Ex Parte Wagenaar Cacciola et al

Patent Trial and Appeal Board

Mar 18, 2016

12667242 (P.T.A.B. Mar. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/667,242 12/30/2009 Giovanna Wagenaar Cacciola
24737 7590 03/22/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
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.
2007P00973WOUS 5446
EXAMINER
HAGAN, SEAN P
ART UNIT PAPER NUMBER
2828
NOTIFICATION DATE DELIVERY MODE
03/22/2016 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):
debbie.henn@philips.com
marianne.fox@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GIOVANNA WAGENAAR CACCIOLA,
YVONNE ELIZABETH DIETZENBACHER-JANSEN, and
ADRIAANTJE PIETERNELLA MOUWS-V AN ROSSUM
Appeal2014-002504
Application 12/667,242
Technology Center 2800
Before GEORGE C. BEST, N. WHITNEY WILSON, and JULIA HEANEY,
Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Action mailed March 4, 2013 ("Final Act."), finally rejecting claims 1,
1 According to Appellants, the real party in interest is Koninklijke Philips
Electronics N.V. (Appeal Br. 2).
Appeal2014-002504
Application 12/667,242
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0---11, u, ana 14.~ we nave Junsmcuon over me appeal unaer j) u.~.L.
§ 6(b ).
We affirm.
CLAIMED SUBJECT MATTER
Appellants' invention is directed to a skin treatment device (Abstract).
Details of the claimed invention are set forth in representative claim 1,
which is reproduced below from the Claims Appendix of the Appeal Brief:
1. Skin treatment device comprising radiation-emitting
means suitable for emitting a tanning-effective and/or anti-
acne effective amount of UV-light and a tanning-effective
and/or anti-acne effective amount ofblue light in the spectral
range from 400 to 440 nm,
wherein the radiation-emitting means are adapted to emit
UV-light with a erythemal weighted irradiance between 0.1
and 0.3 W/m2 for both UV-A (320-400 nm) and UV-B (260-
320 nm) ranges, and blue light with a power density between
200 and 500 W/m2 •
App. Br. 15 (Claims Appendix).
REJECTIONS
I. Claims 1 and 6---11 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Juestel3 in view of Island.4
2 Appellants do not list claim 1 as being under appeal in the Status of Claims
section of the Appeal Brief (Appeal Br. 2), but include it in the Claims
Appendix and discuss it throughout the Appeal Brief.
3 Juestel et al., U.S. Patent Pub. 2007/0060985 Al, published March 15,
2007.
4 Island et al., U.S. Patent Pub. 2004/0176823 Al, published September 9,
2004.
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Appeal2014-002504
Application 12/667,242
IL Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Juestel and Island, and further in view of
Lapatovich. 5
DISCUSSION
Appellants make arguments only with respect to claim 1 (see
generally Appeal Br. 4--13). Accordingly, the remaining claims will stand
or fall with claim 1. After consideration of the arguments and evidence set
forth in the Appeal Brief and the Reply Brief, we determine that Appellants
have not demonstrated reversible error in the rejection of claim 1, essentially
for the reasons set forth by the Examiner in the Answer and the Final Action.
We add the following for emphasis.
The Examiner finds that Juestel discloses each element of claim 1,
except that (1) Juestel does not disclose that its blue light has a power
density between 200 and 500 W/m2, and (2) a device where the UV-light is
emitted with a erythemal weighted irradiance between 0.1 and 0.3 W/m2 for
both UV-A (320-400 nm) and UV-B (260-320 nm) ranges (Final Act. 5---6).
With respect to element ( 1) above, the Examiner finds that Island
discloses blue light with a power density within the claimed range, and that
it would have been obvious to combine that blue light with Juestel' s device
because doing so "would enhance the teachings of Juestel by allowing for
treatment of acne ... instead of or in addition to tanning features" (Final
Act. 5).
With respect to element (2}-the erythemal weighted irradiance of the
5 Lapatovich et al., U.S. Patent Pub. 2004/0056600 Al, published March 25,
2004.
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Appeal2014-002504
Application 12/667,242
UV-A and UV-B ranges-the Examiner finds it would have been obvious
"to include UV emissions within the noted range so as to present safe UV
levels that are still consistent with a sunny day" because doing so would
simply constitute routine optimization (Final Act.).
Appellants make three substantive arguments urging reversal of the
obviousness rejection of claim 1. We address each in tum.
First, Appellants argue that Island does not teach a blue light having
the claimed power density of 200-500 W/m2 (Appeal Br. 6). Instead,
Appellants contend that the device described in Island and relied on by the
Examiner-the Omnilux Blue product-was actually prior art to the Island
reference, and that the rejection should have been made over Juestel in view
of Omnilux Blue, rather than Juestel in view of Island (Appeal Br. 6-7).
Appellants further suggest that the Examiner's alleged refusal to modify the
rejection to make the Omnilux Blue product the secondary reference was
prejudicial because it deprived them of information about the product
beyond what was disclosed in Island (Appeal Br. 7-8). 6
This argument is not persuasive. That some of the teachings of Island
are to what was known in the art prior to the invention of Island does not
mean that they were not disclosed in Island. A person of skill in the art
reading Island would understand that there was a known device for treating
acne which provided blue light having a wavelength of 407 nm at an
intensity of 40 mW/cm2 (equivalent to 400 W/m2) (Island, i-fi-12 and 26).
6 To the extent Appellants argue that they were deprived of the opportunity
to contest the rejection because of a lack of additional information about the
Omnilux Blue product, we note that the evidence attached to the Appeal
Brief has been considered and made part of the record. Thus, this argument
is moot.
4
Appeal2014-002504
Application 12/667,242
That it was described in Island as part of the prior art is not indicative of
error in the rejection. A patent is valuable for all it teaches to one of
ordinary skill in the art. In re Preda, 401 F .2d 825, 826 (CCP A 1968); see
also In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968).
Second, Appellants contend that because literature associated with the
Onmilux Blue product teaches that it (the Omnilux Blue product) does not
emit any UV radiation so that it can be used without subjecting the patient to
UV radiation, it would not have been obvious to combine its teachings with
Juestel, which is plainly directed to a device for emitting UV radiation
(Appeal Br. 7-8).
Appellants are correct that an obviousness rejection must provide a
reason why a person of skill in the art would have modified or combined the
cited art to arrive at the claimed invention (Appeal Br. 8-9). In re Kahn,
441F.3d977, 988 (Fed. Cir 2006) (examiner must articulate some
"reasoning with some rational underpinning to support the legal conclusion
of obviousness.") However, in this instance the Examiner has explained
why a person of skill in the art would have combined a blue light emitter as
disclosed in Island (Omnilux Blue) with Juestel' s device: Juestel discloses
that its UV-emitting tanning device also emits blue light, while the Omnilux
Blue product treats acne with blue light have the claimed wavelength and
intensity. Thus, as set forth by the Examiner, "the use of a power level of
blue light as taught by Island would enhance the teachings of Juestel by
allowing for treatment of acne ... instead of or in addition to tanning
features" (Final Act. 5). In other words, Juestel teaches that its tanning
device also emits blue light, while Island teaches that blue light of a specific
wavelength and intensity is useful for treating acne.
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Appeal2014-002504
Application 12/667,242
Therefore, it would have been obvious to use the blue light having the
wavelength and intensity disclosed by Island in order to be able to treat acne
at the same time as tanning the patient. This reasoning meets the
requirement that Examiner must articulate some "reasoning with some
rational underpinning to support the legal conclusion of obviousness."
Kahn, 441 F.3d at 988.
With regards to Appellants' argument that Island/Omnilux Blue
teaches away from combining its blue light source with a UV radiation
source, the Examiner has provided a reason why a person of ordinary skill in
the art would have made the proposed combination. That Island may not
itself indicate why combination would have been obvious does not require
reversal of the rejection. "A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant." In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see also KSR Int'! Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007). In this case, the Examiner finds that Juestel
teaches that its UV-emitting device can also emit blue light. Appellants'
have not persuasively shown that a person of skill in the art would have been
discouraged from having the blue light be of the wavelength and intensity
disclosed by Island and set forth in claim 1.
Third, Appellants argue that the claimed invention provides
unexpected results because, as allegedly shown in the Specification, the
claimed invention combines blue light, in a much higher intensity than that
of the provided UV light, to attain comparable tanning/anti-acne effects but
with a reduced UV light exposure. This argument is not persuasive:
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Application 12/667,242
In order for a showing of "unexpected results" to be probative
evidence of non-obviousness, it falls upon the applicant to at least
establish: (1) that there actually is a difference between the results
obtained through the claimed invention and those of the prior art, In re
Klosak, 455 F.2d 1077, 59 CCPA 862 (1972); and (2) that the
difference actually obtained would not have been expected by one
skilled in the art at the time of invention, Id.; In re D 'Ancicco, 439
F.2d 1244, 58 CCPA 1057 (1971).
In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (bold italics added).
In this instance, Appellants state: "Appellants submit that the claimed
invention's ability to attain the same tanning effects by reducing the UV
Exposure by Yz is surprising" (Appeal Br. 11; see also Reply Br. 7). No
objective evidence that these results would have been thought to be
surprising is presented. Thus, the allegation that the cited results are
surprising or unexpected is supported only by attorney argument, not any
evidence of record. Accordingly, the attempted showing of unexpected
results as a means to overcome the prima facie case of obviousness fails.
Freeman, 474 F.2d at 1324.7
CONCLUSION
We AFFIRM the rejection of claims 1and6-11under35 U.S.C.
§ 103(a) as being unpatentable over Juestel in view of Island.
7 In addition, the experimental results cited by Appellants at Table 1 of the
Specification are not commensurate in scope with the breadth of the claims.
For example, the intensity of the blue light in Experiment 4, the experiment
relied on by Appellants, is 300 W/m2, which is only a single point within the
claimed range of 200 to 500 W/m2. There is no attempt to show what the
results would be, for example, if the intensity of the blue light were 200
W/m2.
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Appeal2014-002504
Application 12/667,242
We AFFIRivI the rejection of claims 13 and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Juestel and Island, and further in view
of Lapatovich.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
8