IP Law Daily Nonobviousness finding reversed for diagnostic camera array apparatus
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Thursday, February 18, 2021

Nonobviousness finding reversed for diagnostic camera array apparatus

By Thomas Long, J.D.

The PTAB erroneously decided that a skilled artisan would not be motivated to combine a reference teaching an arrangement of cameras and lights with other references teaching placement of a patient at the center of the system.

In an inter partes review of a patent relating to the detection, diagnosis, and treatment of skin cancer and other skin tissue problems, the Patent Trial and Appeal Board erred in ruling that all of the challenged claims were patentable, the U.S. Court of Appeals for the Federal Circuit has decided. The Board erroneously refused to consider arguments and evidence put forward by the petitioner, and it misapplied the law of obviousness, requiring the Federal Circuit to reverse the Board as to two independent patent claims. The case was remanded for further proceedings with respect to the patent’s dependent claims (Canfield Scientific, Inc. v. Melanoscan, LLC, February 18, 2021, Newman, P.).

Canfield Scientific, Inc., challenged 15 claims (two independent and the rest dependent) of U.S. Patent No. 7,359,748 ("the ’748 patent"), owned by Melanoscan, LLC. The ’748 patent is titled "Apparatus for Total Immersion Photography" and disclosed an enclosure fitted with cameras and lights arranged in a manner that "allows for the imaging of total or subtotal non-occluded body surfaces in order to detect health and cosmetic conditions and involves the measurement and analysis of an optically depicted image of a patient’s surfaces." One figure showed an embodiment consisting of an octagonal arrangement of lights and cameras, with the patient at the center; other figure depicted the arrangement as circular.

The Board held independent claims 1 and 51 to be patentable and did not separately decide the patentability of the dependent claims, all of which contained limitations in addition to those in claims 1 and 51. Canfield Scientific appealed to the Federal Circuit.

Prior art. Canfield cited a prior art journal article ("Voigt"), which described an enclosure containing cameras and lights for analyzing and measuring images on the skin of a patient. According to Canfield, various combinations of Voigt with four other references (two other articles, "Hurley" and "Daanen"; and two international patents, "Crampton" and "Dye") rendered claims 1 and 51 of the ’748 invalid for obviousness. The parties and the Board agreed that the only key difference between the system in Voigt and that disclosed by claim 1 was that the patient in the Voigt arrangement was placed against a wall, so cameras in Voigt did not surround the patient as in claim 1. The Board concluded that Canfield failed to show how combining Voigt with the other prior art references would make the claimed subject matter obvious.

Obviousness. The Federal Circuit noted that both Canfield and Melanoscan presented expert witnesses, who stated opposing views on the question of obviousness. According to Canfield’s expert, a person of ordinary skill in the art would have been motivated to modify Voigt to employ the multiple cameras explicitly disclosed in Hurley, in order to cover more body surface area without having to reposition the patient. Melanoscan’s expert stated that there was no motivation to do this with a reasonable expectation of success, and the Board sided with Melanoscan, reasoning that the multiple cameras of Hurley, Crampton, or Daanen would have been blocked by the rear wall of Voigt’s apparatus. However, the court pointed out that Hurley and Crampton taught placing the patient at the center of the multi-camera system—a fact not mentioned by the Board.

Claims 1 and 51 were not limited as to the location of the subject being imaged, the court said. The court agreed with Canfield that the combined teachings of the prior art would reasonably have suggested the subject matter of claims 1 and 51 to a person having ordinary skill in the field of the invention. The prior art references showed various placements of the subject being imaged: in Voigt placed against a wall, and in Hurley, Crampton, and Daanen centrally placed within the framework. The references showed the cameras laterally and vertically spaced to each other about a centerline. Meanwhile, Claims 1 and 51 placed the subject within the enclosure, as in the prior art, and placed multiple cameras and lights within the enclosure, as in the prior art.

"We conclude that the subject matter described in claims 1 and 51 would have been obvious to a person of ordinary skill in the field of the invention," the court said. "The Board’s ruling of patentability as to these claims is reversed." Because the Board did not separately analyze the independent claims of the ’748 patent, the court vacated the Board’s decision as to those claims and remanded for a determination of their patentability.

This case is No. 19-1927.

Attorneys: Thomas Lee Duston (Marshall, Gerstein & Borun LLP) for Canfield Scientific, Inc. Mark D. Giarratana (McCarter & English, LLP) for Melanoscan, LLC.

Companies: Canfield Scientific, Inc.; Melanoscan, LLC

MainStory: TopStory Patent FedCirNews GCNNews

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