The appellants were looking to reverse the Board's decision that upheld an examiner's rejection of all of the claims of U.S. Application No. 10/097,096 (the '096 application) as obvious over several references.
To understand the rejections let's review representative claim 57:
57. A method for displaying in-vivo information, the method comprising:
receiving at a data processor data generated by a swallowable in-vivo device traversing a GI tract, the data comprising a set of in-vivo images of the GI tract;
the data processor comparing values of the received images to a reference value of blood and to a reference value of healthy tissue;
the data processor causing to be displayed the images as a color video; and
the data processor further, based on the comparison, causing to be displayed an indication of the position in the GI tract of a change in the level of red color content, the change correlating to the presence of blood.
receiving at a data processor data generated by a swallowable in-vivo device traversing a GI tract, the data comprising a set of in-vivo images of the GI tract;
the data processor comparing values of the received images to a reference value of blood and to a reference value of healthy tissue;
the data processor causing to be displayed the images as a color video; and
the data processor further, based on the comparison, causing to be displayed an indication of the position in the GI tract of a change in the level of red color content, the change correlating to the presence of blood.
As to claim 57, the examiner found Meron disclosed a capsule that moves through the GI tract to generate a map of the GI tract but conceded Meron didn't disclose detecting the presence of blood.
On the other hand, the examiner found that Hirata taught factors of esophageal variceal rupture by use of image processing with a video endoscope. Hirata was also held to teach "bleeders" and "non-bleeders" were compared "in terms of endoscopic findings and the image processing data, especially variceal color tone and red color sign." The red color signs were classified by degree, with a minor degree indicating a reference of healthy tissue and a major degree indicating a reference of blood.
Thus, the examiner stated it would have been obvious to one of ordinary skill in the art at the time the invention was made to incorporate a processor for the colorimetric analysis of video endoscopic data, as taught by Hirata, in order to determine the presence of blood. The examiner reasoned that it would have been obvious because Hirata provides the specifics to complete Meron's disclosure that it is capable of determining the presence of blood.
Adler argued to the Federal Circuit that the Board relied upon a new ground of rejection not relied upon by the examiner, it should be entitled to reopen prosecution or to request a rehearing. 37 C.F.R. § 41.50(b).
The Federal Circuit disagreed. It stated the thrust of the Board’s rejection changes when it finds facts not found by the examiner regarding the differences between the prior art and the claimed invention, and these facts are the principal evidence upon which the Board’s rejection was based. The ultimate criterion of whether a rejection is considered new in a Board decision is whether applicants had fair opportunity to react to the thrust of the rejection.
Adler failed to meet the USPTO rules: (1) it didn't point to specific facts found by the Board but not by the examiner; (2) it didn't show how any such facts formed the basis of the Board’s rejection; and (3) it had a fair opportunity to respond, and in fact did respond to the thrust of the examiner’s basis for rejecting the claims before the Board.
The Federal Circuit noted Adler's case differed from those cited by Adler where the Board made new factual findings that the applicants did not have an opportunity to address the rejection. It also noted a Board’s explanation may go into more detail than the examiner but this does not amount to a new ground of rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Thus, the Federal Circuit affirmed the Board did not rely on new grounds for rejection.
Copyright © 2013 Robert Moll. All rights reserved.
