In re Hyon
Case #: 2011-1239
Bryson, Newman, Fogel
Full Text Opinion: http://www.cafc.uscourts.gov/images/stories/opinions-orders/11-1239.pdf
Patents: Obviousness is a question of fact that the Court of Appeals reviews for substantial evidence.
Opinion (Bryson): Suong-Hyu Hyon (“Hyon”) was the patent holder of “Ultra High Molecular Weight Polyethylene [“UHMWPE”] in artificial joints.” The examiner of Hyon’s reissue application rejected all patent claims for two reasons: 1) obviousness of combining the teachings of the “Zachariades” patent with the “Kitamaru” patent, and 2) impermissible recapture of subject matter abandoned during original prosecution. The Board of Patent Appeals affirmed the examiner’s rejection and Hyon appealed. The Court of Appeals found substantial evidence supporting obviousness, chiefly that one of ordinary skill in the art would have been motivated to combine the Kitamaru and Zachariades teachings. Despite the two patents representing two different end products, UHMWPE was the substantive focus of both and both generically disclosed the methods for UHMWPE production with no limits to final products. The Court also found that the main function of the art was to improve physical properties of UHMWPE, and the Board did not error in recognizing Kitamaru’s suggestion that crosslinking was responsible for improving these properties. Due to substantial evidence showing a person of ordinary skill in the art would have been motivated to combine the crosslinking step of Kitamaru with the process of Zachariades to improve UHMWPE properties, the Board’s determination of obviousness was AFFIRMED, with no need to address Hyon’s challenge of impermissible recapture.