If a person of ordinary skill can implement a predictable variation of the teachings in the prior art to arrive at the claimed invention, § 103 likely bars its patentability.
Background / Facts: The application on appeal here from the PTO is directed to a system “for detection of blood within a body lumen,” such as the esophagus. In particular, the system “includes a swallowable capsule having an in-vivo imager for obtaining images from within the body lumen.” The applicant does not dispute that the primary reference Meron discloses a swallowable sensing device capable of transmitting images and location information to an external display, but contends that one of ordinary skill in the art would not have turned to the secondary reference Hirata to add the claimed comparison analysis for detecting the presence of blood because Hirata discusses only identifying the potential for future bleeding.
Issue(s): Whether 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.
Holding(s): Yes. The court found that the applicant’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.”