August 2013
Additional Detail Provided in Board’s Explanation Does Not Constitute New Ground of Rejection
| Judges: Prost, Reyna, Wallach (author) |
| [Appealed from Board] |
In In re Adler, No. 12-1610 (Fed. Cir. July 18, 2013), the Federal Circuit affirmed the Board’s decision upholding the examiner’s final rejection of the pending claims of U.S. Patent Application No. 10/097,096 (“the ’096 application”) by Doron Adler, Ofra Zinaty, Daphna Levy, and Arkady Glukhovsky (collectively “Adler”) as obvious over several prior art references and found that the Board did not rely on new grounds for rejection.
The ’096 application is directed in part to a system for detecting blood within a body lumen, such as the esophagus. The system includes a swallowable capsule with an in vivo imager for obtaining images from within the body lumen. The images obtained can then be compared to two reference values: one for healthy tissue and one for blood.
The examiner rejected the claims-at-issue as being obvious over several prior art references, including “Meron” in view of “Hirata.” The examiner found that Meron disclosed a capsule that moves through the gastrointestinal tract to generate a map of the tract. The examiner also found that Hirata taught a study of factors of esophageal variceal rupture using image processing with a video endoscope. The examiner concluded it would have been obvious to one of ordinary skill in the art at the time of invention to incorporate a processor for the colorimetric analysis of video endoscopic data, as taught by Hirata, in order to determine the presence of blood, as stated by Meron. The examiner reasoned that it would have been obvious because Meron states it is capable of determining the presence of blood but fails to provide the specifics of how, while Hirata provides a method and a processor capable of performing these feats. The examiner’s rejections were appealed, and the Board affirmed.
“While the Board’s explanation may go into more detail than the examiner’s, that does not amount to a new ground of rejection.” Slip op. at 10.
On appeal, the Federal Circuit noted that the primary issue was whether the Board properly found that it would have been obvious, in light of the prior art, to compare reference values for healthy tissue and blood to determine whether images of the gastrointestinal tract showed a change in the level of red color content where that change correlates to the presence of blood, as articulated in the claims-at-issue. The Court explained that, contrary to Adler’s argument, the Board appreciated that the claims require two comparisons of the values for the received images: first to a value for healthy tissue and second to a value for blood. The Court held that substantial evidence supported the Board’s finding that Hirata discloses analyzing color tone by comparing a defined varices region with a defined normal esophageal region. The Court, discussing the Board’s rationale, further explained that one of ordinary skill in the art would equate the color red with current bleeding and would be motivated to build on Meron’s teachings concerning images received from a swallowable device that could be compared to the reference values disclosed in Hirata. The Court stated that the claim was a predictable variation of the combination of Hirata and Meron.
In addressing Adler’s argument that the Board relied on a new ground for rejection of the claims-at-issue and instead should have reopened prosecution, the Court determined that Adler mischaracterized the examiner’s grounds for rejection, and neither pointed to specific facts found by the Board but not by the examiner, nor illustrated how any such facts formed the basis of the Board’s rejection. The Court noted that, in rejecting the application, the examiner relied on Hirata’s disclosure not just for its use of the color sign classification, but for the red color tone as well. Contrary to Adler’s contention that the examiner made no mention of colorimetric analysis, the Court found the examiner expressly referred to that feature of Hirata by name. Finally, the ultimate criterion of whether a rejection is considered new in a decision by the Board is whether applicants have had fair opportunity to react to the thrust of the rejection. The Court indicated that Adler had the opportunity to respond—and, in fact, did respond—to the thrust of the examiner’s basis for rejecting the claims.
Accordingly, the Court concluded that the Board did not err in rejecting the pending claims as obvious over Meron in view of Hirata and did not rely on new grounds for rejection.
