In re Adler: Board Affirms Obviousness; No New Grounds of Rejection

Category: Administrative Law 
By: John Kirkpatrick, Contributor 
TitleIn re Adler, No. 2012-1610 (July 18, 2013).
Issue(s)[1] “The primary issue on appeal is 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 correlat[es] to the presence of blood […].” In re Adler, at *6.
[2] “Additionally, Adler argues that the Board relied on a new ground for rejection of the claims at issue and instead should have reopened prosecution.” In re Adler, at *8.
Holding(s)[1] “[The Board’s rationale] is a predictable variation of the combination of Hirata [which equates analyzing red color variances with bleeding] and Meron [which teaches receiving images from a swallowable device].” In re Adler, at *8 (text added).
[2] “While the Board’s explanation may go into more detail than the examiner’s, that does not amount to a new ground of rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).” In re Adler, at *10 (text added).

Procedural Posture“The examiner rejected all of the pending claims—claims 57, 59, 61, 63–67, and 71—under 35 U.S.C. § 103 as obvious over several prior art references, including International Patent Publication WO 00/22975 (“Meron”) in view of Masaru Hirata et al., STUDY OF NEW PROGNOSTIC FACTORS OF ESOPHAGEAL VARICEAL RUPTURE BY USE OF IMAGE PROCESSING WITH A VIDEO ENDOSCOPE, 116 SURGERY 8–16 (1994) (“Hirata”). Adler appeals [claims 57 and 63] from the decision of the Board of Patent Appeals and Interferences (“the Board”) affirming the examiner’s rejection with respect to Meron in view of Hirata. [...].” In re Adler, at *2 (text added).
Legal Reasoning (Prost, Reyna, Wallach)
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 processor comparing values of the received images to a reference value of blood and to a reference value of healthy tissue; [...]; 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.” In re Adler, at *3 (emphasis added by the Court).
Examiner's Findings“According to the examiner, “[i]t 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, as stated by Meron.” Id. The examiner reasoned that it would have been obvious “because Meron states that 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.” [...]” In re Adler at *4-5.
[1] Obviousness Analysis - Equating detection of a red tone to detection of bleeding
Findings of Fact Supported by Substantial Evidence
“Adler contends that the Board failed to appreciate that Adler’s claims refer to two comparisons.” In re Adler, at *6.
The Board stated that “Hirata discloses that color tone was analyzed by comparing the color tone of a defined varices region with the color tone of a defined normal esophageal region.” Board Decision at *7 (citing Hirata at 11). This finding is supported by substantial evidence.” Id. at *7.
“[S]ubstantial evidence supports the Board’s finding that Hirata teaches identification of a pathology through red color image analysis of two reference values; one of ordinary skill in the art would understand that detecting areas with different red color values corresponds to blood.” Id. at n4 (text added).
Predictable Variation“[The Board’s rationale] […] 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 received images from a swallowable device that could be compared to the reference values disclosed in Hirata. This is a predictable variation of the combination of Hirata and Meron. See KSR, 550 U.S. at 417 (“If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”).” Id.at *8.
[2] Not a New Ground of Rejection to Elaborate on Examiner's Findings
Legal Standard“When the Board relies upon a new ground of rejection not relied upon by the examiner, the applicant is entitled to reopen prosecution or to request a rehearing. 37 C.F.R. § 41.50(b). This court has stated that “[t]he 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.” In re Leithem, 661 F.3d 1316, 1320 (Fed. Cir. 2011). “‘[T]he ultimate criterion of whether a rejection is considered ‘new’ in a decision by the [B]oard is whether [applicants] have had fair opportunity to react to the thrust of the rejection.’” Id. (quoting In re Kronig, 539 F.2d 1300, 1302–03 (C.C.P.A. 1976) (modifications in original)).” In re Adler, at *9.
Appellant's Argument“Adler contends that the Board’s “facts and rationale for the affirmance (Hirata’s image processing and colorimetric analysis) changed the thrust of the Examiner’s rejection (Hirata’s classification of red color signs).” In re Adler, at *8. “[The] “examiner made no mention of colorimetric analysis,” Appellant’s Br. 17.” In re Adler, at *10 (text added).

Appellant's Opportunity to Address

"Adler appears to have appreciated the examiner’s position, based on Adler’s characterization in its Reply Brief to the [Board.] […] [T]he “Examiner states that Hirata performs color analysis on varices and that Hirata’s disclosure would lead one skilled in the art to focus on the possibility of processing electronic images for quantification of colorimetric data, and that image processing could determine the bleeding point.” J.A. 98. Because Adler had the opportunity to respond, and in fact did respond, to the thrust of the examiner’s basis for rejecting the claims, this case differs from those cited by Adler, where the Board made new factual findings that the applicants did not have an opportunity to address.” In re Adler, at *10 (text added).
"Because the Board did not err in rejecting the pending claims as obvious and did not rely on new grounds for rejection, we affirm." In re Adler, at *11.

Image Attribution Statement: "Endoscopy," National Cancer Institute, AV Number: AV-8000-0286. Available under a Public Domain license via WikiCommons, http://commons.wikimedia.org/wiki/File:Endoscopy_nci-vol-1982-300.jpg (last visited Sept. 4, 2013).  
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