Given Imaging Loses in Prosecution, on Appeal to Board of Appeals, and then Again at United States Court of Appeals Federal Circuit

bitter pill

Given Imaging is an Israeli technology company that has developed a camera on pill. Essentially, the patient swallows the camera which images the digestive tract as it passes through, prior to being excreted.

Given Imaging filed a patent application number 10/097,096.  The pending claims of which, Nos. 57, 59, 61, 63-67 and 71 were rejected as obvious in light of the combination of WO 00/22975 to Meron (an earlier PCT application filed by Given Imaging) in view of Masaru Hitata et al. Study of New Prognosis Factors of Esophageal Variceal Rupture By Use of Image Processing with a Video Endoscope.

Essentially, the Meron publication teaches  a capsule that moves through the gastrointestinal tract in order to map the tract. Although the capsule could include a blood determining sensor, it is not specifically disclose this. Hirata does, however teach a study of factors of aesophageal variceal rupture by use of imaging with a video endoscope, teaching red colour tone and red colour signs as indicative of bleeding.  The Examiner considered it obvious to combine the two teachings.

The Applicant, represented by Pearl Cohen-Zedek Latzer (PCZL) appealed the obviousness ruling to the Board of Appeals which affirmed the Examiner’s findings. Undeterred, Pearl Cohen Zedek Latzer (PCZL) appealed to the United States Court of Appeals Federal Circuit. PCZL, represented by Guy Yonai, argued that the Appeal Board did not appreciate that a comparison was made between different redness shades and claimed that the Board relied on new grounds for opposition and should therefore, have reopened prosecution.

After acknowledging that they had jurisdiction to hear the appeal, the CAFC repeated that the obviousness determination is a legal determination, citing KSR vs. Teleflex, Proctor & Gamble vs. Teva, Graham vs. John Deere. The Court ruled that where the Board relies upon a new ground of rejection not relied upon by the Examiner, the applicant is indeed entitled to reopen prosecution or to request a rehearing. However, in this case, the Applicant was mischaracterizing the examiner’s grounds of rejection, and neither points to specific facts found by the board but not found by the Examiner, nor illustrates how any such facts formed the basis of the Board’s rejection. In fact, the Examiner relied on Hirata’s disclosure of both the red color sign and the red color tone, not just stating its use of the color sign classification.

The FCAC ruled that whereas the boards’ explanation may go into more detail than the examiner’s, that does not amount to new ground of rejection. See In re Jung 637 F,3d 1356, 1365 (Fed. Cir. 2011).

In Conclusion: Because the Board did not err in rejecting the pending claims as obvious over Meron in View of Hirata and did not rely on new grounds for rejection, the Board is affirmed.

In re Adler, Appeal No. 12-1610 (Fed. Cir. 2013)

COMMENTS

I understand that swallowing a pill camera is not pleasant, but compares favorably with fiber-endoscopy. As the examiner, the board of appeals and the Court of Appeal Federal Circuit all found the claimed invention obvious, and it is, after all, merely a combination of two prior art citations, we think that it is indeed obvious.

The first appeals board is the patents appeals board or PTAB, a body of administrative judges specializing in patents and patent prosecution. In 99% of cases, their findings are final. In more than a third of the cases brought before PTAB, there is reversal in part of the Examiner’s finding. In this case however, they essentially accepted the Examiner’s version and even added some of their own interpretation as to why the Examiner was right in the rejection. What PCZL failed to recognize was that the PTAB was sending a message to Given Imaging saying “not just that we think the Examiner was right, but he was being easy on you and moreover, we think that based on the two references cited, the invention is obvious because of these ADDITIONAL reasons.” PCZL mistook “additional” for “different” which the CAFC denied on appeal while scolding PCZL (pages 8-10) for doing a bad job on appeal. Of course, PCZL could now try taking the case to the US Supreme Court, but it is unlikely that they will agree to hear the case.

I find it difficult to understand PCZL’s strategy here. The essential argument is whether redness in the gut that is comparable to redness caused by bleeding is an indication of bleeding. I find it difficult to rationalize why that shouldn’t be so.

Patently-O wrote up the case here: Federal Circuit Deciding USPTO Procedure: New Grounds for Rejection

The original decision is here: 12-1610.opinion.7-15-2013.1

Another lawsuit filed by PCZL on behalf of an Israeli Company may be found here 

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: