Tissue Analytics, Inc.

Patent Trials and Appeals Board

Mar 29, 2022

2021005527 (P.T.A.B. Mar. 29, 2022)

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. 15/521,954 04/26/2017 Joshua BUDMAN G1941-00012 4854 8933 7590 03/29/2022 DUANE MORRIS LLP - Philadelphia IP DEPARTMENT 30 SOUTH 17TH STREET PHILADELPHIA, PA 19103-4196 EXAMINER KIM, SAMUEL CHONG ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 03/29/2022 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): IDocketing@duanemorris.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSHUA BUDMAN, KEVIN P. KEENAHAN, and GABRIEL A. BRAT Appeal 2021-005527 Application 15/521,954 Technology Center 3700 Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-12, 14, and 15. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Tissue Analytics, Inc. Appeal Br. 1. Appeal 2021-005527 Application 15/521,954 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to “developing a system that captures data, an image or images and a video of a human skin damage condition at the point of care, analyzes the image(s) and video in an automated fashion and transmits the data, image(s) and video with the analysis to a central location.” Spec. ¶ 1. Claims 1 and 12 are the independent claims on appeal. Claim 1, reproduced below, illustrates the claimed subject matter. 1. A method for assessing progress of changes over time to a skin condition that is visible on a mammalian subject, comprising: obtaining a first image of the skin condition and a reference model from a first mobile device at a first time; wherein the reference model is positioned on the subject in a region of the skin condition, the reference model having known objective visual characteristics; obtaining a second image of the skin condition and the reference model from the first mobile device or a second mobile device at a second time, wherein the second image is taken from a perspective angle and distance with reference to the skin condition that are at least partly different than those of the first image; normalizing the first image and the second image such that the reference model in the first and second images conforms to the known objective visual characteristics of the reference model, thereby also normalizing the skin condition in the first image and the second image; characterizing a set of parameter values of the skin condition in the normalized first image and the normalized second image; comparing the respective parameter values of the skin condition from the normalized first image and the normalized second image; and Appeal 2021-005527 Application 15/521,954 3 predicting future progress of the skin condition based on the parameter values of the skin condition in the first and second images using a machine learning algorithm. Appeal Br. 8 (Claims App.). THE REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Taylor US 5,967,979 Oct. 19, 1999 Jaeb US 8,588,893 B2 Nov. 19, 2013 Luby US 2003/0085908 A1 May 8, 2003 Rousson US 2007/0253611 A1 Nov. 1, 2007 Wu US 2015/0150457 A1 June 4, 2015 Kateb US 2016/0035093 A1 Feb. 4, 2016 Rithe US 2017/0124709 A1 May 4, 2017 Subramaniam WO 2015/116823 A1 Aug. 6, 2015 Chitiboi Towards Automatic Extraction of the Myocardium in Temporal MRI Using Object-based Segmentation, “Eurographics Conf. On Visualization (EuroVis), 1-5 Mar. 9, 2015 THE REJECTIONS The following rejections are before us on appeal: I. Claims 1, 5, 10, and 11 stand rejected under 35 U.S.C. § 103 as being unpatentable over Luby, Taylor, and Kateb. II. Claims 2-4 stand rejected under 35 U.S.C. § 103 as being unpatentable over Luby, Taylor, Kateb, and Jaeb. III. Claims 6, 7, and 9 stand rejected under 35 U.S.C. § 103 as being unpatentable over Luby, Taylor, Kateb, and Wu. Appeal 2021-005527 Application 15/521,954 4 IV. Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable over Luby, Taylor, Kateb, Wu, and Subramaniam. V. Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable over Luby, Taylor, Kateb, Wu, and Chitiboi. VI. Claims 12 and 14 stand rejected under 35 U.S.C. § 103 as being unpatentable over Luby, Taylor, Kateb, and Rithe. VII. Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable over Luby, Taylor, Kateb, Rithe, and Rousson. OPINION2 Rejection I Regarding independent claim 1, the Examiner finds that Luby teaches the claimed method, including inter alia, obtaining first and second images of a skin condition and a reference model at first and second times. Non- Final Act. 6 (citing Luby ¶¶ 7, 23, 30, 31). The Examiner determines that Luby is silent3 as to “whether the image recording apparatus 14 is a mobile device,” as required by claim 1, and the Examiner relies on Taylor for teaching “acquiring images using a mobile device,” and specifically, “a photographic film camera such as a 35 mm camera, film motion picture camera, video camera, or digital still camera,” 2 Appellant chose not to file a Reply Brief. 3 Notably, Luby discloses that “[p]hotographic and video camera systems are well known in the art” (Luby ¶ 3), and further, that “image recording apparatus 14 can be any image recording apparatus capable of taking a still or moving image,” including “a camera or video imaging apparatus . . . utilizing a light sensitive film which has to be developed in a manner well known in the art” (id. ¶ 36). Appeal 2021-005527 Application 15/521,954 5 wherein the Examiner finds that such devices are “mobile” devices4 because they are “capable of being moved.” Non-Final Act. 6-7 (citing Taylor 6:51- 62, Fig. 1) (emphasis omitted). The Examiner reasons that it would have been obvious “to have modified the method of analyzing the first and second images of Luby to incorporate the use of a mobile imaging device,” as taught in Taylor, “to provide a more resilient system that can adapt to differences between angles of the images while still evaluating the wound parameter values.” Id. at 7-8. The Examiner also determines that Luby is silent as to “predicting future progress of the skin condition based on the parameter values of the skin condition in the first and second images using a machine learning algorithm,” as required by claim 1, and the Examiner relies on Kateb for teaching “predicting future progress of a condition based on parameter values of the condition in first and second images using a machine learning algorithm.” Non-Final Act. 6-8 (citing Kateb ¶¶ 11, 15, 29, 35, 73, 142). The Examiner reasons that it would have been obvious “to have modified the method of analyzing the skin condition of Luby to incorporate predicting future progress of the condition,” as taught by Kateb, “to provide a more complete diagnostic analysis of the patient’s skin condition.” Id. 4 The Specification discloses, regarding the claim term “mobile device,” that “the term ‘data collection engine’ describes an application on any mobile device that is able to gather images and videos,” wherein “[t]his list comprises applications for mobile phones and tablets.” Spec. ¶ 39; see also id. ¶ 70 (“Options for this data collection engine comprise a mobile phone, tablet and a digital camera combined with a computer with a portable or non-portable workstation.”) (emphasis added). Appeal 2021-005527 Application 15/521,954 6 Appellant argues that “Kateb does not disclose using machine learning algorithms to predict future progress of skin conditions based on images obtained from a mobile device,” but rather, Kateb “is only based on images obtained from a microscope, endoscope, or other imaging modality (e.g., CT or MRI).” Appeal Br. 8 (citing Kateb ¶ 11). Appellant’s argument, however, does not apprise us of error in the Examiner’s reliance on Taylor, not Kateb, for disclosing a mobile device, and modifying Luby, in view of Taylor, to use a mobile device, as claimed, and further modifying Luby, in view of Kateb, to incorporate predicting the future progress of a condition using a machine learning algorithm. See Ans. 7 (“the combination of Luby in view of Taylor teaches or suggests the use of a mobile device”). Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). In sum, Appellant’s argument does not apprise us of error in the Examiner’s findings and reasoning relative to the combined teachings of Luby, Taylor, and Kaleb. Appellant also argues that “only the provisional application” of Kateb is available as prior art and that Kateb’s provisional application fails to disclose “predicting future progress of the skin condition based on the parameter values of the skin condition in the first and second images [obtained from a mobile device] using a machine learning algorithm.” Appeal Br. 9. Appellant submits that Kateb’s provisional application discloses that “images are used with pattern recognition or machine Appeal 2021-005527 Application 15/521,954 7 learning,” however, “those images are clearly not obtained from a mobile device,” but rather, are “obtained using a microscope.” Id. at 10. Again, Appellant’s argument does not address the rejection as articulated by the Examiner, which relies on Taylor, not Kateb, for disclosing obtaining first and second images from first and/or second mobile devices. See Ans. 7 (“the lack of the use of a mobile device in the system of Kateb is irrelevant”); id. at 9 (finding that Kateb’s provisional application discloses “the prediction of the progress of an abnormality based on multiple and/or serial images of the particular abnormality,” for which Kateb is relied upon by the Examiner). Finally, Appellant argues that “[t]here is no suggestion in Luby, Taylor, or [Kateb’s provisional application] for using multiple images obtained from mobile devices to predict the future progress of the skin condition using a machine learning algorithm,” and therefore, “the proposed combination of Luby, Taylor, and Kateb fails to render claim 1 obvious.” Appeal Br. 10. Appellant’s argument appears to be premised on a requirement that a motivation to combine references must be expressly set forth in the references. This premise is incorrect. An express teaching, suggestion, or motivation to combine references is not required to support a conclusion of obviousness based on the combination of the references. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Therefore, this argument is unpersuasive. The proper inquiry is whether the Examiner has articulated sufficient reasoning based on a rational underpinning to explain why a person of ordinary skill in the art would have combined the teachings of Luby, Taylor, and Kateb. See KSR, 550 U.S. at 418 (stating that “rejections Appeal 2021-005527 Application 15/521,954 8 on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))). In sum, Appellant’s argument does not apprise us of error in the Examiner’s reasoning as set forth supra. Accordingly, we sustain the Examiner’s rejection of independent claim 1. Appellant chose not to present arguments for the patentability of claims 5, 10, and 11, which ultimately depend from independent claim 1, and therefore, for essentially the same reasons as set forth supra, we also sustain the Examiner’s rejection of claims 5, 10, and 11. Appeal Br. 6-10. Rejection VI Regarding independent claim 12, Appellant argues that “[a]s described . . . with reference to claim 1, the combination of Luby, Taylor, and [Kateb’s provisional] application fails to disclose, teach, or suggest” certain limitations of claim 12. Appeal Br. 11. However, for the reasons set forth supra, we are not apprised of error in the Examiner’s findings or reasoning relative to Luby, Taylor, and Kateb’s provisional application in the rejection of claim 1. Appellant also argues that “it is Appellant’s contention that the prior art or appropriate evidence must provide a basis for a combination/modification, i.e., a conclusion of obvious cannot derive from Appellant’s specification.” Id. Again, the Examiner is not required to rely on a reference itself for an express reasoning to combine references. Further, the Examiner has articulated reasoning for combining the references, and Appellant has not sufficiently demonstrated that the Examiner’s reasoning is gleaned solely from Appellant’s Specification. For example, the Examiner’s rationale for Appeal 2021-005527 Application 15/521,954 9 modifying Luby to incorporate a mobile device is factually supported by Taylor, for example, which depicts a hand-held camera (i.e., a camera capable of being moved by a user relative to a wound) in Figure 1. Accordingly, we sustain the Examiner’s rejection of independent claim 12. Appellant chose not to present arguments for the patentability of claim 14, which depends from independent claim 12, and therefore, for essentially the same reasons as set forth supra, we also sustain the Examiner’s rejection of claim 14. Appeal Br. 10-11. Rejections II-V and VII Appellant chose not to present arguments for the patentability of claims 2-4, 6-9, and 15, which ultimately depend from independent claims 1 and 12, and therefore, for essentially the same reasons as set forth supra, we also sustain the Examiner’s rejections of claims 2-4, 6-9, and 15. Appeal Br. 6-11. CONCLUSION The Examiner’s rejections of claims 1-12, 14, and 15 are affirmed. Appeal 2021-005527 Application 15/521,954 10 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5, 10, 11 103 Luby, Taylor, Kateb 1, 5, 10, 11 2-4 103 Luby, Taylor, Kateb, Jaeb 2-4 6, 7, 9 103 Luby, Taylor, Kateb, Wu 6, 7, 9 8 103 Luby, Taylor, Kateb, Wu, Subramaniam 8 8 103 Luby, Taylor, Kateb, Wu, Chitiboi 8 12, 14 103 Luby, Taylor, Kateb, Rithe 12, 14 15 103 Luby, Taylor, Kateb, Rithe, Rousson 15 Overall Outcome 1-12, 14, 15 TIME PERIOD FOR RESPONSE 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)(1)(iv). AFFIRMED