JB MEDICAL, INC.

Patent Trials and Appeals Board

Nov 3, 2020

15523365 - (D) (P.T.A.B. Nov. 3, 2020)

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.
15/523,365 04/28/2017 Jibin YANG 7037-0102PUS1 7479
2292 7590 11/03/2020
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
BECK, LERON
ART UNIT PAPER NUMBER
2487
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JIBIN YANG
___________

Appeal 2020-002786
Application 15/523,365
Technology Center 2400

____________

Before ROBERT E. NAPPI, CARL W. WHITEHEAD JR. and
SHARON FENICK, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Appellant2 is appealing the final rejection of claims 1−14, 16−21, 25,
27 and 28 under 35 U.S.C. § 134(a). Appeal Brief 10. Claims 1 and 12 are
independent. We have jurisdiction under 35 U.S.C. § 6(b).

1 Rather than reiterate Appellant’s arguments and the Examiner’s
determinations, we refer to the Appeal Brief (filed October 4, 2019), the
Reply Brief (filed February 27, 2020), the Final Action (mailed March 8,
2019) and the Answer (mailed December 31, 2019; January 10, 2020), for
the respective details. An oral hearing was held on October 14, 2020.

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies JB MEDICAL, INC., as the real party in
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We affirm in part.
Introduction
According to Appellant, the claimed subject matter “aims to provide
an online machine vision based automatic needle cannula inspection system
and methods of use as part of an automatic production line.” See
Specification 1.

Representative Claims
1. A machine vision based automatic needle cannula inspection
system comprising:
an inspection and control unit configured to perform synchronized
control and information processing with all other units of the
automatic inspection system,
and one of the following items a, b or c:
a. a needle cannula holding and positioning unit configured to
separate, position and hold the needle cannula and to be able to keep
the needle cannula in position while the needle cannula is driven to
rotate;
a needle cannula driving unit configured to rotate the needle
cannula; and
fixed image capture device(s) configured to capture images of
rotating needle cannula driven to rotate by the needle cannula driving
unit while synchronized and controlled by the inspection and control
unit;

interest. Appeal Brief 2.

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b. a needle cannula holding, positioning and rotating unit
configured to separate, position, hold and rotate the needle cannula
and to be able to keep the needle cannula in position; and
fixed image capture device(s) configured to capture images of
the
needle cannula while the needle cannula is rotating while
synchronized and controlled by the inspection and control unit;
c. a fixed needle cannula holding and positioning unit
configured to
separate, position and hold the needle cannula; and
image capture device( s) rotating around the needle cannula,
and configured to capture images of the fixed needle cannula while
the image capture device(s) is rotating around the needle cannula and
synchronized and controlled by the inspection and control unit.

12. A machine vision based automatic needle cannula inspection
method comprising:
capturing, with image capture device(s), a plurality of images of a
needle cannula along a circumferential direction of the needle cannula for a
whole circle while the needle cannula and the image capture device(s) are
rotated relative to each other; and
inspecting various quality and technical parameters of the needle
cannula through screening, processing and analyzing the captured images.

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References
Name3 Reference Date
Sadeh US 4,784,071 November 15, 1988
Demarest US 6,115,650 September 5, 2000
Tribble US 2006/0178578 A1 August 10, 2006
Chong US 2008/0269687 A1 October 30, 2008
Giribona US 2010/0006602 A1 January 14, 2010

Rejections on Appeal4
Claims 1, 3 and 9 stand rejected under 35 U.S.C. § 102 A1 as being
anticipated by Demarest. Final Action 2−4
Claim 2 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Demarest and Giribona. Final Action 5–6.
Claim 4 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Demarest and Sadeh. Final Action 6–7.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Demarest, Giribona and Chong. Final Action 8–10.
Claims 7, 8, 10−14, 16−21, 25, 27 and 28 stand rejected under 35
U.S.C. § 103 as being unpatentable over Demarest and Tribble. Final
Action 10–15.
ANALYSIS
35 U.S.C. § 102 Rejection
Appellant contends, “as disclosed in column 10, lines 51-64 of
Demarest, the Vision task analyzes the needle image to determine the cutting
end and barrel end of the curved needle as well as the rotational orientation
of the curved needle.” Appeal Brief 4. Appellant argues that Demarest’s

3 All reference citations are to the first named inventor only.

4 The Examiner objected claims 15, 22−24 and 26. See Final Action 16.
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“[p]ositional coordinates of the needle locate the robot gripper” and the
“robot controller will remove the needle position and orientation data from a
buffer and command the robot gripper to move to a pick location” wherein
the “robot gripper then uses the flip over pin 31b to place the needle on the
conveyor in the correct orientation.” Appeal Brief 5; see Demarest column
10, lines 51−64. Appellant contends, that “Demarest discloses the use of
images to determine the position and orientation of a needle” where the
gathered “information is subsequently used by the robot grippers to correct
the orientation of the needle when moving the needle to a conveyor.”
Appeal Brief 5. Appellant argues:
The camera 105 [in Figure 3] of Demarest is not configured to
take images while the needle is rotating relative to the camera, as
required in each of [the] (a), (b) and (c) [limitations in claim 1].
Rather, the camera of Demarest takes pictures of a single position
and orientation of a needle. This information is used by the robot
gripper when moving the needle to a conveyor. No images of a
rotating needle are captured by the camera, as the needle only
rotates under action of the flipper pin subsequent to the images
being captured.
Appeal Brief 6.
The Examiner determines, “that there is nothing that requires or states
in [claim 1] that [ ] the camera has to take images while the needle is rotating
relative to the camera.” Answer 17.
Appellant argues that “In each of [the] alternatives [recited in claim
1], multiple images of a needle cannula are captured at different orientations
by rotating the needle cannula while the images are captured (alternatives (a)
and (b)) or the image capture device(s) rotating around the needle cannula
(alternative (c)).” Reply Brief 2. We find Appellant’s argument persuasive
of Examiner’s error because we do not agree with the Examiner’s
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determination that claim 1 does not require “that the camera has to take
images while the needle is rotating relative to the camera.” See Answer 17.
The Examiner finds:
In fact, column 10, lines 50-65, Demarest discloses wherein
video images of needles are obtained from cameras. In addition,
column 2, lines 50-55, discloses camera assembly for obtaining
images of the needles and one or more robot devices for picking
up the needles. Column 5, lines 50-60 discloses images are taken
and processed to identify the orientation of needles.
Answer 17−18.
Appellant contends:
Column 10, lines 50-55 of Demarest disclose obtaining an image
of a needle to identify the ends of the needle and the angular
orientation. Demarest discloses capturing a single image of a
needle. Demarest does not disclose images of rotating needle
cannula (alternative a), images of the needle cannula while the
needle cannula is rotating (alternative b) or image capture
device(s) rotating around the needle cannula (alternative c).
Reply Brief 2.
We find Appellant’s contention persuasive of Examiner error because
we do not agree with the Examiner’s findings that Demarest discloses
rotating the needle cannula or rotating the camera around the needle cannula
while obtaining images as required, alternatively, in claim 1. Accordingly,
we reverse the Examiner’s anticipation rejection of claim 1, as well as
claims 3 and 9 dependent upon claim 1.

35 U.S.C. § 103 Rejections
We reversed the Examiner’s anticipation rejection of independent
claim 1, therefore the obviousness rejections of dependent claims 2, 4−8, 10
and 11 are not sustained because the claims are dependent upon claim 1,
either directly or indirectly.
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In regard to independent claim 12, the Examiner finds:
Tribble discloses a system where the rotation of a dial causes
syringes to be brought into alignment, wherein the image is
captured while dial and syringe is rotated in [0053]. [Demarest]
discloses in the abstract, rein needles or syringes are rotated and
separated. [Demarest] can only hold or rotate one syringe.
Whereas Tribble can hold and rotate multiple syringes at a time.
Answer 21.
Appellant argues, “[T]hat a system for calculating the volume of
liquid in a syringe as taught by Tribble is not applicable to the system of
sorting needles disclosed by Demarest.” Appeal Brief 9. We do not find
Appellant’s argument persuasive of Examiner error because Tribble
discloses that the syringes have multiple cannula zones 382, 384. See
Tribble ¶ 59. Tribble also discloses needle sorting. See Tribble ¶ 78 (“The
first step in the operating procedure is to locate the syringe.”).
We note:
To justify combining reference teachings in support of a rejection
it is not necessary that a device shown in one reference can be
physically inserted into the device shown in the other. The test
for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be
expressly suggested in any one or all of the references. Rather,
the test is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).

Appellant further argues:
Moreover, claim 12 recites capturing, with image capture
device(s), a plurality of images of a needle cannula along a
circumferential direction of the needle cannula for a whole circle.
Tribble discloses capturing a single image of each syringe, not a
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plurality of images of a needle cannula along a circumferential
direction of the needle cannula as recited in claim 12.
Appeal Brief 9.
Claim 12 requires a needle cannula and an image capturing device
wherein the captured images are analyzed. Demarest discloses in claim 7
“means for automatically enhancing said image of a needle by recording
successive images of said needle.” Tribble discloses at least one imaging
capturing device that will capture an image of the syringe along a
circumferential direction for a whole circle. See Tribble Figure 2, elements
130, 330. We find the combined teachings of Dearest and Tribble would
suggest Appellant’s subject matter in claim 12 wherein images of a needle
are captured and analyzed.
Accordingly, we do not find Appellant’s arguments persuasive of
Examiner error. We sustain the Examiner’s obviousness rejection of claim
12, as well as dependent claims 13, 14, 16−18, 21, 25, 27 and 28 not argued
separately. See Appeal Brief 9.

CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 9 102 Demarest 1, 3, 9
2 103 Demarest, Giribona 2
4 103 Demarest, Sadeh 4
5, 6 103 Demarest,
Giribona, Chong
5,6
7, 8, 10−14,
16−21, 25,
27, 28
103 Demarest, Tribble 12−14,
16−21, 25,
27, 28
7, 8, 10,
11
Overall
Outcome
12−14,
16−21, 25,
27, 28
1-11
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED IN PART