Ex Parte Wagenaar Cacciola et alDownload PDFPatent Trial and Appeal BoardMar 18, 201612667242 (P.T.A.B. Mar. 18, 2016) Copy Citation 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 / -1 -1 -1 ,...,. -1 -1 A ') "TT T -1 • • -1 • , • , .. -1 -1 ,...,. ,_ TT r"I "" 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. 2 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. 3 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. 5 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: 6 Appeal2014-002504 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. 7 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 Copy with citationCopy as parenthetical citation