Ex Parte XUDownload PDFPatent Trial and Appeal BoardMay 9, 201814607294 (P.T.A.B. May. 9, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/607,294 01/28/2015 30743 7590 05/10/2018 WHITHAM, CURTIS & COOK, P.C. 11491 SUNSET HILLS ROAD SUITE 340 RESTON, VA 20190 FIRST NAMED INVENTOR TianningXU 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. 13240001B2 4030 EXAMINER PENG, BO JOSEPH ART UNIT PAPER NUMBER 3786 MAILDATE DELIVERY MODE 05/10/2018 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 1 Appeal2017-008359 Application 14/607 ,294 Technology Center 3700 Before DANIEL S. SONG, FREDERICK C. LANEY, and ARTHUR M. PESLAK, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 the Examiner's final rejection of claims 36-39 in the present application (App. Br. 4). Claims 1- 35 have been canceled (id.). We are informed that this application is related to Serial No. 14/613,471 (App. Br. 3), which is the subject of Appeal No. 2017-007953. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134. We AFFIRM. 1 Referred to as "Appellant" herein. The real party in interest is DermaGenesis, LLC (Appeal Brief (hereinafter "App. Br.") 2). Appeal2017-008359 Application 14/607 ,294 The claimed invention is directed to a method for measuring a wound (Abstract; Field of the Invention). Representative independent claim 36 reads as follows (App. Br. 14, Claims App'x): 36. A wound measurement method, comprising: positioning a set of at least two marker devices near a wound on a patient but not touching the wound; taking an image including the wound and the thus positioned set of marker devices; wherein the image is taken via a camera of a smart phone; obtaining a touched point and using the touched point to define a wound sample; processing the image to arrive at a computed surface area of the wound, wherein the image-processing step is performed by the smart phone[;] displaying a computed numerical quantity that is a wound surface area onto a display screen of the smart phone. The Examiner rejects claim 39 under 35 U.S.C. § 112, second paragraph, as being indefinite (Final Office Action (hereinafter "Final Act.") 2). The Examiner also rejects claims 36-39 under 35 U.S.C. § 103(a) as obvious over the combination of Xu2 in view of Tarallo, 3 and Riley4 (Final Act. 4). 2 US 2007/0276309 Al, pub. Nov. 29, 2007. 3 Processing of Digital Images of Cutaneous Ulcers Through Artificial Neural Networks, Brazilian Symposium on Computer Graphics and Image Processing, 20, Oct. 7-10, 2007. 4 US 2012/0259230 Al, pub. Oct. 11, 2012. 2 Appeal2017-008359 Application 14/607 ,294 ANALYSIS Only those arguments actually made by the Appellant have been considered in this decision. Arguments that the Appellant could have made but chose not to make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv); In re Jung, 637 F.3d 1356, 1365- 66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010) (precedential). Rejection of Claim 39 Under 35 U.S.C. § 112 The Examiner rejects claim 39 for lack of antecedent basis (Final Act. 2). The Appellant does not submit any arguments with respect to this rejection. Accordingly, we summarily affirm this rejection. Rejection of Claims 36-39 Under 35 U.S.C. § 103(a) The Examiner rejects the claims as being unpatentable over Xu in view of Tarallo and Riley (Final Act. 2). The Appellant argues claims 36- 39 collectively. Accordingly, we specifically address independent claim 36, and claims 37-39 fall with claim 36. The Examiner rejects independent claim 36, finding that Xu discloses wound measurement methods including most of the recited steps of claim 3 6 including a marker, but fails to disclose two such markers or using a camera of a smart phone (Final Act. 4). The Examiner relies on Tarallo for disclosing use of multiple markers, and Riley for disclosing utilization of a smart phone (Final Act. 5-6), and concludes that it would have been obvious to one of ordinary skill in the art to modify the method/ device of Xu to use multiple markers and a smart phone: 3 Appeal2017-008359 Application 14/607 ,294 in order to provide additional segmentation features for better imaging analysis, [and] to include the processing power of a smart phone of Riley [] in order to allow all smart phone user to have the ability to measure object size with their smart phone[.] (Final Act. 6). Similar analysis is set forth by the Examiner in rejecting independent claim 37 (Final Act. 6-8). Touch Point The Appellant argues that Xu fails to disclose, and the rejection fails to address, the step of "obtaining a touched point and using the touched point to define a wound sample." (App. Br. 8; see also Reply Br. 2). The Appellant argues that Xu merely teaches defining the wound by "manually tracing a wound perimeter on-screen using a stylus 50. See Xu[] at [0037- 3 8], [0045]; leftmost part of Fig. 1; step 106 in Fig. 6A; Fig. 2; step 152 in Fig. 7 A." (App Br. 8). According to the Appellant, "[a] stylus-traced outline is NOT a 'touched point'." (App Br. 8). The Examiner explains that stylus-traced outline is a touch point because stylus has to touch the screen first and at each point when the stylus is touching, the PDA will show the traced outline .... Even if appellant for whatever reason only considers finger touching point, Riley [] teaches a use of a smartphone like the iphone. One of ordinary skill in the art would know that iphone' s screen is touch point and such screen can replace the function of the stylus which is used on the PDA. (Ans. 12). The Appellant argues that "the Examiner incorrectly construes 'a ... point' to mean 'outline' or 'line"' (Reply Br. 1), and that "[i]n a system of Xu[], if the user only touches a point, wound area is not computed." (Reply 4 Appeal2017-008359 Application 14/607 ,294 Br. 2). As to the Examiner's reliance on the smart phone of Riley, the Appellant also argues that contrary to the claim language, "[ t ]he Examiner also misconstrues 'a touched point' along the lines of meaning 'a touched something' or 'anything touched by the user'." (Reply Br. 1 ). The Appellant's arguments are unpersuasive, and we agree with the Examiner. Firstly, we observe that a line is a series of points. In that regard, the claim language merely recites "obtaining a touched point and using the touched point to define a wound sample." In Xu, a series of points (i.e., a line) is obtained and these points are used to define the wound sample, thereby satisfying the recited claim language. The Appellant merely refers to the claim language, and does not provide any basis for interpreting "a touched point" so as to preclude one point in a series of points from satisfying the claim language. The Appellant's argument that neither Tarallo nor Riley discloses the "touched point" step (Reply Br. 2) is unpersuasive considering Xu reasonably discloses "obtaining a touched point and using the touched point to define a wound sample" as recited. Moreover, as also explained by the Examiner, Riley clearly discloses a smart phone for recording the patient's wound. It cannot be reasonably disputed that smart phones have touch point displays. Accordingly, we also agree with the Examiner (Ans. 12) that it would have been obvious to one of ordinary skill in the art that such touch point displays of a smartphone can be used for selection of the wound area instead of the stylus input device as disclosed in Xu to identify a wound. 5 Appeal2017-008359 Application 14/607 ,294 Combinability of References The Appellant also argues that because of the various operational and technological differences between the applied prior art, a person of ordinary skill in the art would not combine the references (App. Br. 9--12). For instance, according to the Appellant, "Xu [] relies on the square reference tag 32 to determine the scale of the image ([0045], page 5)," but Tarallo "does NOT rely on anything like tag 32 for scaling." (App. Br. 9). The Appellant argues that the presence of "Tarallo' s 'noise' strips are irrelevant, and unrelated to tag 32 of Xu" because the noise strips are not used for scaling, but instead, a ruler is used (App. Br. 10; see also Reply Br. 4 (citing Spec. 1, 11. 8-10)). However, the basis of the Appellant's assertion that Tarallo discloses irrelevant noise strips is unclear because Figure 1 appears to show two strips that have been segmented to equally dimensioned segments, and such segmented strips are still depicted in the processed image (Tarallo, Fig. 1 ). Even if such strips are considered part of the noise to be filtered, we do not find any error in the Examiner's reliance on Tarallo for suggesting use of multiple marker devices in view of its disclosure of multiple strips. We also agree with the Examiner (Ans. 13) that even if Tarallo uses a ruler for scaling, Xu and Riley both disclose that it was known to utilize markers that provide scaling information for determining the dimensions of a wound. In that regard, we observe that Xu discloses using a PDA with a camera in conjunction with reference tag 32 to determine the size of a wound (Xu i-fi-137, 43, 45, 67, 71; Fig. 2). Similarly, Riley discloses using a smart phone 136 in conjunction with fiducial marker 110 having shape element 210 so as to allow one to determine the size of a wound (Riley 6 Appeal2017-008359 Application 14/607 ,294 i-fi-139, 60, 61; Fig. 2). Accordingly, the use of such markers to determine size of a wound in an image is well known, and Tarallo' s use of a ruler does not detract from its ability to be combined with Xu and Riley because the known markers are essentially substitutes for a ruler. A person of ordinary skill in the art would have been familiar with not only the scaling technique disclosed in Tarallo in which a ruler is used, but also other scaling techniques including use of tags as disclosed in Xu and Riley. The Appellant also argues that Xu is "overall, unlike Tarallo and Riley" because unlike Xu, Tarallo utilizes "a library of skin/ non-skin wound references" to automatically process the acquired image using "pixel-by- pixel analysis for color criteria." (App. Br. 11 ). However, this argument is unpersuasive because, as explained by the Examiner, "[a]ll reference[s] are related to imaging processing with a processor and with obtained pictures," and a person of ordinary skill in the art would know "various imaging processing methods with different computational system and different edge detection/contour finding methods with pictures obtained." (Ans. 14). The Appellant argues that contrary to the Examiner's assertion, a PDA of Xu is not a small version of a computer as disclosed in Tarallo because a desktop computer is connected by cabling to servers and outlet power, is much larger than a PDA, and has more computing power (Reply Br. 5). In that regard, the Appellant argues that Tarallo does not disclose use of a smart phone, and uses MATLAB, which is not capable of being used on a smart phone (App. Br. 12). These arguments are unpersuasive because the evidence is clear that each of Xu, Tarallo, and Riley pertains to image processing systems and methods for obtaining a picture of a wound and determining its size from the 7 Appeal2017-008359 Application 14/607 ,294 picture. It is clear that different image processing systems, whether a computer, smart phone, or a PDA, can be appropriately implemented to obtain a picture of a wound and determine its size from the picture by one of ordinary skill in the art. We do not find it dispositive whether MATLAB is incapable of being used on a smart phone, and agree with the Examiner that in view of the prior art of record, the mathematical computation and the teachings of how to segment and how to detect the wound are obvious to one of ordinary skill in the art. And one of ordinary skill in the art can program such detection algorithms with programing languages that is compatible to the processor of a smartphone. (Ans. 15). The Appellant's arguments generally overlook the skill of those in the art and the broader teachings of these references applied, which is that appropriate electronic devices and systems can be implemented to obtain photographic images of a wound, and to determine its size. The Appellant's arguments essentially relegate a person of ordinary skill in the art to an automaton, and overlook the "skill" and creativity possessed by those of ordinary skill and their ordinary level of creativity. KSR Int 'l v. Teleflex, Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."). While there are some technical differences in the particular hardware and software used to implement the various systems disclosed in the prior art references, such differences are not of the nature that would preclude these references from being combined in the manner applied by the Examiner. Therefore, in view of the above considerations, we agree with the Examiner that claim 36 would have been obvious to one of ordinary skill in 8 Appeal2017-008359 Application 14/607 ,294 the art in view of Xu, Tarallo, and Riley. As noted, because the Appellant argues claims 36-39 collectively, claims 37-39 fall with claim 36. CONCLUSION The Examiner's rejection of claims 36-39 is AFFIRMED. 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 9 Copy with citationCopy as parenthetical citation