In re Doron Adler, et al.

Docket No. 2012-1610

July 18, 2013

Brief summary: Examiner’s obviousness rejections were affirmed by the Board, and the Board decision was affirmed by the Federal Circuit. The applicant’s argument that the Board raised a new rejection was rejected because the applicant “had the opportunity to respond, and in fact did respond to the thrust of the examiner’s basis for rejecting the claims”.

Summary: The examiner rejected all of the pending claims relating to a system “for detection of blood within a body lumen” (e.g., swallowable capsule for visualizing the GI tract) as obvious over several prior art references. In the obviousness rejection, prior art “Meron” was cited as disclosing a capsule for mapping the GI tract and prior art “Hirata” for teaching the use of a video endoscope to visualize blood (“color tone”, “area of red color”). The appeal related to the claim limitation regarding a data processor used to compare images to identify “a change in the level of red color content, the change correlating to the presence of blood.” It was argued “that the Board failed to appreciate that [the] claims refer to two comparisons…(1) a value for healthy tissue and (2) a value for blood.” The FC panel found, however, that the Board did appreciate these limitations and both were disclosed by Hirata. It was also argued that Hirata only “discloses one comparison of two values” while “[t]he claim requires three values to be used in the two comparisons”. The panel wrote that these “arguments overlook the Board’s rationale, which explains 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 receiving images from a swallowable device that could be compared to the reference values disclosed in Hirata” (“a predictable variation of the combination of Hirata and Meron”, citing KSR). The applicant also argued that the Board relied on a new ground of rejection and should have reopened prosecution under 37 CFR 41.50(b) (see also In re Leithem, FC 2011). But the panel concluded that the applicant “had the opportunity to respond, and in fact did respond to the thrust of the examiner’s basis for rejecting the claims”; as such, the Board’s explanation did “amount to a new ground of rejection” (citing In re Jung, FC 2011). Accordingly, the Board decision was affirmed.

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