Ex Parte Ouyang et al

Patent Trial and Appeal BoardOct 18, 2016

13094415 (P.T.A.B. Oct. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/094,415 04/26/2011 97149 7590 10/20/2016 Maschoff Brennan 1389 Center Drive, Suite 300 Park City, UT 84098 FIRST NAMED INVENTOR Xiaolong Ouyang 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. Bl248.10001US01 1589 EXAMINER VU, QUYNH-NHU HOANG ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 10/20/2016 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): docket@mabr.com info@mabr.com PTOL-90A (Rev. 04/07) L11'-~ITED ST ATES PATENT AND TRADE~'v1ARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XIAOLONG OUYANG, AVRAM ALLAN EDIDIN, and HUI TIAN Appeal2015-000776 Application 13/094,415 Technology Center 3700 Before THOMAS F. SMEGAL, LISA M. GUIJT, and BRENT M. DOUGAL, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134 of the Examiner's decision1 rejecting claims 1-3 and 5-19. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Appeal is taken from the Final Office Action dated November 12, 2013 ("Final Act."). Appeal2015-000776 Application 13/094,415 CLAHvfED SUBJECT ~vfATTER Claim 1 is the independent claim on appeal. Claim 1, reproduced below, is illustrative of the claims on appeal. 1. A single use medical device comprising: a single use medical device module configured for use within a body of a subject receiving a medical procedure, the single use medical device module comprising: an electronic component having a one-time programmable ("OTP") component that is configured to render the single use medical device module unusable after being used in the medical procedure in the subject. REJECTIONS I. Claims 1-3, 5, 6, 10-17, and 19 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Henley (US 5,010,876; iss. Apr. 30, 1991) and Tay (US 6,917,380 Bl; iss. July 12, 2005). II. Claims 7-9 and 18 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Henley, Tay, and Kawai (US 6,518,823 Bl; iss. Feb. 11, 2003). ANALYSIS Rejection 1 Regarding independent claim 1, the Examiner finds, inter alia, that Henley discloses the single use medical device, as claimed, except that "Henley does not disclose that the electronic component having a one-time programmable (OTP) [component] as required in claim 1." Final Act. 2. The Examiner relies on Tay for disclosing a solid-state imaging device suitable for use in the field of medicine, including an OTP component. Id. The Examiner finds that Tay's OTP component "is configured to render the single use medical device module unusable after being used in the medical procedure in the subject." Id. In support, the Examiner 2 Appeal2015-000776 Application 13/094,415 determines that Tay teaches that the OTP results in the device being unusable "for re-programming or re-writing into the memory of the OTP after being first used in the medical procedure in the subject." Ans. 4 (emphasis omitted). The Examiner reasons that it would have been obvious "to modify the device of Henley with [the OTP] component in the device (e.g. camera device), as taught by Tay, in order to prevent reuse of the device for health safety purpose[s]." Final Act. 2-3. The Examiner further explains that after the first use, the device of Henl[ e ]y in view of Tay is incapable of recoding the data or re-programming into the memory. Therefore, one skilled in the art would recognize that there is no reason to ... reuse the device of Henley in view of Tay ... , since the device is unable to take [a] picture because of defective pixels and incapable of collecting data into the memory. If the device is incapable of programm[ing] or recording the data into the memory, the physician is unable to diagnos[ e] the condition of the patient. Ans. 4--5; see also Ans. 6. The Examiner further determines that "if the pixels are defective, ... the image is damaged," and"[ o ]ne skilled in the art would recognize that if the image in the camera is defect[ive], no one would use that camera device for taking image data o[f] the organ of the patient." Id. at 6. Appellants argue, inter alia, that the Examiner erred in finding that Tay discloses an OTP configured to render a device unusable after being used, as claimed. App. Br. 10-12; Reply Br. 10-12, 20-23. Appellants disagree with the Examiner's assertion that "'unusable' is tied to 're-program[m]ing or re-writing into the memory of the OTP"' (id. at 21), explaining that "even after tripping the OTP, the camera of Tay still is usable without the bad pixel that tripped the OTP." App. Br. 11; Reply Br. 11. Appellants submit that the Examiner's proposed modification results in a device that is "capable of being used again, and only in the instance of a bad pixel is the OTP implemented and the OTP is only 3 Appeal2015-000776 Application 13/094,415 implemented for the bad pixel." Id. Appellants maintain that "the physician is capable of diagnosing any condition with the camera device of the combination of Henley and Tay because the camera is completely operational except for a bad pixel." Reply Br. 22-23. Tay discloses that in [a] solid-state imaging device, it is typically necessary to identify bad (i.e., defective) pixels (i.e., photodetectors) in the photosensor (i.e., photosensitive imaging array) of the imaging device before image processing occurs so that the image processor may perform image correction to compensate for the defective pixels. To perform image correction during image processing, an image processor 108 may obtain the location of each defective pixel in advance. As a result, the OTP device 100 may be fabricated directly into the solid-state 1magmg device chip (rather than on a separate external memory chip). Tay 4:36-44. Tay further discloses that "each memory location in the programmable memory unit 102 [of the OTP component] stores a defective pixel address" (id. at 5:29-31 ), or alternatively," a unique identifier is encoded into the memory storage array" (id. at 10: 28-31). Tay explains that "[a]fter the defective pixels are identified ... , their locations in the phot[ o] sensor are encoded into the programmable memory unit 102" (id. at 10:61---63), and "[t]he row driver unit 400 . . . and column driver unit 402, in the driver circuit 104, permanently alter the gate oxides for the transistors that are to be encoded" (id. at 11: 1-3). The preponderance of evidence does not support the Examiner's finding that Tay's OTP component is configured to render the single use medical device module unusable because, as determined by the Examiner, the OTP renders Tay's device "unable to take a picture." Ans. 4. Instead, the evidence, as set forth supra, supports Appellants' argument that Tay' s device incorporates an OTP component to enable image correction, and that the Examiner's proposed combination would result in a single-use medical device incorporating an OTP component for image 4 Appeal2015-000776 Application 13/094,415 correction, as argued by Appellants, rather than a single use medical device that has an OTP component configured to render the single use medical device module unusable, as claimed. Accordingly, we do not sustain the Examiner's rejection of independent claim 1 and claims 2, 3, 5, 6, and 10-17 depending therefrom. Claim 19 incorporates the recitations of claim 1, and therefore, we also do not sustain the Examiner's rejection of claim 19. Rejection II The Examiner's reliance on Kawai does not cure the deficiencies in the Examiner's finding with respect to Tay as applied to independent claim 1, as discussed supra. Therefore, we do not sustain the Examiner's rejection of dependent claims 7-9 and 18. DECISION The Examiner's rejections of claims 1-3 and 5-19 under 35 U.S.C. Â§ 103(a) are reversed. REVERSED 5