Jonathan Isserow et al.

Patent Trials and Appeals Board

Sep 23, 2019

14747523 - (D) (P.T.A.B. Sep. 23, 2019)

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.
14/747,523 06/23/2015 Jonathan Isserow 1536 IS 11 CIP 3 1108
75207 7590 09/23/2019
Gearhart Law LLC
41 River Road
Suite 1A
Summit, NJ 07901
EXAMINER
EKRAMI, YASAMIN
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
09/23/2019 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):
patent@gearhartlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JONATHAN ISSEROW and LAURA ISSEROW
____________

Appeal 2019-0061121
Application 14/747,5232
Technology Center 3700
____________

Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, 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 1–22. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Our decision references the Appeal Brief (“Appeal Br.,” filed Feb. 12,
2019), the Reply Brief (“Reply Br.,” filed July 31, 2019), the Examiner’s
Answer (“Ans.,” mailed June 28, 2019), the Non-Final Office Action (“Non-
Final Act.,” mailed July 12, 2018), and the Specification (“Spec.,” filed June
23, 2015).
2 According to Appellants, the real parties in interest are Jonathan Isserow
and Laura Isserow. Appeal Br. 1.
Appeal 2019-006112
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BACKGROUND
The Specification discloses that “[t]he present invention and its
embodiments relate to a wound and/or skin care treatment device and related
methods of use.” Spec. 2, ll. 20–21.
CLAIMS
Claims 1, 13, 14, and 22 are the independent claims on appeal.
Claim 1 is illustrative of the appealed claims and recites:
1. A method of medical treatment comprising the steps of:
providing a medical treatment device, the medical
treatment device comprising,
a therapeutic medium,
wherein the therapeutic medium is
configured to produce temperatures covering a
range of about -10°C to about 50°C;
an applicator connected to the therapeutic medium,
the applicator comprising,
an application layer having an application
surface and a receiving surface with the application
layer being configured to be applied to a skin
surface of a user, and a conductive layer having a
front side and a back side,
wherein the conductive layer is
extensively affixed to and completely covers
the receiving surface of the application layer;
a plurality of flexible lighting mechanisms being
interwoven with fibers of the application layer;
a plurality of flexible electrodes integrated with the
application layer;
a power source connected to the therapeutic
medium,
wherein the power source is at least one
battery; and
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a wireless transceiver coupled to the power source
and configured to provide bidirectional communication
between the treatment device and a secondary electronic
device,
wherein patient information is sent in real
time from the treatment device to the secondary
electronic device;
applying the medical treatment device to at least one
patient for a predetermined time frame before the at least one
patient undergoes at least one medical procedure.
Appeal Br. 25–26.
REJECTIONS
1. The Examiner rejects claims 1–22 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
2. The Examiner rejects claims 1–4, 6, 7, and 19–21 under 35 U.S.C. § 103
as unpatentable over Voznesensky3 in view of Klein,4 Fruitman, 5
Vetanze,6 Zhang, 7 Jacobs,8 Ein, 9 and Wagner.10
3. The Examiner rejects claim 5 under 35 U.S.C. § 103 as unpatentable over
Voznesensky in view of Klein, Fruitman, Vetanze, Zhang, Jacobs, Ein,
Wagner, and Dunbar.11

3 Voznesensky et al., US 6,567,696 B2, iss. May 20, 2003.
4 Klein, US 4,930,317, iss. June 5, 1990.
5 Fruitman et al., US 2006/0142816 A1, pub. June 29, 2006.
6 Vetanze, US 7,503,927 B1, iss. Mar. 17, 2009.
7 Zhang et al., US 2008/0170982 A1, pub. July 17, 2008.
8 Jacobs, US 2008/0046047 A1, pub. Feb. 21, 2008.
9 Ein, US 2002/0026226 A1, pub. Feb. 28, 2002.
10 Wagner, V.D. (2007). Effect of a preoperative warming intervention on
the acute phase response of surgical stress. Tampa, FL: University of South
Florida.
11 Dunbar et al., US 2006/0195168 A1, pub. Aug. 31, 2006.
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4. The Examiner rejects claims 8, 10, and 11 under 35 U.S.C. § 103 as
unpatentable over Voznesensky in view of Klein, Fruitman, Vetanze,
Zhang, Jacobs, Ein, Wagner, and Scott.12
5. The Examiner rejects claims 9, 12, and 13 under 35 U.S.C. § 103 as
unpatentable over Voznesensky in view of Klein, Fruitman, Vetanze,
Zhang, Jacobs, Ein, Wagner, Scott, and Dunbar.
6. The Examiner rejects claims 14–18 under 35 U.S.C. § 103 as
unpatentable over Voznesensky in view of Klein, Fruitman, Vetanze,
Zhang, Jacobs, Ein, and Dunbar.
7. The Examiner rejects claim 22 under 35 U.S.C. § 103 as unpatentable
over Voznesensky in view of Klein, Fruitman, Vetanze, Zhang, Jacobs,
Ein, and Scott.
DISCUSSION
Written Description
The Examiner finds that each of the independent claims lacks written
description support for the therapeutic medium configured to produce
temperatures in the range of -10°C to 50°C. Non-Final Act. 5. The
Examiner appears to acknowledge that the Specification discloses the
claimed temperature range, but the Examiner finds “that the Specification
does not implicitly or explicitly teach how the cooling is being achieved and
mainly with what means is the temperature range being applied and can
‘alternate’ between hot and cold treatments.” Id. at 6.

12 Scott, E.M. (2007). Systemic warming before, during, and after major
abdominal surgery reduced postoperative complications more than warming
during surgery only. Evidenced-Based Nursing, 10(4), 114–114. doi:
10.1136/ebn.10.4.114.
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We agree with Appellants that the Specification provides explicit
support for this limitation. See Appeal Br. 18. For example, the
Specification discloses “[i]n one embodiment there is a treatment device
having a chemical heat source, wherein the chemical heat source can
produce a temperature in the range of about -10°C to about 50°C;” and that
“the heat source 10 may be capable of producing temperatures in the range
of about -30°C to about 90°C and more preferably from about -10°C to
about 50°C.” Spec. 8, ll. 1–3; 26, ll. 2–4. We find this disclosure sufficient
to reasonably convey to persons of ordinary skill in the art that Appellants
were in possession of the claimed invention such that the written description
requirement has been satisfied. See, e.g., In re Kaslow, 707 F.2d 1366, 1375
(Fed. Cir. 1983).
Accordingly, we do not sustain this rejection.
Obviousness
We are persuaded of reversible error with respect to the obviousness
rejection of each independent claim to the extent it relies on adding Klein’s
conductive layer to Voznesensky’s device.
With respect to claim 1, for example, the Examiner finds that
Voznesensky teaches an application layer that is conductive but “is silent
about specifically teaching a conductive layer having a front side and a back
side, wherein the conductive layer is extensively affixed to and completely
covers the receiving surface of the application layer.” Non-Final Act. 8.
The Examiner finds that Klein teaches a therapeutic device with a
conductive layer with front and back sides that “is extensively affixed to and
completely covers the receiving surface of the application layer.” Id. The
Examiner explains that Klein’s plate 34 is made of conductive material and
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can be attached to pad 32 to extend the cooling area and that “[t]he
conductive plate provides an attachment means for connecting the
thermoelectric heat pump to the pad and also provides an extension of the
hot/cold plate of a thermoelectric heat pump of a hot/cold assembly.” Id.
The Examiner concludes that
Therefore, it would have been obvious to one of ordinary
skill in the art to modify the heat transfer medium 16 in
Voznesensky to further include a conductive layer wherein the
conductive layer is affixed to and completely covers the
receiving surface of the application layer for the purposes of
extending the therapeutic area as taught by Klein.
Id. at 8–9. In the Answer, the Examiner explains that the combination
would result in “adding the thin plate of Klein between the thermo-
conductive outer layer 16 and heater/cooler” resulting in the “transfer
thermal energy from the heater/cooler to the thermo-conductive layer and
electrodes.” Ans. 5.
We determine that the Examiner does not provide an adequate reason
with the requisite rational underpinnings to support the conclusion of
obviousness with respect to each of the independent claims. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In particular, we agree with
Appellants that the Examiner has not identified an adequate reason to add
another conductive layer to Voznesensky’s device. See Appeal Br. 19.
Voznesensky discloses a heater/cooler 22 that is attached to a heat
transfer medium 16. Voznesensky Fig. 2. Voznesensky discloses that the
heat transfer medium “preferably comprises an outer cover of thermo-
conductive material.” Id. at col. 6, ll. 29–32. Voznesensky also discloses
that the heat transfer medium has openings in which electrodes are placed
such that they are electrically isolated from the heat transfer area. Id. at
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col. 6, ll. 33–36. Thus, Voznesensky discloses a heat transfer medium that is
completely covered by a conductive material except at the openings in which
electrodes are inserted.
We determine that the Examiner’s reasoning is lacking for two
reasons. First, to the extent the Examiner indicates that a second conductive
layer could be added to completely cover the application layer,
Voznesensky’s thermo-conductive covering already appears to do this.
Second, to the extent the Examiner is proposing that a second conductive
layer could be added to cover the openings in which electrodes are placed,
we find that, at best, it is unclear how Voznesensky’s electrodes would
function with such a covering, and at worst, we agree with Appellants that
this would interfere with the functioning of those electrodes given that
Voznesensky discloses that the electrodes are electrically isolated from the
heat transfer area. See Appeal Br. 19. For these reasons, we determine that
the Examiner has not set forth an adequate reason to support the proposed
combination.
Based on the foregoing, we do not sustain the rejection of independent
claim 1. Because the Examiner relies on the same findings and reasoning
with respect to the rejections of the other independent claims and the
dependent claims, we also do not sustain the rejections of claims 2–22.
CONCLUSION
We REVERSE the rejections of claims 1–22.
REVERSED