You Missed a Spot: The PTAB Should Consider All Presented Arguments and Evidence in Obviousness Determinations

| Alexander D. ZengKendall Loebbaka


Before Newman, Dyk, and Reyna.  Appeal from the Patent Trial and Appeal Board.

Summary:  The PTAB’s refusal to consider presented arguments and evidence can be a misapplication of the law of obviousness.

Canfield Scientific, Inc. (“Canfield”) filed an IPR challenging the validity of a patent owned by Melanoscan, LLC’s (“Melanoscan”).  The patent is directed to an enclosure with cameras and lights used for body imaging to detect health and cosmetic conditions, such as skin cancer.  Canfield argued that a person of skill in the art would have combined the presented references to include multiple cameras to cover more body surface area without needing to move the subject. The Board rejected Canfield’s argument, finding that the claims were patentable.  The Board found that a person of ordinary skill in the art would not have been motivated to combine the references because the physical structures in the references would have blocked the cameras in the other reference.  Canfield appealed.

The Federal Circuit reversed, holding that the independent claims were unpatentable as obvious.  The Federal Circuit noted that the Board failed to mention arguments presented by the petitioner that the subject to be imaged can be placed at the center of the multi-camera system, which was disclosed in multiple references.  The Federal Circuit held that the prior art disclosed placing the subject in the enclosure and placing multiple cameras and lights within the enclosure, as required by the independent claims.  The Federal Circuit remanded to consider the dependent claims.

Editor: Paul Stewart