By Dennis Crouch
In re Adler, Appeal No. 12-1610 (Fed. Cir. 2013)
The Israeli company Given Imaging makes a swallowable capsule imaging device takes readings as it passes through a patient's GI tract. The company has dozens of patents on various aspects of the device and its use. In this case, the company has asked the USPTO for a patent on the method of comparing the images taken by the capsule with "a reference value of blood and to a reference value of healthy tissue" and then displayed with color-coding on a monitor with "red color" indicating blood in the esophagus.
The USPTO examiner rejected the claims as obvious when compared against two prior art references – one that disclosed the capsule imaging device and the other that disclosed the comparison process and color-coding of blood findings. On appeal, the PTAB affirmed – finding the claims obvious in light of the two prior art references. However, the PTAB used somewhat different language to describe why the references rendered the invention obvious.
On appeal to the Federal Circuit, the Given Imaging argued that the Board's new reconception of the prior art formed a new ground of rejection not relied upon by the examiner. As a consequence, Given Imaging argued, it is therefore entitled to reopen prosecution or to request a rehearing. Here, the Federal Circuit appears to support the idea that if the PTAB had issued a new ground of rejection then the applicant would be entitled to a new hearing. See In re Stepan Co.,660 F.3d 1341 (Fed. Cir. 2011). However, in this case, the court found that no new ground of rejection was offered.
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)." . . . . 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)).
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 the end, the court ruled that the Board's decision did not include a new ground of rejection and affirmed the obviousness rejection. Appellants have been focusing more on the new-grounds-for-rejection argument because it is reviewed de novo on appeal unlike ordinary factual findings that require only substantial evidence.