Ex Parte Brenner et alDownload PDFPatent Trial and Appeal BoardDec 20, 201612785225 (P.T.A.B. Dec. 20, 2016) Copy Citation 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. 12/785,225 05/21/2010 Sara Brenner 110011 1453 86778 7590 12/22/2016 Law Office of Joseph L. Felber 5 HaNofar St., Box 2085 Raanana, 4366404 ISRAEL EXAMINER FISHER, MICHAEL NAPOLEON ART UNIT PAPER NUMBER 3737 NOTIFICATION DATE DELIVERY MODE 12/22/2016 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): u spto @ felberip .com j lfelber @ gmail. com felberip @ gmail. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SARA BRENNER, ITZHAK POMERANTZ, YARIV OZ, EINAT KIDRON, and VICTOR TAUBKIN Appeal 2014-009818 Application 12/785,2251 Technology Center 3700 Before CHARLES N. GREENHUT, JEREMY M. PLENZLER, and GORDON D. KINDER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 2—8 and 10-21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and designate a NEW GROUND OF REJECTION. 1 Appellants do not identify a real party-in-interest. Appeal 2014-009818 Application 12/785,225 CLAIMED SUBJECT MATTER Claim 12 is the sole independent claim, and is reproduced below. Claims 2—8, 10, 11, and 13—21 depend from claim 12. 12. A mole monitoring system comprising: a calibration fixture comprising an illuminator that is operational to illuminate a skin area that comprises a mole; a digital camera configured to acquire at least one image of a body area that is comprised in the illuminated skin area and which comprises the mole and the skin area around the mole; a processor configured to analyze the at least one image of the mole and to determine values for parameters of the mole; and an air blower for moving hair of the body area between different locations by blowing air toward the hair; wherein the hair covers different segments of the body area while being positioned at different locations; wherein the digital camera is further configured to acquire multiple images of the body area while the hair is positioned in different locations due to the blowing of air; and wherein the processor is further configured to: receive the multiple images; extract information of pixels from the multiple images based on an amount of hair information included in the pixels; and generate a synthetic image of the body area, in which different pixels are extracted from different images of the multiple images. 2 Appeal 2014-009818 Application 12/785,225 REJECTIONS 1. Claims 2—7 and 10-21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Corrion (US 2007/0053561 Al, pub. Mar. 8, 2007), Kenet (US 5,016,173, iss. May 14, 1991), and Benty (4,198,558, iss. Apr. 15, 1980). 2. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Corrion, Kenet, Benty, and Roth (US 2005/0233341 Al, pub. Oct. 20, 2005). OPINION Claims 2—7 and 10—21 Appellants argue claims 2—7 and 10-20 as a group. App. Br. 3—10. We select claim 12 as representative. Claims 2—7, 10, 11, and 13—20 stand or fall with claim 12. See 37 C.F.R. 41.37(c)(l)(iv) (2015). Appellants argue claim 21 separately. App. Br. 3, 11—12. The Examiner cites the combined teachings of Corrion and Kenet for the majority of claim limitations, but acknowledges that these references fail to teach the “air blower” recited in claim 12. Final Act. 3—6. The Examiner cites Benty as teaching “an air blower for moving hair of the body area between different locations by blowing air toward the hair and wherein the hair covers different segments of the body area while being positioned at different locations.” Id. at 6. The Examiner reasons that “it would have been obvious ... to modify the Corrion - Kenet apparatus to include the hair 3 Appeal 2014-009818 Application 12/785,225 blowing apparatus, as taught by Benty, in order ... to blow hair, in various directions, away from a mole or region of interest on the skin.” Id. With respect to claim 12, Appellants do not dispute the Examiner’s findings with respect to any of the cited references or the rationale for combining the teachings of Corrion and Kenet. Rather, Appellants contend that Benty is non-analogous art (App. Br. 5—8) and, even if considered analogous art, “no sufficient motivation has been made of record — nor do appellants believe that such motivation could be made of record — to modify the Corrion - Kenet et al. body monitoring apparatus according to Benty[’s] teachings” {id. at 9—10). We are not persuaded that Benty is non-analogous art. Appellants acknowledge that Benty qualifies as analogous art if it is ‘“reasonably pertinent’ to the problem faced by appellants (inspecting moles in people in high risk groups more frequently than the typical frequency of visiting a doctor).” Id. at 6. Appellants, however, only repeatedly allege that Benty is not reasonably pertinent to the problem faced by Appellants without further meaningful explanation. According to their Specification, one problem faced by Appellants is abnormal mole formation being undetected between doctor visits. Spec. 17. A further related problem identified in the Specification is that hair obstructs the view of the mole to be inspected. See, e.g., id. 142 (“hair of the body . . . may interrupt with clear imaging thereof (e.g. by blocking a line of sight between camera 2200 and the skin of body area 3000 that lies under the hair)”). Appellants acknowledge that “Benty . . . show[s] that hair could be moved to different locations by blowing air toward it” and “that was never a disputed point.” App. Br. 7. Moving hair in a number of ways (e.g., comb, blower, etc.) is reasonably pertinent to 4 Appeal 2014-009818 Application 12/785,225 inspecting moles by providing a clear view of those moles when those moles are normally obstructed by hair. See, e.g., Kenet, 15:31—33 (noting that hair may interfere with the skin analysis). Accordingly, Appellants’ contentions in connection with whether Benty is non-analogous art are unpersuasive. As noted above, Appellants additionally contend that the Examiner’s rationale for combining Benty’s teachings with those of Corrion and Kenet is deficient. App. Br. 9—10. Specifically, Appellants contend that “there is no case of a simple substitution . . . because the examiner has not provided any evidence of an air blower ever having been known to be used to reposition hairs while tracking mole evolution (and appellants have never seen such evidence).” Id. at 9. This is not persuasive because the Examiner does not rely on a “simple substitution” as the basis for the combination. See Final Act. 6 (“it would have been obvious ... to modify the Corrion - Kenet apparatus to include the hair blowing apparatus, as taught by Benty, in order ... to blow hair, in various directions, away from a mole or region of interest on the skin.”). Appellants’ additional contention that “the Corrion - Kenet et al. combination already has a way to detect and eliminate hair in images to generate a synthetic image of a body area” and, therefore, “[a] hair blower would have been a superfluous accessory” is also unpersuasive. App. Br. 9. Specifically, Appellants point to column 15, lines 28—33 and column 17, line 36 to column 18,2 line 2 of Kenet cited by the Examiner at page 5 of the Final Action. Id. Rather than providing evidence counter to the proposed 2 The Examiner cited column 7 but this appears to be a typographical error in that column 18 should have been cited because it applies to the arguments and follows the sequential order. 5 Appeal 2014-009818 Application 12/785,225 modification, we find that this teaching of Kenet supports the Examiner’s proposed modification of adding a blower. For example, the cited portions of Kenet teach, in order to analyze an area of the skin covered by hair, that hair should be removed in some manner. That Kenet does so by manipulating an image, rather than the hair itself, does not suggest that further improvement would not be achieved by first manipulating the hair, itself, to the extent possible, before further manipulating the image. Claim 21 depends from claim 12, and further recites that “the digital camera and the processor are embedded in a mobile phone, and wherein the calibration fixture is an element distinct from the mobile phone.” The Examiner cites Kenet as teaching the calibration fixture. Final Act. 4—5, 9 (citing Kenet, Fig. 2B (items 240 and 244)). Appellants contend that “[i]n order to justify an obviousness rejection of claim 21, the examiner would at least need to identify in the applied prior art the calibration fixture recited as an element of the claim.” App. Br. 11. The calibration fixture is first introduced in claim 12. Appellants, however, do not dispute the Examiner’s finding for that limitation with respect to claim 12. See id. at 4—10. Appellants acknowledge that Kenet’s “item 244 is an illumination source and item 240 is a stand or robot arm,” and conclude that “[n] either an illumination source [n]or a stand/robot arm is a calibration fixture, so the rejection is not justified.” Id. at 11. Appellants, however, never explain why those elements cannot properly be considered a “calibration fixture.” Rather, Appellants simply summarize the discussion in the Specification related to the “calibration fixture,” noting that Appellants’ specification clearly states that a calibration fixture is placed between the skin of the user and the face of the mobile phone. The calibration fixture thus sets a fixed distance between 6 Appeal 2014-009818 Application 12/785,225 the camera and the skin and also provides color calibration and a light source for angular illumination of a mole. (Paragraph [00168].) Appellants’ Fig. 20 shows a calibration fixture as element 1030, Fig. 21 shows a calibration fixture as element 1040, and Fig. 25 shows a calibration fixture as element 5100. Id. at 12. After this summary, however, Appellants “acknowledge that claim 21 does not recite all features of a calibration fixture that the specification discloses.” Id. When explaining the relevance of the summary of the Specification, Appellants note that this “at the very least strengthen^] appellants’ arguments that neither the illumination source nor a stand/robot arm of calibration fixture of Kenet et al. properly disclose [sic.] a ‘calibration fixture’ as recited in claim 21.” Id. Appellants never expressly propose a construction of “calibration fixture” in connection with their discussion of the Specification. Consistent with portions of the Specification cited by Appellants, however, a light source is part of the calibration fixture. See, e.g., Spec. 1168 (“The [calibration] fixture . . . provides light source for angular illumination of the mole.”). Furthermore, claim 12 explicitly recites that the “calibration fixture compris[es] an illuminator that is operational to illuminate a skin area that comprises a mole.” Moreover, even if the “calibration fixture” required a structure that established a fixed distance, as Appellants note is described in the example in paragraph 168 of the Specification, Appellants offer no argument, and do not even allege, that the stand/robot arm (item 240) of Kenet would not accomplish that function. Accordingly, we are not apprised of Examiner error. Claim 8 Claim 8 depends from claim 12, and Appellants do not argue that claim separately. See App. Br. 10-11. Appellants rely on the alleged error 7 Appeal 2014-009818 Application 12/785,225 in the rejection of claim 12 for the patentability of claim 8. Id. We are not apprised of error in the rejection of claim 8 for the reasons set forth above. New Ground of Rejection As we have supplemented the Examiner’s findings in connection with whether Benty qualifies as analogous art, we designate our affirmance as a new ground of rejection to ensure Appellants have a fair opportunity to respond. See Reply Br. 3 (“Given how important it is in the justification of an argument that Benty is supposedly analogous art, and in view of appellant’s [sic] explicit statement that the examiner never explains why someone would have looked in the hair dryer/styling art in the first place to solve appellants’ problem, the examiner should have indicated on the record in the Examiner’s Answer why he thought that someone would look in the hair dryer/styling art.”). DECISION We AFFIRM the Examiner’s decision to reject claims 2—8 and 10—21 and designate that affirmance as a NEW GROUND OF REJECTION. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, 8 Appeal 2014-009818 Application 12/785,225 and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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; 37 C.F.R, $ 41.50(b) 9 Copy with citationCopy as parenthetical citation