Ex Parte XU

Patent Trial and Appeal Board

May 9, 2018

14607294 (P.T.A.B. May. 9, 2018)

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.
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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:
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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
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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.
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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
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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
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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
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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
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