Patent Case Summaries July 19, 2013

Federal Circuit Patent Case Summaries for the Week Ending July 19, 2013

The following is a summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit for the week ending July 19, 2013. Pat Kartes and Ross Barton prepared this edition.   

Case Summaries

Patentable Invention: Obviousness: Scope and Content of Prior Art
Patent Office Procedures: Prosecution Before the Office: Prosecution of Applications: Appeals

In re Adler, No. 12-1610 (Fed. Cir. (B.P.A.I.) July 18, 2013). Opinion by Wallach, joined by Prost and Reyna.

The Federal Circuit affirmed the Board of Patent Appeals and Interferences’s (“Board”) rejection of all pending claims of U.S. Application No. 10/097/096 (“the ’096 application”) as obvious and determined that the Board did not rely on new grounds for the rejection.

The appellants, Doron Adler, Ofra Zinaty, Daphna Levy, and Arkady Glukhovsky (collectively “Adler”), were all named inventors on the ’096 application. The application is directed to a system for detection of blood within a body lumen, which may be used to ultimately detect pathologies of the gastrointestinal (“GI”) tract. In this regard, because the pathologies are found in the GI tract, they may be difficult to detect or see, even though pathologies often result in changes of color or texture of the GI tract and may be due to bleeding. The system of the ’096 application includes a swallowable capsule that takes images of the body lumen. Those images are compared to both healthy tissue reference values and blood reference values. This information is used to help locate a change in the level of red color content in the body lumen, thereby indicating a colorimetric abnormality, such as bleeding or blood clots.

The examiner of the ’096 application rejected the claims as being obvious over a number of references, including International Patent Publication WO 00/22975 (“Meron”) and an article authored by Masaru Hirata and others (“Hirata”). The examiner found that Meron discloses a capsule that can be delivered to a location in the GI tract to generate a map thereof. The examiner also noted that Meron does not specifically disclose a method of detecting the presence of blood, and he relied on Hirata for teaching this feature. Hirata discloses image processing for determining red color signs and color tone in images of blood vessels in the esophagus. Adler appealed the examiner’s rejections. On appeal, the Board agreed with the examiner, whereupon Adler further appealed to the Federal Circuit.

Reviewing the case de novo, the Federal Circuit first affirmed the Board’s rejection of the ’096 application as obvious over Meron in view of Hirata. In doing so, the Federal Circuit discounted Adler’s argument that Hirata fails to teach two comparisons (i.e., the comparison to healthy tissue and the comparison to blood). The Federal Circuit agreed with the Board’s reasoning that Hirata discloses comparing a known color tone of a known variceal region with the color tone of a known healthy esophageal region. Further, the Federal Circuit held that “one of ordinary skill in the art would equate red color with present bleeding and would be motivated to build on Meron’s teachings concerning received images from a swallowable device” and compare those images with the reference values of Hirata.

The Federal Circuit also determined that the Board did not rely on new grounds for rejection when issuing its opinion. In particular, the Federal Circuit concluded that Adler mischaracterized the examiner’s grounds for rejection, failed to point to specific facts found by the Board but not by the examiner, and failed to illustrate how any such facts formed the basis for the Board’s rejection. Moreover, the Federal Circuit noted that Adler did actually appreciate and respond to the very same argument by the examiner that Adler was asserting never existed. In explaining its ruling, the court clarified that “[w]hile the Board’s explanation may go into more detail than the examiner’s, that does not amount to a new ground of rejection.”  


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