Docket No. 2011-1239
NEWMAN(D), BRYSON, FOGEL (DJ)
May 24, 2012
Brief summary: Reissue claims were held obvious based on two references. The dissent argued that “the prior art contains no ‘apparent reason to combine the known elements in the fashion claimed by the patent at issue'”.
Summary: This is an appeal of the BPAI affirmation of obviousness of reissue application 10/643,674 (from US Pat. No. 6,168,626) relating to methods for producing polyethylene materials for artificial joints (and improper recapture, which was not addressed in this opinion). Claims 40 and 84 were addressed in the opinion, requiring “crosslinking an ultra high molecular weight polyethylene block” using radiation, heating to a “compression deformable temperature”, subjecting the product to pressure, and cooling it. The BPAI concluded two U.S. patents rendered the ‘674 claims obvious. One disclosed a method for producing the claimed polyethylene and the other a process requiring first crosslinking polyethylene using radiation and heating / cooling the same. Hyon only argued to the BPAI that there would not have been any motivation to combine the references “because Zachariades is directed to artificial joints whereas Kitamaru is directed to films or sheets, which Hyon contends represent ‘fundamentally different material technologies.'” The BPAI, however, concluded that “the claims of the reissue application ‘appears to be nothing more than the predictable use of a prior art element (i.e., cross-linking prior to molding) according to its established function (i.e., to improve material properties such as [by increasing] the melting point).'” The FC agreed, finding that “[n]either reference limits the structure of the [polyethylene] product that can be made” and “the distinction between the final products described in the two references is not as great as Hyon suggests.” It also rejected Hyon’s argument that “the Board improperly relied on the arbitrary selection of a single feature from Kitamaru…while ignoring the other features” (In re Wesslau (CCPA 1965)). Instead, the panel concluded that the “Board merely selected an element emphasized by the reference [and the] suggestion that the selected element was responsible for the improved properties.” The panel also pointed out that Hyon had not presented any evidence that crosslinking prior to molding would inhibit molding. Thus, the Board’s decision was affirmed. Judge Newman’s dissent argued the conclusion was incorrect, finding it “noteworthy that Zachariades, seeking mechanical strength and dimensional stability, did not follow the known Kitamaru processing sequence, but instead cross-linked the polyethylene after deformation, not before.” “Nonetheless”, Judge Newman wrote, “the examiner held that a person of ordinary skill in the field of the invention would have known to do what neither [reference] did, and would have known or expected that this departure would produce ‘low friction and remarkably improved abrasion resistance'”. The dissent also concluded that “[a]s to which aspects to select and combine, the only guidance comes from Hyon, for the prior art contains no ‘apparent reason to combine the known elements in the fashion claimed by the patent at issue'” (citing KSR at 418) (“…only after Hyon demonstrated how to achieve this improved result that the Board was able to plug the prior art steps into the template of the Hyon method.”)