April 18, 2021

Volume XI, Number 108

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April 16, 2021

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Doesn’t Scan: Skin Cancer Detection Device Just Combination of Familiar Elements

The US Court of Appeals for the Federal Circuit overturned a finding of non-obviousness of certain claims relating to a device for the detection of skin cancer, finding that the Patent Trial & Appeal Board erred in applying the law of obviousness. Canfield Scientific, Inc. v. Melanoscan, LLC, Case No. 19-1927 (Fed. Cir. Feb. 18, 2021) (Newman, J.)

Canfield Scientific filed a petition for inter partes review challenging the validity of claims of a Melanoscan patent as obvious in view of several prior art references. After the Board upheld the validity of the challenged claims, Canfield appealed.

The device disclosed in the patent is “an enclosure fitted with cameras and lights arranged in a manner that allows for imaging of [all or part] of non-occluded body surfaces in order to detect health and cosmetic disease.” The two challenged independent claims both required:

  • An enclosure configured to receive a person or portion thereof, wherein the enclosure defines a specified imaging position for placing the person or portion thereof within the enclosure

  • A plurality of imaging devices, wherein the plurality of imaging devices are vertically spaced relative to each other, a plurality of the imaging devices are located on opposite sides of the centerline of the specified imaging position

  • A plurality of light sources spaced relative to each other and peripheral to the plurality of imaging devices.

Canfield listed four references in support of its obviousness argument—Voigt, Hurley, Crampton and Daanen. Voigt disclosed an enclosure containing cameras and lights for analyzing and measuring images on the skin of a patient. Voigt did not disclose imaging devices (cameras) vertically and laterally spaced and on opposite sides of the center line. Instead, Voigt taught positioning the subject along the wall and positioning the cameras in a single direction.

Hurley, Crampton and Daanen each taught placement of a subject in the center of the enclosure, with cameras arranged vertically, laterally and on opposite sides of the centerline.

Canfield argued that the combined teachings of the prior art would have reasonably suggested the subject matter of the challenged claims. The Board found this argument unpersuasive, concluding that “Voigt’s rear wall would have blocked the view of the two rear-facing cameras, and Voigt’s horizontally adjustable sliders would have partially blocked the views of the remaining cameras.” Thus a person of skill in the art would not have been motivated to combine “the unmodified Voigt system with Hurley’s arrangement of imaging devices.” The Board did not discuss Crampton or Daanen.

The Federal Circuit disagreed with the Board’s conclusion and stated that the references showed the subject being imaged placed against a wall in Voigt, and centrally placed within the framework in Hurley, Crampton and Daanen. The references showed the cameras laterally and vertically spaced to each other about a center line. Citing the seminal Supreme Court KSR obviousness decision, the Federal Circuit noted that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Accordingly, the Court found that the subject matter of the challenged independent claims would have been obvious to a person of ordinary skill in the field of the invention.

Because the Board did not separately analyze the dependent claims, the Federal Circuit reversed the Board’s ruling of patentability with regard to the independent claims, and remanded for further proceedings regarding the challenged dependent claims.

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© 2021 McDermott Will & EmeryNational Law Review, Volume XI, Number 56
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About this Author

Amy Mahan, PhD, McDermott Will Emery, Chicago, Illinois, intellectual property, IP, litigation, Neuroscience, University of Pennsylvania Journal of Business Law, editor
Associate

Amy Mahan focuses her practice on intellectual property litigation matters.

While in law school, Amy served as the executive editor of the University of Pennsylvania Journal of Business Law, obtained a Certificate in Engineering Entrepreneurship and served on the board of two pro bono projects: Penn Housing Rights Projects and Criminal Records Expungement project. During law school, she also interned at the Wistar Institute and the Penn Center for Innovation helping put together licensing and sponsored research agreements to help...

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