Johnson & Johnson Consummer Inc.

Patent Trials and Appeals Board

Jan 11, 2022

2021005373 (P.T.A.B. Jan. 11, 2022)

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. 15/271,299 09/21/2016 Alexandru Paunescu MCP5266USNP2 5459 27777 7590 01/11/2022 JOSEPH F. SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 EXAMINER ARBLE, JESSICA R ART UNIT PAPER NUMBER 3781 NOTIFICATION DATE DELIVERY MODE 01/11/2022 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): jnjuspatent@its.jnj.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 ALEXANDRU PAUNESCU, JYOTSNA PATURI, YING SUN, and JEFFREY M. WU Appeal 2021-005373 Application 15/271,299 Technology Center 3700 Before BRETT C. MARTIN, JEREMY M. PLENZLER, and MICHAEL L. WOODS, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Johnson & Johnson Consumer Inc. Appeal Br. 2. Appeal 2021-005373 Application 15/271,299 2 CLAIMED SUBJECT MATTER The claims are directed to devices and methods for enhancing the topical application of a benefit agent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for growing or regrowing hair on the skin and/or scalp, comprising the steps of: a. providing a topical composition useful for propagation of ultrasound waves from an ultrasound device; b. applying the topical composition to an area of the skin or scalp in need of treatment; c. providing a device having a power source and an acoustic transducer electrically connected to the power source, the transducer calibrated to generate acoustic energy at a frequency ranging from about 20 kHz to about 3000 kHz; d. orienting the device such that any ultrasound waves generated by the transducer are projected at a projection angle ɵ other than perpendicular relative to the surface of skin at the area on which the topical composition was applied; and e. delivering the ultrasound waves to the area on which the topical composition was applied while maintaining the projection angle eat other than perpendicular relative to the surface of the skin at the area on which the topical composition was applied. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Makin US 2006/0111744 A1 May 25, 2006 Kim US 2011/0251523 A1 Oct. 13, 2011 Tamura US 2013/0102686 A1 Apr. 25, 2013 Bock US 2015/0313993 A1 Nov. 5, 2015 Appeal 2021-005373 Application 15/271,299 3 REJECTIONS Claims 1, 2, 6-17, 20, 21, and 24 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bock and Kim. Final Act. 4. Claims 4 and 5 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bock, Kim, and Makin. Id. at 8. Claims 3, 18, 19, 22, and 23 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bock, Kim, and Tamura. Id. OPINION Bock and Kim Appellant argues that the Examiner’s combination of Bock and Kim is improper because Kim’s “heating is diametrically opposed to Boc[k]’s principle of non-(or no) tissue heating - frustrating its intended principle of operation.” Reply Br. 2. This argument does not take into account the Examiner’s rejection and what is actually being combined. The Examiner is not using Kim’s heat treatment, but only combining the known use of an angled orientation of the ultrasound waves from Kim into Bock’s treatment. As the Examiner states, the pertinent teaching from Kim is that because “the device is not oriented perpendicularly to the patient’s skin, some of the energy from the device is radiated outwardly (in the x-direction) rather than downwardly (in the y-direction), reducing the amount of energy that comes into contact with the specific point of the skin.” Ans. 4. From this teaching, one of skill in the art would understand that it may be desirable not to focus all of the ultrasound energy onto the patient’s skin and one way to accomplish that is to angle the projection angle of the ultrasound device. Contrary to Appellant’s argument, combining this teaching of Kim with Bock actually enhances Bock’s desire not to heat the skin because it would Appeal 2021-005373 Application 15/271,299 4 direct even less energy at the skin than is already done with Bock. As such, it would further reduce the chance of providing too much energy that could undesirably heat the skin. As to Tamura, Appellant merely argues that Tamura fails to address the alleged deficiencies of the Examiner’s combination. Having found no such deficiencies above with respect to Kim or below with respect to Makin, we need not address Tamura. Bock/Kim and Makin As with Kim, Appellant alleges that the Examiner’s combination of Bock and Makin “is diametrically opposed.” Reply Br. 3. This is allegedly so because the Examiner’s combination “would frustrate the principle of operation of . . . Makin by Bock.” Appeal Br. 7. As the Examiner states, however, “Makin itself is not being modified, and therefore the principle of operation of Makin is not being changed.” Ans. 6. The Examiner also notes that “Makin is cited simply to teach a time period for ultrasound delivery.” Id. The Examiner has the better position on this matter. As the Examiner points out in the rejection, “Bock/Kim is silent whether the ultrasound is delivered for a period of time” as claimed. Final Act. 8. Given this silence, one of ordinary skill in the art would look to the prior art to find a suitable treatment time. In this case, the Examiner looked to Makin for teaching the claimed ultrasound duration “for the purpose of allowing a desired amount of energy to be applied to the treatment area.” Id. Appellant does not dispute the findings related to Makin’s treatment time. Here, the Examiner is only using the treatment time from Makin and not the actual treatment intensities. Those are taken from Bock. Appellant has not explained why using an ultrasound treatment duration from Makin that allows the desired Appeal 2021-005373 Application 15/271,299 5 amount of energy to be applied within the context of Bock would be improper. Accordingly, we sustain the Examiner’s rejections. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 6-17, 20, 21, 24 103 Bock, Kim 1, 2, 6-17, 20, 21, 24 4, 5 103 Bock, Kim, Makin 4, 5 3, 18, 19, 22, 23 103 Bock, Kim, Tamura 3, 18, 19, 22, 23 Overall Outcome 1-24 TIME PERIOD FOR RESPONSE 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)(1)(iv). AFFIRMED