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<strong>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 [unless the applicants] have had fair opportunity to react to the thrust of the rejection.</strong>

On July 18, 2013, the U.S. Court of Appeals for the Federal Circuit (Prost, Reyna, Wallach*) affirmed the USPTO Board of Patent Appeals and Interferences decision upholding the patent examiner's rejection of the claims of U.S. patent application Serial No. 10/097,096, which related to a system for detecting blood in a body lumen such as the gastrointestinal track, as obvious under 35 U.S.C. § 103 in view of several prior art references including International Patent Application WO 00/22975 (Meron) and the article by 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). The Federal Circuit stated:
<blockquote>"The ultimate judgment of obviousness is a legal determination,"which we review de novo. A conclusion of obviousness rests on the following factual findings: (1) the scope and content of the prior art; (2) the differences between the prior art and the claimed invention; (3) the level of ordinary skill in the art at the time of the invention; and (4) objective indicia of nonobviousness.

Adler does not dispute that the prior art discloses a swallowable sensing device capable of transmitting images and location information to an external display. 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," as articulated in the claims at issue. The Board concluded that it would have been obvious, because a skilled artisan would have been motivated to combine Hirata -- which discloses methods for comparison of the red color content of two reference values of tissue -- with Meron, based on Meron's suggestion that the in vivo camera could include a means for detecting the presence of blood.

Adler contends that the Board failed to appreciate that Adler's claims refer to two comparisons. The values of the received images are compared to (1) a value for healthy tissue and (2) a value for blood. According to Adler, the Board failed to properly analyze the claim, and did not take into consideration this two-prong limitation. The Board, however, did appreciate that the claim requires two comparisons and found that they were both disclosed by Hirata. . . . This finding is supported by substantial evidence. . . .

Adler's 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 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.

Additionally, Adler argues that the Board relied on a new ground for rejection of the claims at issue and instead should have reopened prosecution. . . . 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. 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 rejec tion was based." "'[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.'"

Here, Adler mischaracterizes the examiner's grounds for rejection, and neither points to specific facts found by the Board but not by the examiner, nor illustrates how any such facts formed the basis of the Board's rejection. In fact, in rejecting Adler's application, the examiner relied on Hirata's disclosure of both red color sign and red color tone, not just its use of the color sign classification. . . . 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. While the Board's explanation may go into more detail than the examiner's, that does not amount to a new ground of rejection.</blockquote>

Patent Watch: In re Adler