Ex Parte Xu

Patent Trial and Appeal Board

Jun 11, 2018

13716532 (P.T.A.B. Jun. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/716,532 12/17/2012
30743 7590 06/12/2018
W&CIP
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
FIRST NAMED INVENTOR
Tianning Xu
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
13240001AA 1006
EXAMINER
PENG, BO JOSEPH
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
06/12/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIANNING XU
Appeal2017-007518
Application 13/716,532 1
Technology Center 3700
Before JOSEPH A. FISCHETTI, PHILIP J. HOFFMANN, and
MATTHEWS. MEYERS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's rejection of claims 1-9, 15, 18, 19, 22, and 38--46. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
According to Appellant, "the invention provides a system for
measuring a wound of a patient." Spec. 1. Claim 1 is the only independent
1 According to Appellant, the real party in interest is Derma Genesis, LLC.
Appeal2017-007518
Application 13/716,532
claim on appeal. We reproduce claim 1, below, as illustrative of the
appealed claims.
1. A system for measuring a wound, comprising:
(A) a set of at least one flat marker device, each flat marker
device having a top surface with a predefined pattern;
(B) a computerized system in which is stored in a non-
transitory computer-readable form the predefined pattern and/or
the known size of the flat marker device having the predefined
pattern, wherein the computerized system comprises an imaging
device, and wherein the computerized system performs steps
compnsmg:
capturing an image that includes the wound and the
set of at least one flat marker device nearby;
processing the captured image and recognizing a
part of the captured image as the predefined pattern;
processing the captured image and recognizing a
part of the captured image as the wound;
attributing a boundary to the recognized wound;
after the boundary has been attributed to the wound,
computing a surface area of the wound based on the
known size of the flat marker device.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. claims 1-3, 9, and 41 under 35 U.S.C. § I02(b) as anticipated
by Xu et al. (US 2007/0276309 Al, pub. Nov. 29, 2007)
(hereinafter "Xu");
II. claims 4 and 44 under 35 U.S.C. § I03(a) as unpatentable over
Xu·
'
III. claims 5-7, 38, 39, 42, and 43 under 35 U.S.C. § I03(a) as
unpatentable over Xu and Kevin C. Tofel, How to measure
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Application 13/716,532
anything with a camera and software, GIGAOM (Feb. 6, 2007),
https:// gigaom.com/2007 /02/06/how _to_measure_/ (hereinafter
"Tofel");
IV. claims 38, 39, and 44 under 35 U.S.C. § I03(a) as unpatentable
over Xu, Tofel, and RulerPhone, Web Archive (2008),
http://web.archive.org/web/20080911161011/
http ://benkamens.com/rulerphone/;
V. claims 38, 39, and 44 under 35 U.S.C. § I03(a) as unpatentable
over Xu, Tofel, and Riley (US 2012/0259230 Al, pub. Oct. 11,
2012);
VI. claims 8, 15, 22, and 40 under 35 U.S.C. § I03(a) as
unpatentable over Xu and Hildreth (US 2008/0273755 Al, pub.
Nov. 6, 2008);
VII. claims 18 and 19 under 35 U.S.C. § I03(a) as unpatentable over
Xu and Jaeb et al. (US 2008/0071162 Al, pub. Mar. 20, 2008)
(hereinafter "Jaeb");
VIII. claim 19 under 35 U.S.C. § I03(a) as unpatentable over Xu,
Jaeb, and Ielmini (US 5,056,934, iss. Oct. 15, 1991);
IX. claim 43 under 35 U.S.C. § I03(a) as unpatentable over Xu and
Taylor et al. (5,967,979, iss. Oct. 19, 1999) (hereinafter
"Taylor"); and
X. claims 45 and 46 under 35 U.S.C. § I03(a) as unpatentable over
Xu and El-Saban et al. (US 2012/0327172 Al, pub. Dec. 27,
2012) (hereinafter "El-Saban").
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Application 13/716,532
ANALYSIS
Rejection I
Appellant essentially argues that the Examiner errs in finding that Xu
teaches independent claim 1 's recitation of "a computerized system ...
processing the captured image and recognizing a part of the captured image
as the wound; [and] attributing a boundary to the recognized wound." See
Appeal Br. 10-15; see id. at Claims App. Based on our review of the record,
including the Examiner's Final Office Action and Answer, and Appellant's
Appeal Brief and Reply Brief, Appellant does not persuade us that the
Examiner errs. Thus, we sustain the rejection.
With respect to claim 1 's recitation of "a computerized system ...
processing the captured image and recognizing a part of the captured image
as the wound" (id. at Claims App.), as the Examiner points out, Appellant's
Specification describes a process in which the user (i.e., a human operator)
"'tap[s] the object on the screen[,] and the app uses the tapping point as an
example to find areas with the same imaging characteristics and mark them
accordingly,"' to mark and identify the tapped area as a wound area.
Answer 12 (citing Specification ,r 37). Appellant does not persuade us that
this action described in the Specification is outside of the claim recitation,
such as, for example, by belonging to an embodiment that is not
encompassed by the claim. See Appeal Br. 10-15; see Reply Br. 1-8. Thus,
consistent with Appellant's Specification, we understand that a
computerized system that recognizes a part of a captured image as a wound
based on a user identifying the part of the image as a wound is "a
computerized system ... recognizing a part of the captured image as the
wound" as claimed. Restated, we do not agree with Appellant that the claim
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Application 13/716,532
recitation under discussion, as currently written, excludes a computerized
system that records "human-performed" recognition of part of the image as a
wound (Appeal Br. 10), and we do not agree that the claim requires that the
system operate with "no human operator" (id. at 14). The Examiner finds
that Xu discloses "a computerized system ... recognizing a part of the
captured image as the wound" based on an action from a human operator
(see, e.g., Answer 3 (citing Xu ,r,r 43, 45)), and, other than arguing that Xu's
system uses a human operator (Appeal Br. 11 ), Appellant does not argue that
Xu' s system fails to disclose the claimed system.
For similar reasons, Appellant does not persuade us that claim 1 's
recitation of "a computerized system ... attributing a boundary to the
recognized wound" (Appeal Br., Claims App.) requires anything more than a
computerized system that records a wound boundary based on a user
identifying the wound boundary on an image. Appellant's invention
apparently provides significant advantages that are not provided by Xu. See,
e.g., id. at 14; see Declaration of Dr. Tianning Xu dated May 18, 2015, ,r,r 9--
19. Further, Appellant's claim encompasses a device that does not require
"the human operator to trace the wound boundary," which is not disclosed
by Xu. Id. at 13. But, we do not agree with Appellant that the claim
recitation under discussion, as currently written, requires anything more than
a computerized system that records "human-performed" indication of a
wound boundary (id. at 10), and we do not agree that the claim requires that
the system operate with "no human operator" defining the boundary (id.
at 14). The Examiner finds that Xu discloses "a computerized system ...
attributing a boundary to the recognized wound" based on input from a
human operator (see, e.g., Answer 3 (citing Xu ,r,r 43, 45)), and, other than
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Application 13/716,532
arguing that Xu's system uses a human operator (see, e.g., Appeal Br. 14),
Appellant does not argue that Xu' s system fails to disclose the claimed
system.
Thus, based on the foregoing, we sustain claim 1 's anticipation
rejection. We also sustain the anticipation rejection of claims 2, 3, 9, and 41
that depend from claim 1.
Rejections II-X
Appellant argues that the rejections of dependent claims 4--8, 15, 18,
19, 22, 38--40, and 42--46 are in error because no reference remedies Xu's
deficiency of failing to disclose ""a computerized system ... processing the
captured image and recognizing a part of the captured image as the wound;
[and] attributing a boundary to the recognized wound." Appeal Br. 15-17;
id. at Claims App. Inasmuch as we determine that Xu discloses the claimed
computerized system, we are not persuaded of error.
With respect to claims 8, 15, 22, and 44, the rejection of which relies
on Hildreth, Appellant also argues that "[t]here is no natural point of
combination between Xu ... and Hildreth that the person of ordinary skill in
the art sees when reading those two references objectively." Appeal Br. 16
( citing Declaration of Dr. Tianning Xu ,r 23 ). This argument is insufficient
to persuade us that the Examiner's combination is in error. We note that the
"Examiner only uses Hildreth to teach how to segment an area with an edge-
searching algorithm ... as Hildreth teaches segmenting an object in an
image" (Answer 18), while Dr. Xu's Declaration addresses "Hildreth['s] ...
[ disclosure ofJ using a camera to detect where a user's fingertip is located as
a mechanism for user operation of a device" and "Hildreth's ... [disclosure
related to a library] of predefined shapes that are [ofJ a fingertip."
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Declaration of Dr. Tianning Xu ,r,r 21, 22. Thus, inasmuch as Appellant's
argument does not address the portion of Hildreth upon with the Examiner
relies, Appellant does not establish persuasively that the Examiner errs in
relying on Hildreth.
DECISION
We AFFIRM the Examiner's anticipation and obviousness rejections
of claims 1-9, 15, 18, 19, 22, and 3 8--46.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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