Jonathan Isserow et al.

Patent Trials and Appeals Board

Sep 23, 2019

14106198 - (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.
14/106,198 12/13/2013 Jonathan Isserow 1536 IS 11 CIP 2 2801
75207 7590 09/23/2019
Gearhart Law LLC
41 River Road
Suite 1A
Summit, NJ 07901
EXAMINER
CLARK, RYAN T
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 2019-0024191
Application 14/106,1982
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 21, 24, 27–38, and 40. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 Our decision references the Appeal Brief (“Appeal Br.,” filed Feb. 8,
2018), the Reply Brief (“Reply Br.,” filed Jan. 28, 2019), the Examiner’s
Answer (“Ans.,” mailed Dec. 11, 2018), the Non-Final Office Action (“Non-
Final Act.,” mailed Nov. 2, 2017), and the Specification (“Spec.,” filed
Dec. 13, 2013).
2 According to Appellants, the real parties in interest are Jonathan Isserow
and Laura Isserow. Appeal Br. 1.
Appeal 2019-002419
Application 14/106,198

2
BACKGROUND
The Specification discloses that “[t]he current invention relates to a
wound or skin care treatment device and related methods.” Spec. 1, ll. 17–
18.
CLAIMS
Claims 21 and 40 are the independent claims on appeal. Claim 21 is
illustrative of the appealed claims and recites:
21. A 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 directly
affixed to and completely covers the receiving
surface of the application layer, and
wherein the heat application layer has an
adhesive material disposed on a portion of the
application surface;
a power source connected to the treatment device,
empowering a plurality of flexible lighting mechanisms,
wherein the power source is at least one battery;
a plurality of flexible electrodes integrated with the
application layer,
wherein the plurality of flexible electrodes are
coupled to the power source providing a mechanism for
Appeal 2019-002419
Application 14/106,198

3
neuromuscular stimulation in a range of 1 Hz to 160 Hz,
and
wherein the plurality of flexible electrodes are
comprised of a flexible, conductive polymer;
the plurality of flexible lighting mechanisms being
interwoven with fibers of the application layer,
wherein the plurality of flexible lighting
mechanisms are configured to emit at least one of red
wavelength light and blue wavelength light, and wherein
the plurality of flexible lighting mechanisms have a
quantum efficiency of 0.65 to 0.95; and
a control mechanism for changing an operative state of the
plurality of flexible lighting mechanisms.
Appeal Br. 11–13 (emphasis added).
REJECTIONS
1. The Examiner rejects claim 40 under 35 U.S.C § 112(b) as indefinite.
2. The Examiner rejects claims 21, 24, 27, 29–30, 33–38, and 40 under
35 U.S.C. § 103 as unpatentable over Leftly3 in view of Jacobs,4 Zhang
982,5 Ein,6 Fruitman,7 Zhang 583,8 and Aydt.9
3. The Examiner rejects claim 28 under 35 U.S.C. § 103 as unpatentable
over Leftly in view of Jacobs, Zhang 982, Ein, Fruitman, Zhang 583,
Aydt, and Quick.10

3 Leftly et al., US 2014/0364778 A1, pub. Dec. 11, 2014.
4 Jacobs, US 2008/0046047 A1, pub. Feb. 21, 2008.
5 Zhang et al., US 2008/0170982 A1, pub. July 17, 2008.
6 Ein, US 2002/0026226 A1, pub. Feb. 28, 2002.
7 Fruitman et al., US 2006/0142816 A1, pub. June 29, 2006.
8 Zhang et al., US 5,658,583, iss. Aug. 19, 1997.
9 Aydt et al., US 9,492,681 B2, iss. Nov. 15, 2016.
10 Quick, “Color-changing, heat-sensitive bandage indicates infection,”
Gizmag, June 9, 2011.
Appeal 2019-002419
Application 14/106,198

4
4. The Examiner rejects claim 31 under 35 U.S.C. § 103 as unpatentable
over Leftly in view of Jacobs, Zhang 982, Ein, Fruitman, Zhang 583,
Aydt, and Khodak.11
5. The Examiner rejects claim 32 under 35 U.S.C. § 103 as unpatentable
over Leftly in view of Jacobs, Zhang 982, Ein, Fruitman, Zhang 583,
Aydt, and Moreshead.12
DISCUSSION
Indefiniteness
The Examiner finds that claim 40 is indefinite because the limitation
“a plurality of flexible electrodes integrated with the application layer”
appears in the claim twice such that “[i]t is unclear if there is a different set
of flexible electrodes.” Non-Final Act. 3. Appellant does not address this
rejection and the Examiner does not address it in the Answer. We agree
with the Examiner that claim 40 includes duplicative language, and we see
no indication in the record that this claim has been amended to correct the
claim language. Accordingly, we sustain this rejection.
Obviousness
With respect to each of the independent claims, the Examiner
acknowledges that the art of record “is silent regarding wherein the plurality
of flexible lighting mechanisms have a quantum efficiency of 0.65 to 0.95.”
Non-Final Act. 10. However, the Examiner finds that “Aydt teaches that
quantum dots are advantageous because of their theoretical quantum
efficiency of 100%.” Id. (citing Aydt col. 3, ll. 59–60). The Examiner

11 Khodak et al., US 2012/0022620 A1, pub. Jan. 26, 2012.
12 Moreshead, US 2008/0109941 A1, pub. May 15, 2008.
Appeal 2019-002419
Application 14/106,198

5
determines that it would have been obvious to provide a quantum efficiency
in the claimed range either because “a prima facie case exists where the
claimed ranges or amounts do not overlap with the prior art but are merely
close” or because “it would be advantageous to come as close to the
theoretical value as possible” and “[i]t has been held that where the general
conditions of a claim are disclosed in the prior art, discovering the optimum
workable ranges involves only routine skill in the art.” Id. at 11 (citing
Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783 (Fed. Cir.
1985); In re Aller, 220 F.2d 454 (CCPA 1955)).
Regarding the Examiner’s determination that the claimed range would
have been obvious because the prior art discloses a similar efficiency, we
determine that the Examiner has not sufficiently supported this
determination. A prima facie case of obviousness exists where the claimed
ranges or amounts do not overlap with the prior art but are merely close.
Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, (Fed. Cir.
1985). This is because, where the claimed amount and prior art amount are
sufficiently close, “one skilled in the art would have expected them to have
the same properties.” Id.
Here, we find that the Examiner has not explained adequately why the
claimed efficiency and the theoretical efficiency in Aydt are not patentably
distinct. First, we agree with Appellants that Aydt does not disclose an
actual range of efficiency for flexible lighting mechanisms. Rather, the only
evidence pointed to is Aydt’s disclosure that quantum dots have a
“theoretical internal quantum efficiency as high as 100%, compared to 25%
of the singlet organic emitter.” Aydt col. 3, ll. 58–60. From this, one of
ordinary skill in the art may conclude that quantum dots are likely to be
Appeal 2019-002419
Application 14/106,198

6
more efficient than other light emitting diodes, but there is no explanation
regarding how such efficiency is obtained or how it is effected by the
particular structure of the quantum dot or lighting mechanism. The
Examiner does not otherwise explain, or cite to evidence showing, how this
theoretical efficiency or any efficiency within the claimed range may be
achieved. Thus, we see no evidence on the record providing a suitable
correlation between the claimed efficiency and the theoretical efficiency for
us to conclude that a device with the claimed efficiency and a device with
the theoretical efficiency would have had the same properties.
Regarding the Examiner’s determination that it would have been
obvious to arrive at the claimed range of efficiency based on optimization,
the Examiner has not established that the claimed efficiency is a result
effective variable. With respect to this reasoning, the law requires “[a]
recognition in the prior art that a property is affected by the variable” in
order to find the variable result-effective. In re Applied Materials, Inc.,
692 F.3d 1289, 1297 (Fed. Cir. 2012). Although optimization of a variable
known to be result effective is generally prima facie obvious, where “the
parameter optimized was not recognized to be a result-effective variable” is
an exception. See In re Antonie, 559 F.2d 618, 620 (CCPA 1977). As
discussed above, the only evidence presented explains that the theoretical
efficiency for quantum dots is 100%, and the Examiner does not explain, or
provided evidence showing, how this efficiency is obtained. Thus, the
Examiner has not shown how the quantum efficiency is a result effective
variable.
Based on the foregoing, we are persuaded of reversible error in the
rejections of independent claims 21 and 40. Accordingly, we do not sustain
Appeal 2019-002419
Application 14/106,198

7
the rejections of those claims. We also do not sustain the rejections of the
dependent claims, for which the Examiner relies on the same reasoning.
CONCLUSION
We AFFIRM the rejection of claim 40 under 35 U.S.C § 112(b).
We REVERSE the rejections under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART