Weber, Bryan et al.

Patent Trials and Appeals Board

Dec 23, 2019

13358337 - (D) (P.T.A.B. Dec. 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.
13/358,337 01/25/2012 Bryan Weber 579688046US1 1049
25096 7590 12/23/2019
PERKINS COIE LLP - SEA General
PATENT-SEA
P.O. BOX 1247
SEATTLE, WA 98111-1247
EXAMINER
EKRAMI, YASAMIN
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
12/23/2019 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRYAN WEBER, JOSEPH COAKLEY, and JOHN POTOSKY
Appeal 2019-004179
Application 13/358,337
Technology Center 3700
Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
BAHR, 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 1–23 and 26–34, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Zeltiq
Aesthetics, Inc. Appeal Br. 2.
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Application 13/358,337

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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “devices, application systems[,]
and methods for removing heat from subcutaneous lipid-rich cells” and, in
particular, to “a device that provides independent control of the heat flux
through a plurality of zones based on a desired heat flux profile.” Spec.
¶ 28. Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An application system for cooling subcutaneous lipid-rich
tissue, comprising:
a cooling unit;
a cryoprotectant vessel configured to contain a
cryoprotectant such that at least a portion of the cryoprotectant
is cooled by the cooling unit to a desired cold temperature;
a contact member configured to be attached to the
cryoprotectant vessel, the contact member including a backside
configured to contact the cryoprotectant and a front side
opposite the backside and a thermal gradient layer having one
or more physical discontinuities configured to define one or
more units of the thermal gradient layer, wherein each unit is
associated with one or more of a plurality of selectively[2]
addressable heating elements;
an array of the plurality of selectably addressable heating
elements carried by the contact member, and wherein the
contact member is configured to allow the cryoprotectant to
flow from the backside to the front side; and
a controller with a stored profile and being programmed
to
cause the application system to cool the
subcutaneous lipid-rich tissue, and

2 Appellant’s claims use both “selectively” and “selectably” in describing
the “addressable heating elements.” Appellant may wish to consider
amending the claims to use either “selectively” or “selectably” consistently
throughout the claims.
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command one or more heating elements of the
array of selectably addressable heating elements to warm
the subcutaneous lipid-rich tissue, which has been cooled
by the application system, based on the stored profile
while the application system cools the subcutaneous
lipid-rich tissue to disrupt subcutaneous lipid-rich cells,
wherein the stored profile includes a target heat
flux profile and/or a target temperature profile.
EVIDENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Levinson US 2007/0255362 A1 Nov. 1, 2007
Mills US 2008/0188915 A1 Aug. 7, 2008
Ebbers US 2009/0118722 A1 May 7, 2009
Nebrigic US 2011/0202048 A1 Aug. 18, 2011

REJECTIONS3
I. Claims 1, 3, 5–18, 20, 26–30, and 32–34 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Levinson, Ebbers, and
Nebrigic.
II. Claims 2, 4, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Levinson, Ebbers, Nebrigic, and Mills.
III. Claims 21–23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Levinson and Nebrigic.
IV. Claim 31 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Levinson, Nebrigic, and Ebbers.

3 The Examiner withdrew a rejection of claim 19 under 35 U.S.C. § 112,
second paragraph. Ans. 3; see Final Act. 3.
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OPINION
Each of Appellant’s independent claims 1, 20, 21, 29, 32, and 33
recites, in pertinent part, a contact member including “a thermal gradient
layer [or interface] having one or more physical discontinuities configured to
define one or more units of the thermal gradient layer [or interface]” and a
plurality of “selectively [or selectably] addressable heating elements,”
wherein each unit is associated with one or more of the plurality of heating
elements. See Appeal Br. 37, 41–46 (Claims App.). The Examiner finds
that Levinson discloses a contact member (front side portion 508), but does
not specifically disclose the contact member including a thermal gradient
layer/interface having one or more physical discontinuities configured to
define one or more units of the thermal gradient layer/interface and a
plurality of selectively addressable heating elements, wherein each unit is
associated with one or more of the plurality of heating elements. See Final
Act. 5, 7, 16, 20, 22, 25, 27, 28, 30, 38. The Examiner finds that Nebrigic
teaches, in a treatment apparatus for providing both heating and cooling,
treatment electrode 20 having a conductor region that “may be segmented
into plural individual electrodes that can be individually powered to deliver
electromagnetic energy to the tissue.” Id. at 7, 16–17, 22, 27, 30–31, 39
(emphasis omitted) (citing Nebrigic ¶ 27). According to the Examiner, “The
segments in Nebrigic read on an electrical and structural/physical separation
and discontinuities.” Id. at 7, 17, 22, 27, 31, 39. The Examiner determines:
[I]t would have been obvious to one of ordinary skill in the art
at the time of the invention to provide a thermal gradient layer
having one or more physical discontinuities configured to
defined one or more units of the thermal gradient layer, wherein
each unit is associated with one or more of a plurality of
selectively addressable heating elements, an array of the
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plurality of selectably addressable heating elements, since
Levinson already contemplates that the treatment device is
configured to heat and cool tissue [0020] and modifying the
treatment device of Levinson to include the plural individual
electrodes of Nebrigic that are capable of being individually
powered, allows a user to controllably heat tissue (Abstract).
Id. at 8, 17, 22–23, 27–28, 31, 39.
Appellant argues, persuasively, that the Examiner’s findings and
reasoning fail to account adequately for the fact that the claims recite a
thermal gradient layer or interface having one or more physical
discontinuities configured to define one or more units and, additionally, a
plurality of selectively addressable heating elements. See Reply Br. 3
(stating, “The Examiner’s Answer ignores claim 1’s thermal gradient layer
and addressable heating elements being different structural elements.”).
Nebrigic discloses treatment electrode 20 including electrically-insulating
substrate 22 and region 24 of an electrical conductor carried on the substrate.
Nebrigic ¶ 27; see id., Figs. 2A, 3A. Nebrigic teaches that “the conductor
region of treatment electrode 20 may be segmented into plural individual
electrodes that can be individually powered to deliver electromagnetic
energy to the tissue.” Id. ¶ 27. Nebrigic does not mention segmenting the
electrically-insulating substrate on which the conductor region is carried,
and it is not apparent why one would have been prompted to do so. “Based
on Appellant’s reading of Nebrigic,” which is consistent with our reading of
paragraph 27 of Nebrigic, the segmented conductor region forming the
plural individual electrodes “would still be located along a continuous
substrate 22.” Appeal Br. 31.
As Appellant points out, Nebrigic’s “underlying . . . substrate 22 is not
discontinuous.” Reply Br. 2 (citing Nebrigic’s Figure 3A as showing a
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uniform and continuous substrate 22). Thus, Appellant submits, substrate
22, which carries the segmented conductor region, “is not a thermal gradient
layer having one or more physical discontinuities as claimed.” Id.
Likewise, even if Nebrigic’s segmented conductor region were mapped to
the thermal gradient layer/interface with its one or more physical
discontinuities, Nebrigic’s electrode cannot be properly mapped to the
claimed contact member because it does not carry addressable heating
elements in addition to the thermal gradient layer/interface having physical
discontinuities, as called for in the claims. See id.
In view of the teachings of Nebrigic, as discussed above, the
Examiner does not explain sufficiently why a person having ordinary skill in
the art would have been prompted to combine the teachings of Nebrigic with
Levinson in a manner to arrive at the subject matter of Appellant’s claims—
namely, a contact member including a thermal gradient layer or interface
having physical discontinuities defining one or more units and a plurality of
selectably/selectively addressable heating elements, wherein each unit is
associated with one or more of the plurality of heating elements. The
Examiner’s explanation that it would have been obvious to do so because
“Nebrigic teaches the advantages of electrodes that can be individually
powered and allow a user to controllably heat tissue [Abstract][0027],
thereby motivating one of ordinary skill in the art to use them in a device
such as Levinson,” simply does not address the issue raised by Appellant
(i.e., that the claims recite the thermal gradient layer and addressable heating
elements being different structural elements). See Ans. 4–5. Further, the
Examiner’s application of Ebbers and Mills does not remedy the
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aforementioned shortcoming in the combination of Levinson and Nebrigic.
See Final Act. 6–7, 15–16, 21–22, 25–26, 29–30, 34–36, 41–42.
For the above reasons, the Examiner fails to articulate sufficient
factual findings and analysis to establish that the subject matter of
Appellant’s independent claims 1, 20, 21, 29, 32, and 33, or the claims
depending from these independent claims, would have been obvious.
Accordingly, we do not sustain the rejections of claims 1–23 and 26–34
under 35 U.S.C. § 103(a).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5–18,
20, 26–30,
32–34
103 Levinson, Ebbers,
Nebrigic
1, 3, 5–18,
20, 26–30,
32–34
2, 4, 19 103 Levinson, Ebbers,
Nebrigic, Mills
2, 4, 19
21–23 103 Levinson, Nebrigic 21–23
31 103 Levinson, Nebrigic,
Ebbers
31
Overall
Outcome
1–23, 26–
34

REVERSED