In Re: Doron Adler, 723 F.3d 1322

Adler are named inventors on U.S. Patent Application No. 10/097,096 (the ’096 application) directed to a swallowable in‑vivo imaging capsule and a data‑processor that compares image color values to reference values for healthy tissue and blood to display an indication of a change in red color content correlating to blood.
Representative claim 57 requires receiving images from a swallowable device, comparing image values to a blood reference and a healthy tissue reference, displaying a color video, and displaying the GI position of a change in red color content correlating to blood.
Examiner rejected claims 57, 59, 61, 63–67, and 71 under 35 U.S.C. § 103 as obvious over International Patent Publication WO 00/22975 (Meron) in view of Hirata (1994), among other references.
Meron discloses a swallowable capsule generating images and maps of the GI tract and suggests the device could detect blood but lacks technical detail on colorimetric detection.
Hirata discloses video endoscopic image processing comparing color tone of a varices region and a normal esophageal region (forming an Rr ratio) and determining area of red color sign to identify varices at higher risk of rupture.
The Board affirmed the examiner, finding Hirata discloses the two‑comparison colorimetric analysis and that combining Hirata’s image processing with Meron’s swallowable imaging would have been obvious; Adler’s argument that the Board relied on a new ground was rejected.

Issue	Plaintiff's Argument (Adler)	Defendant's Argument (Board/PTO)	Held
Obviousness of claim limitations requiring comparison to both healthy tissue and blood reference values	Adler: Board failed to account for claim’s two comparisons and three required values; Hirata does not teach detection of actual blood	Board/PTO: Hirata discloses comparing variceal region to healthy region (Rr) and area of red color sign; Meron suggests detectability of blood; combining is a predictable variation	Affirmed: substantial evidence supports that Hirata discloses the two comparisons and combination with Meron renders claims obvious
Whether the Board relied on a new ground of rejection (entitling Adler to reopened prosecution)	Adler: Board changed the thrust of the rejection by relying on Hirata’s image processing/colorimetric analysis rather than Hirata’s classification of red color signs	Board/PTO: Examiner explicitly cited Hirata’s image processing and colorimetric analysis; Adler had opportunity to respond; Board elaborated but did not introduce new grounds	Affirmed: Board did not introduce a new ground; applicants had fair opportunity to address the rejection

KSR Int’l Co. v. Teleflex, 550 U.S. 398 (predictable variations and motivation to combine govern § 103 analysis)
Graham v. John Deere Co., 383 U.S. 1 (framework for obviousness: prior art scope, differences, skill level, objective indicia)
Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989 (de novo review of legal conclusions of obviousness)
In re Elsner, 381 F.3d 1125 (standard of review for Board’s legal conclusions)
In re Gartside, 203 F.3d 1305 (substantial evidence review of Board factual findings)
In re Leithem, 661 F.3d 1316 (when Board’s new factual findings create a new ground requiring reopening prosecution)
In re Jung, 637 F.3d 1356 (Board’s elaboration on examiner’s rationale is not necessarily a new ground)
Consol. Edison Co. v. Nat’l Labor Relations Bd., 305 U.S. 197 (definition of substantial evidence standard)