  United States Court of Appeals
      for the Federal Circuit
                 ______________________

 IN RE DORON ADLER, OFRA ZINATY, DAPHNA
       LEVY AND ARKADY GLUKHOVSKY
             ______________________

                       2012-1610
                 ______________________

    Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences in
Application No. 10/097,096.
                 ______________________

                 Decided: July 18, 2013
                 ______________________

   GUY YONAY, Pearl Cohen Zedek Latzer LLP, of New
York, New York, argued for appellants.

     JAMIE L. SIMPSON, Associate Solicitor, United States
Patent and Trademark Office, of Alexandria, Virginia,
argued for appellee. With her on the brief were RAYMOND
T. CHEN, Solicitor, and BRIAN T. RACILLA, Associate Solici-
tor.
                 ______________________

   Before PROST, REYNA, and WALLACH, Circuit Judges.
WALLACH, Circuit Judge.
    Doron Adler, Ofra Zinaty, Daphna Levy, and Arkady
Glukhovsky (collectively, “Adler”) are the named inven-
tors on U.S. Patent Application No. 10/097,096 (“the ’096
2                                         IN RE: DORON ADLER

application”). The examiner rejected all of the pending
claims—claims 57, 59, 61, 63–67, and 71—under 35
U.S.C. § 103 as obvious over several prior art references,
including International Patent Publication WO 00/22975
(“Meron”) in view of Masaru Hirata et al., STUDY OF NEW
PROGNOSTIC FACTORS OF ESOPHAGEAL VARICEAL RUPTURE
BY USE OF IMAGE PROCESSING WITH A VIDEO ENDOSCOPE,
116 SURGERY 8–16 (1994) (“Hirata”). Adler appeals from
the decision of the Board of Patent Appeals and Interfer-
ences (“the Board”) affirming the examiner’s rejection
with respect to Meron in view of Hirata. Ex parte Doron
Adler, Ofra Zinaty, Daphna Levy, and Arkady Glukhov-
sky, No. 2010-012509, 2012 Pat. App. LEXIS 2387
(B.P.A.I. May 8, 2012) (“Board Decision”). Because the
Board did not err in rejecting the pending claims as
obvious and did not rely on new grounds for rejection, we
affirm.
                       BACKGROUND
     According to the background of the ’096 application,
“[p]athologies of the gastrointestinal (“GI”) tract may exist
for a variety of reasons such as bleeding, lesions, an-
giodisplasia, Crohn’s disease, polyps, celiac disorders, and
others.” ’096 application col. 1 ll. 11–15. However, be-
cause these pathologies are found in the GI tract, it can be
difficult to detect the pathologies or even “‘see’” inside the
tract, even though “the majority of pathologies result in
changes of color and/or texture of the inner surface of the
GI tract” and “may be due to bleeding.” Id. at col. 1 ll. 14–
21.
    The ’096 application is directed, inter alia, to a system
“for detection of blood within a body lumen,” e.g., the
esophagus. Id. at col. 3 l. 28. The system “includes a
swallowable capsule having an in-vivo imager for obtain-
ing images from within the body lumen.” Id. at col. 3 ll.
28–30. Those images can be compared to two reference
values, one for healthy tissue and one for blood; as ex-
IN RE: DORON ADLER                                          3
plained by Adler, “[b]ased on the comparisons, an indica-
tion of the position in the GI tract of a change in the level
of red color content, correlating to the presence of blood, is
displayed,” thereby allowing for the detection of colori-
metric abnormality such as bleeding or blood clots. Appel-
lant’s Br. 6–7.
    Claim 57 is representative and reads as follows:
       57. A method for displaying in-vivo infor-
    mation, 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 re-
    ceived images to a reference value of blood and to a
    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 com-
    parison, 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.
’096 application, Claim 57 (emphases added). 1
    The examiner rejected the claims at issue as being ob-
vious over Meron in view of Hirata. Meron discloses “a
method for identifying a target location in the gastrointes-


    1   Both independent claims 57 and 63 are on appeal;
however, Adler argues only claim 57, incorporating the
same arguments by reference to claim 63. See Appellant’s
Br. 7. The dependent claims at issue rise and fall with
the independent claims. Id.
4                                         IN RE: DORON ADLER

tinal tract and for direct delivery of a device to the identi-
fied location.” Meron col. 1 ll. 4–5. Meron states that
“[t]he method of the present invention may be used for
research, diagnostic[,] or therapeutic purposes in the
gastrointestinal tract.” Id. at col. 6 ll. 22–23. The exam-
iner found that “Meron discloses a capsule that moves
through the [GI] tract in order to generate a map of the
GI tract.” J.A. 26. However, the examiner determined
that although the device could include a sensor for detect-
ing the presence of blood, “Meron does not specifically
disclose a method of detecting the presence of blood.” Id.
(citing Meron col. 9 ll. 1–2).
    The examiner found that Hirata “teaches a study of
factors of esophageal variceal rupture by use of image
processing with a video endoscope.” 2 Id. The examiner
stated that in Hirata, “bleeders” and “non-bleeders” were
compared “in terms of endoscopic findings and the image
processing data, especially variceal color tone and red
color sign.” Id. Additionally, red color signs were classi-
fied by degree, with a minor degree indicating a reference
of healthy tissue and a major degree indicating a refer-
ence of blood.
    According to the examiner, “[i]t would have been obvi-
ous to one of ordinary skill in the art at the time the
invention was made 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


    2    A varix is (1) “[a] dilated vein” or (2) “[a]n en-
larged and tortuous vein, artery, or lymphatic vessel.”
LARRY P. TILLEY, FRANCIS W. K. SMITH, & DANA ALLEN,
STEDMAN’S MEDICAL DICTIONARY (27th ed. 2000). Specific
to the above prior art, esophageal varices are “longitudi-
nal venous varices at the lower end of the esophagus as a
result of portal hypertension; they are superficial and
liable to ulceration and massive bleeding.” Id.
IN RE: DORON ADLER                                         5
stated by Meron.” Id. The examiner reasoned that it
would have been obvious “because Meron states that it is
capable [of determining the presence of blood] but fails to
provide the specifics of how . . . while Hirata provides a
method and a processor capable of performing these
feats.” Id.
   Adler appealed the examiner’s rejections, and the
Board affirmed. Of importance to this appeal, the Board
made the following findings of fact with respect to Hirata:
       12. Hirata discloses that color tone was ana-
   lyzed by comparing the color tone of a defined var-
   ices region with the color tone of a defined normal
   esophageal region.
       13. Hirata discloses that the area of red color
   sign was also determined for a defined varices re-
   gion.
       14. Hirata discloses that, using image pro-
   cessing, both color tone results and area of red col-
   or sign results could be used to select patients
   with varices that have a higher risk of rupture.
Board Decision at *7–8 (emphasis added) (citations omit-
ted).
   Adler filed this timely appeal. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(4)(A).
                       DISCUSSION
    This court reviews the Board’s legal conclusions de
novo, In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004),
and the Board’s factual findings underlying those deter-
minations for substantial evidence, In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000). A finding is supported
by substantial evidence if a reasonable mind might accept
it as adequate to support the finding. Consol. Edison Co.
v. Nat’l Labor Relations Bd., 305 U.S. 197, 229 (1938).
6                                        IN RE: DORON ADLER

     “The ultimate judgment of obviousness is a legal de-
termination,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
427 (2007), which we review de novo, Procter & Gamble
Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 993 (Fed. Cir.
2009). A conclusion of obviousness rests on the following
factual findings: (1) the scope and content of the prior art;
(2) the differences between the prior art and the claimed
invention; (3) the level of ordinary skill in the art at the
time of the invention; and (4) objective indicia of nonobvi-
ousness. KSR Int’l Co., 550 U.S. at 406 (quoting Graham
v. John Deere Co., 383 U.S. 1, 17–18 (1966)).
        1. The Board Did Not Err in Its Obvious-
                 ness Determination
    Adler does not dispute that the prior art discloses a
swallowable sensing device capable of transmitting imag-
es and location information to an external display. The
primary issue on appeal is whether the Board properly
found that 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. J.A. 143. The Board
concluded that it would have been obvious, because a
skilled artisan would have been motivated to combine
Hirata—which discloses methods for comparison of the
red color content of two reference values of tissue—with
Meron, based on Meron’s suggestion that the in vivo
camera could include a means for detecting the presence
of blood. Board Decision at *8–9.
    Adler contends that the Board failed to appreciate
that Adler’s claims refer to two comparisons. Appellant’s
Br. 22. The values of the received images are compared to
(1) a value for healthy tissue and (2) a value for blood. Id.
According to Adler, the Board failed to properly analyze
IN RE: DORON ADLER                                         7
the claim, and did not take into consideration this two-
prong limitation. Id.
     The Board, however, did appreciate that the claim re-
quires two comparisons and found that they were both
disclosed by Hirata. The Board stated that “Hirata dis-
closes that color tone was analyzed by comparing the color
tone of a defined varices region with the color tone of a
defined normal esophageal region.” Board Decision at *7
(citing Hirata at 11). This finding is supported by sub-
stantial evidence. Hirata explains how the two color
tones are used to form a ratio value termed “Rr.” J.A. 70. 3
In response to Adler’s argument below, the Board repeat-
ed this finding, explaining that “Hirata discloses compar-
ing the color tone of a known variceal region with the
color tone of a known healthy esophageal region.” Board
Decision at *10. Indeed, Hirata made such comparisons
in his follow-up study of the non-bleeders, when he com-
pared the color tone of non-bleeders with the color tone of
bleeders—Hirata was taking a (new) test sample from the
non-bleeders and comparing it to the “Rr” of the bleeders,
where “Rr” represents a combined reference value of
healthy tissue and a reference value of blood. J.A. 72.
    Adler responds that “[t]he claim requires three values
to be used in the two comparisons” and that “Hirata
discloses one comparison of two values.” Appellant’s Reply
Br. 10. Adler contends that one of ordinary skill in the
art would not have turned to Hirata because it discusses
future bleeding. See Appellant’s Br. 27–30. Adler’s argu-


    3    Specifically, Hirata states that two “square re-
gion[s] of interest” from an image were selected to form
the ratio: “We defined one square region of interest . . . as
region V on the largest esophageal varices in the image . .
. . We also defined similarly one square region of interest
. . . as region E on the esophageal mucosa without vari-
ces.” J.A. 70.
8                                        IN RE: DORON ADLER

ments 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 refer-
ence values disclosed in Hirata. This is a predictable
variation of the combination of Hirata and Meron. See
KSR, 550 U.S. at 417 (“If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its
patentability.”). 4
        2. The Board Did Not Rely On New Grounds
                      For Rejection
    Additionally, Adler argues that the Board relied on a
new ground for rejection of the claims at issue and instead
should have reopened prosecution. Appellant’s Br. 14.
Adler contends that the Board’s “facts and rationale for
the affirmance (Hirata’s image processing and colorimet-
ric analysis) changed the thrust of the Examiner’s rejec-
tion (Hirata’s classification of red color signs).” Id. Adler
offers the following comparison to illustrate its argument:




    4   As indicated above, a main contention underlying
many of Adler’s arguments is that Hirata does not detect
actual blood. See Appellant’s Br. 25–30; Appellant’s Reply
Br. 13–15. However, substantial evidence supports the
Board’s finding that Hirata teaches identification of a
pathology through red color image analysis of two refer-
ence values; one of ordinary skill in the art would under-
stand that detecting areas with different red color values
corresponds to blood. See Board Decision at *8–9.
IN RE: DORON ADLER                                          9

Examiner’s Decision             Board’s Decision

“Red color signs were           “Appellants also argue that
classified in a minor degree,   ‘Hirata did not teach com-
which indicated negative or     paring image to a reference
mild (or a reference of         value of blood, and . . . a
healthy), and a major           reference value of healthy
degree, which indicated         tissue’ . . . Hirata discloses
moderate or severe (or a        comparing the color tone of
reference of blood) . . .”      a known variceal region
                                with the color tone of a
                                known healthy esophageal
                                region.”

Appellant’s Reply Br. 4 (citations omitted) (emphasis in
original).
    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 rejec-
tion was based.” In re Leithem, 661 F.3d 1316, 1320 (Fed.
Cir. 2011). “‘[T]he ultimate criterion of whether a rejec-
tion 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 fact, in rejecting Adler’s application, the examiner
10                                        IN RE: DORON ADLER

relied on Hirata’s disclosure of both red color sign and red
color tone, not just its use of the color sign classification.
The examiner stated that “Hirata teaches a study of
factors of esophageal variceal rupture by use of image
processing with a video endoscope.” J.A. 26. The examin-
er explained that “[a] comparison was made between
bleeders and non-bleeders in terms of endoscopic findings
and the image processing data, especially variceal color
tone and red color sign.” Id. (emphasis added). The
examiner referred to the video image processing again in
his summation of the obviousness rejection: “It 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 . . . .” Id. at 27 (emphasis added). Thus,
in contrast to Adler’s contention that the “examiner made
no mention of colorimetric analysis,” Appellant’s Br. 17,
the examiner expressly referred to that feature of Hirata
by name.
     Adler appears to have appreciated the examiner’s po-
sition, based on Adler’s characterization in its Reply Brief
to the Board: “On pages 8 and 9 of the Examiner’s An-
swer, the Examiner states that Hirata performs color
analysis on varices and that Hirata’s disclosure would
lead one skilled in the art to focus on the possibility of
processing electronic images for quantification of colori-
metric data, and that image processing could determine
the bleeding point.” J.A. 98. Because Adler had the
opportunity to respond, and in fact did respond, to the
thrust of the examiner’s basis for rejecting the claims, this
case differs from those cited by Adler, where the Board
made new factual findings that the applicants did not
have an opportunity to address.
    While the Board’s explanation may go into more detail
than the examiner’s, that does not amount to a new
ground of rejection. See In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011).
IN RE: DORON ADLER                                     11
                      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.
