavelength at non-sun-exposed skin such as the buttocks (skin
not exposed to the treatment). By comparing the ratios one can
determine the effect of the sun has on the skin (effect of skin
treatment) .... Leffell also discloses that besides sun exposed
skin, his invention can be used to monitor improvement in skin
relating to treatment including treatments' in the pharmaceutical
industry (pharmaceutical treatments') . . . and in cosmetic
treatment centers (cosmetic treatments') and recorded (reported)
.... In order to monitor improvement in skin it would be obvious
that one must monitor the same area in order to be able to tell
how the skin improves over time.
(Id. at 4.)
The Examiner concludes:
[I]t would have been obvious to one skilled in the art at the time
of the invention to create a ratio of measured fluorescent
intensities as taught by Leffell with the measured fluorescent
intensities of tryptophan and NADH as taught by Trepagnier for
the purpose of creating relative peak ratios to analyze changes of
structural matrix of the skin, cells of skin, and other cellular
components reflective of metabolic activity.
(Id.)
ANALYSIS
Appellants argue that “neither Trepagnier nor Leffell, alone or in
combination, shows or suggests ah of the exposures, measurements, and
calculations recited in independent claim 11” (Br. 6). In particular,
Appellants argue:
Trepagnier does not teach or suggest calculating the ratio of the
intensity of two different fluorescent emissions (induced by two
different exposure radiations) at a treated area of skin, and then
comparing such ratio with a similar ratio (of the intensity of two
different fluorescent emissions induced, respectively, by two
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Appeal 2015-003469
Application 10/735,188
different exposure radiations) obtained from measurements at an
untreated area of skin.
{Id. at 6—7.) In addition, Appellants argue that “Leffell does not show or
suggest measuring fluorescence induced by exposure to two different
exposure radiation wavelengths (which induce peak intensities of
fluorescence at different wavelengths) at the same site to normalize the
measurements to cancel the effect of pigmentation” {id. at 8).
In response, the Examiner argues:
Although Trepagnier does not explicitly disclose the use of two
consecutive emissions as has been claimed, Trepagnier clearly
discloses to one of ordinary skill that different emissions at
different wavelengths can be elicited depending on the target one
is attempting to fluoresce. Specifically, in paragraph [0057] of
Trepagnier, it is taught that targets such as tryptophan, NADH,
and FAD all have wavelengths where their fluorescence is
optimal. Thus one of ordinary skill would have found it obvious
to expose an area of interest with more than one specific
wavelength because there may be more than one target to study.
(Ans. 6.) With regard to Leffell, the Examiner argues “that the claims’
recitation of using two exposures instead of one would have been obvious to
one of ordinary skill since different exposures under different wavelengths
would elicit fluorescence of different target molecules which would be
helpful for the study of those molecules” {id. at 8).
We conclude that Appellants have the better position. Although the
Examiner explains why it would have been obvious to expose an area of
interest to more than one specific wavelength (Ans. 6), we conclude that the
Examiner does not adequately explain why it would have been obvious to
calculate a ratio of the two resulting measurements and compare this ratio to
a similar ratio for an untreated area of skin.
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Appeal 2015-003469
Application 10/735,188
In this regard, we note that Leffell teaches “a ratio of the measured
fluorescent intensity of skin at two preselected wavelengths and, further,
employing the ratio to determine the degree of long term exposure of the
skin to solar ultraviolet radiation” (Leffell, col. 2,11. 60-64). However, as
noted by Appellants (Br. 8), the Examiner does not identify, nor do we see,
that Leffell teaches that these two measurements were from different
exposure radiations, nor do we conclude that the Examiner has adequately
explained why it would have been obvious to do so.
We note the Examiner’s statement that this would have been done “to
analyze changes of structural matrix of the skin, cells of skin, and other
cellular components reflective of metabolic activity” (Ans. 4). However, the
Examiner does not adequately explain why it would have been obvious that
the claimed ratios would aid in this analysis.
CONCLUSION
The evidence does not support the Examiner’s conclusion that
Trepagnier and Leffell suggest the claimed methods. We therefore reverse
the obviousness rejection.
REVERSED
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