New Explanation by Patent Trial and Appeal Board Is Not a New Ground of Rejection

23 July 2013 PharmaPatents Blog

In In re Adler, the Federal Circuit affirmed the decision of the Patent Trial and Appeal Board (PTAB) that upheld the Examiner’s determination that the claims at issue were obvious. In so doing, the court rejected Adler’s arguments that the PTAB decision was based on a new ground of rejection that would have entitled Adler to reopen prosecution or obtain a rehearing.

The Application at Issue

The application at issue was U.S. Patent Application 10/097,096, directed to a system “for detection of blood within a body lumen,” such as the esophagus. As described by the court, the system “includes a swallowable capsule having an in-vivo imager for obtaining images from within the body lumen.” In operation, “[t]hose images can be compared to two reference values, one for healthy tissue and one for blood.”

The Federal Circuit identified claim 57 as representative:

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 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.

Adler’s arguments against the obviousness rejection focused on this dual comparison.

The Obviousness Rejection

The Examiner rejected the claims over the combination of two references: Meron and Hirata.

Meron was cited as the primary reference for disclosing “a method for identifying a target location in the gastrointestinal tract and for direct delivery of a device to the identified location.” According to the Federal Circuit, the Examiner found that “Meron discloses a capsule that moves through the [GI] tract in order to generate a map of the GI tract.” However, the Examiner found that “although the device could include a sensor for detecting the presence of blood, ‘Meron does not specifically disclose a method of detecting the presence of blood.’”

Hirata was cited for disclosing “a study of factors of esophageal variceal rupture by use of image processing with a video endoscope,” and for teaching that “‘bleeders’ and ‘non-bleeders’ were compared ‘in terms of endoscopic findings and the image processing data, especially variceal color tone and red color sign.’” In accordance with Hirata, “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.”

Putting these references together, the Examiner found that “‘[i]t would have been obvious … 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.

The Federal Circuit Decision

On the merits, the Federal Circuit affirmed the PTAB decision that upheld the Examiner’s rejection, and rejected Adler’s argument that the Federal Circuit failed to appreciate “that the claim requires two comparisons.” To the contrary, the court found that the PTAB found that both comparisons “were disclosed by Hirata,” and that that finding was “ supported by substantial evidence.”

The Federal Circuit also rejected Adler’s argument regarding the new ground of rejection. As the court noted, if the PTAB had relied upon a new ground of rejection, Adler would have been “entitled to reopen prosecution or to request a rehearing,” in accordance with 37 CFR § 41.50(b).

In evaluating Board decisions for new grounds of rejection, the Federal Circuit has considered whether the “thrust of the rejection” had changed from the Examiner’s rejection to the Board’s decision. The Federal Circuit explained:

“[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.”


“[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.”

Turning to the case before it, the court noted that “Adler … 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.” The court also did not find any assertions that Adler did not have an opportunity to respond to during prosecution in front of the Examiner

While the Board’s explanation may go into more detail than the examiner’s, that does not amount to a new ground of rejection.

Finding New Facts

When the PTAB “affirms” a rejection based on a new rationale, it can be frustrating to the Applicant. Not only has the Applicant spent a significant amount of time and money to challenge the rejection as formulated by the Examiner’s, the Applicant may have a good argument against the rejection as formulated by the Board. This case shows that in order to convince the Federal Circuit that a PTAB “affirmance” amounted to a new ground of rejection, the Applicant needs to be able to point to new findings of fact relied upon by the PTAB, such as a new claim construction or a new interpretation of the cited references. 

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