Federal Circuit No. 2012-1610

In Adler, the Federal Circuit addressed a challenge to a Patent Trial Appeal Board (Board) decision upholding an examiner’s rejection on obviousness grounds.

The application at issue in this case was U.S. Patent Application 10/097,096 ("the ‘096 application"), directed to a system for detecting blood within a body lumen - the inner open space or cavity of a tubular organ - such as the esophagus. The system includes "a swallowable capsule having an in-vivo imager for obtaining images within the body lumen."

The examiner found the claims at issue would have been obvious over Meron in view of Hirata because one of ordinary skill would incorporate a processor for the colorimetric analysis of video endoscopic data, as taught by Hirata, in order to determine the presence o blood as stated in Meron. Here, Meron discloses a method for identifying a target location in the gastrointestinal tract and for delivery of a device, e.g. a capsule, to that location, but did not disclose the presence of blood. However, the examiner determined that, in view of Hirata, the claims at issue were obvious to one of ordinary skill in the art because it taught factors of esophageal variceal rupture by use of image processing with a video endoscope, and because Hirata referred to its subjects as "bleeders" and "non-bleeders." Hirata further compared the bleeders and nonbleeders in terms of endoscopic findings and image processing data by way of color tone and red color sign, further classifying the red color signs by degree, minor degree (reference of healthy tissue) and major degree (reference of blood).

Adler argued that the Board failed to appreciate that Adler's claims "refer to two comparisons," a value for healthy tissue and a value for the presence of blood. However, the Federal Circuit concluded that the Board in fact had appreciated the comparisons as disclosed by Hirata although not explicitly stated. The Federal Circuit further stated that any differences in the comparisons of the '096 application and Hirata were predictable variation of the combination of Hirata and Meron.

Additionally, the Federal Circuit determined that there was no evidence to show that the Board relied on a new group of a rejection because Alder neither pointed to "specific facts found by the Board but not by the examiner, no illustrate how any such facts formed the basis of the Board's rejection."

Author: Jasmine Boyd (summer law clerk)