Ex Parte Golden et al

Patent Trial and Appeal Board

Apr 22, 2014

10841926 (P.T.A.B. Apr. 22, 2014)

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.
10/841,926 05/07/2004 Bruce L. Golden OPTB.01USF1 (98-016) 1666
27479 7590 04/22/2014
COCHRAN FREUND & YOUNG LLC
2026 CARIBOU DR
SUITE 201
FORT COLLINS, CO 80525
EXAMINER
ROSARIO, DENNIS
ART UNIT PAPER NUMBER
2667
MAIL DATE DELIVERY MODE
04/22/2014 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 BRUCE L. GOLDEN, BERNARD E. ROLLIN,
RALPH V. SWITZER, JR., and CARLTON R. COMSTOCK, JR.
____________

Appeal 2011-012129
Application 10/841,926
Technology Center 2600
____________

Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and
DANIEL N. FISHMAN, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012129
Application 10/841,926

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-12 and 21-26, which are all the claims remaining in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Illustrative Claim
Claim 1. A method of creating an identification record for a
nonhuman animal, the method comprising:
acquiring an image using wavelengths between the infrared and
visible regions of the electromagnetic spectrum showing at least a portion of
an ocular fundus of the animal,
using a microprocessor, extracting a set of analysis data from the
acquired image representing a particular identified anatomical structure of
the of the ocular fundus,
generating information indicative of day and geographic location of
the image acquisition, and
generating the identification record to comprise at least the analysis
data, the geographic location information, and additional biometric data
selected from the group consisting of: audio data, visual data, a description
of the animal, birth date of the animal, death date of the animal, cause of
death, genetic breeding data, DNA test measurement data, production data,
veterinary records of the animal, data pertaining to a vaccination event,
medical records of the animal, feed formulas, feedlot locations, border
crossings, shipping data, information pertaining to ownership, information
pertaining to ownership transfer data, purchaser required information, coded
data assigned to the animal, a graphic record of a feature of the animal, and
microchip implant data.

Prior Art
Verdooner US 5,220,360 June 15, 1993
Tanaka US 5,640,963 June 24, 1997
Sugiyama US 5,868,134 Feb. 9, 1999

Appeal 2011-012129
Application 10/841,926

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Seal WO 97/46978 Dec. 11, 1997
Eli Peli, Thomas R. Hedges, III, and Bernard Schwartz, Computer
Measurement of Retinal Nerve Fiber Layer Striations, Applied Optics, Vol.
28, No. 6, 1128-34 ( Mar. 15, 1989).

Yasuhiro Tamaki, Makoto Araie, Eizo Kawamoto, Shuichiro Eguchi, and
Hitoshi Fujii, Noncontact, Two-Dimensional Measurement of Retinal
Microcirculation Using Laser Speckle Phenomenon, Investigative
Ophthalmology & Visual Science, Vol. 35, No. 11, 3825-34 (Oct. 1994).

Examiner’s Rejections
Claims 1-3, 5-12, and 21-26 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Seal, Verdooner, and Tamaki.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Seal, Verdooner, Tamaki, Tanaka, Peli, and Sugiyama.

ANALYSIS
Section 103 rejection of claims 1, 3, 5-12, 21, and 23-26
The Examiner finds Seal teaches creating an identification record for
an animal including acquiring an image of at least a portion of an animal’s
eye, and adding location and biometric data to the acquired image data.
Ans. 6-7. The Examiner finds the portion of the animal’s eye can be an
ocular fundus as taught by Verdooner and Tamaki, acquired using a fundus
camera as taught by Verdooner. Ans. 7-8. Appellants have not provided
persuasive evidence or argument to show that identifying animals using an
image of a portion of the eye, location data, and biometric data as taught by
Seal, where the portion of the eye is an ocular fundus as taught by
Verdooner and Tamaki, acquired using a fundus camera as taught by
Appeal 2011-012129
Application 10/841,926

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Verdooner, represents anything more than the combination of familiar
elements according to known methods that yields predictable results.
We agree with the Examiner that the combination of Seal, Verdooner,
and Tamaki renders claim 1 obvious for the reasons given in the Final
rejection and the Examiner’s Answer. We highlight the following for
emphasis.
Appellants contend Seal teaches away from using scanning optics,
contrary to the Examiner’s suggestion. App. Br. 9; Reply Br. 3-7. However,
the Examiner finds the combination of Seal and Verdooner teaches using a
fundus camera as a simple and inexpensive alternative to scanning optics.
Ans. 7. Appellants have not identified any portion of Seal that criticizes,
discredits, or discourages using a fundus camera. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004).
Appellants contend Seal does not suggest retinal imaging. App. Br. 9.
However, Seal teaches using an image of the retina to identify an individual
was known in the art at the time of invention. Seal, 2:13-15.
Appellants contend modifying the device of Seal to include the fundus
camera of Verdooner would render the device of Seal inoperative for its
intended purpose of being handheld. App. Br. 11, 14-15; Reply Br. 7-11.
However, Seal teaches the device may be either fixed or handheld. Seal,
3:7-9. Therefore, we disagree that the only intended purpose of Seal is
providing a handheld device.
Appellants contend generating a map of an image as taught by
Verdooner does not teach “extracting a set of analysis data from the acquired
image,” as recited in claim 1. App. Br. 12. Appellants have not provided
persuasive evidence or argument to distinguish generating a map of an
Appeal 2011-012129
Application 10/841,926

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image as taught by Verdooner from “extracting a set of analysis data from
the acquired image,” as recited in claim 1.
Appellants contend Seal does not teach a mobile retinal scan
identifier. App. Br. 12-13. Seal teaches that it was known in the art at the
time of invention to use the retina to identify an individual. Seal 2:13-15.
Appellants contend the fundus camera in column 9, lines 9-11 is not
used in the device of Verdooner. App. Br. 13. Appellants’ contention is
inconsistent with using a fundus camera as taught in Verdooner at column 4,
line 61; column 9, lines 38 and 42; column 10, line 17; and column 12, line
48, for example.
Appellants contend Tamaki does not teach a fundus camera or retinal
scanning. App. Br. 13-14; Reply Br. 2-3. Tamaki teaches illuminating a
rabbit fundus to detect an image speckle. Abst. The Examiner relies on
Tamaki to show capturing an image of a non-human animal fundus was
known in the art at the time of invention. Ans. 8. Appellants have not
provided persuasive evidence or argument showing that detecting an image
of a non-human animal fundus as taught by Tamaki using the fundus camera
of Verdooner was “uniquely challenging or difficult for one of ordinary skill
in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419
(2007)).
Appellants contend Verdooner teaches away from using focused laser
systems. App. Br. 14. However, Verdooner teaches a fundus camera.
Appellants have not provided persuasive evidence or argument to show
Verdooner teaches away from a fundus camera.
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Appellants present several cumulative arguments on pages 11-24 of
the Reply Brief which fail to rebut the Examiner’s findings that using the
fundus camera of Verdooner to image the fundus of a non-human animal as
taught by Tamaki, and adding additional location and biometric data to the
image data as taught by Seal, represents the combination of familiar
elements according to known methods that yields predictable results.
Further, the scope of the “set of analysis data representing a particular
identified anatomical structure” does not affect any steps or structural
limitations of method claim 1. What the set of analysis data represents is
non-functional descriptive material. Similarly, the information indicative of
day and geographic location of the image acquisition is non-functional
descriptive material. The additional biometric data is also non-functional
descriptive material. The scope of claim 1 encompasses “acquiring an
image using wavelengths between the infrared and visible regions of the
electromagnetic spectrum showing at least a portion of an ocular fundus of
the animal,” “extracting a set of analysis data from the acquired image
representing [data],” “generating information indicative of [data],” and
“generating the identification record to comprise [data].”
Verdooner teaches acquiring an image using visible light showing at
least a portion of an ocular fundus, and extracting a set of analysis data from
the acquired image. Abst.; Figs. 4 and 5. In addition to the Examiner’s
findings, we find Verdooner alone teaches the acquiring an image showing
at least a portion of an ocular fundus, extracting a set of analysis data from
the acquired image, generating information indicative of data, and
generating the identification record to comprise data within the scope of
claim 1.
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Application 10/841,926

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We sustain the rejection of claim 1 under 35 U.S.C. § 103. Appellants
do not present arguments for separate patentability of claims 3, 5-12, 21, and
23-26 which fall with claim 1.

Section 103 rejection of claims 2 and 22
Appellants contend the combination of Seal, Verdooner, and Tamaki
does not teach “the anatomical structure so represented [by analysis data] is
retinal vasculature,” as recited in claim 2. App. Br. 15-17. However, what
the analysis data represents is non-functional descriptive material that does
not distinguish the claim from the prior art in terms of patentability. Further,
Appellants’ contention is inconsistent with Figures 4 and 5 of Verdooner,
which show images of retinal vasculature.
We sustain the rejection of claim 2 under 35 U.S.C. § 103. Appellants
do not present arguments for separate patentability of claim 22 which falls
with claim 2.

Section 103 rejection of claim 4
Appellants contend Tanaka teaches rotating an image before being
acquired, and claim 4 recites rotating the acquired image. App. Br. 17-18.
However, Tanaka teaches displaying the image on a television (col. 6, ll. 35-
47). Appellants have not provided persuasive evidence or argument to
distinguish an acquired image from an image displayed on a television.
We sustain the rejection of claim 4 under 35 U.S.C. § 103.

Appeal 2011-012129
Application 10/841,926

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DECISION
The rejection of claims 1-3, 5-12, and 21-26 under 35 U.S.C. § 103(a)
as being unpatentable over Seal, Verdooner, and Tamaki is affirmed.
The rejection of claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Seal, Verdooner, Tamaki, Tanaka, Peli, and Sugiyama 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.
§ 41.50(f).

AFFIRMED

kis