Docket No. 2012-1343
DYK, BRYSON, WALLACH
July 9, 2013
Brief Summary: BPAI decision of non-obviousness reversed because claims encompassed “no ‘more than the predictable use of prior art elements according to their established functions'” (KSR, US 2007).
Summary: Smith & Nephew appealed BPAI decision that certain of Synthes’ claims (US 7,128,744) relating to a system for using plates to repair bone fractures in long bones (e.g., femur) were not obvious. Smith & Nephew requested reexamination of the patent and the examiner rejected all 55 claims as obvious. The Board upheld the rejections of 31 of the claims and reversed the rejections of 24 claims. Smith & Nephew appealed with respect to those 24 claims, for which claim 1 was treated as being representative. The dispute centered on “whether it would have been obvious at the time of the invention to design a bone plate in which all of the holes in the plate’s head portion were conically tapered and at least partially threaded to engage threaded ‘locking’ screws.” The Board concluded that one of ordinary skill in the art would not have been motivated to use such plates as it would have resulted “in the screw head sitting unacceptably high above the bone plate.” The Federal Circuit found, however, that “the Board overlooked the fact that claim 1 of the ‘744 patent did not require that the head screws provide compression”, the “conclusion that using a standard compression screw in a conical, partially threaded hold would cause the screw to protrude above the line of the plate is the result of not reading the prior art for all that it teaches”, “the fact that the partially threaded holes in the [prior art] are only partly conical (and partly cylindrical) does not undermine the ‘744 patent’s admission that partially threaded holes, regardless of their shape, could provide compression” (e.g., “[t]he patent confirms what common sense suggests”), “the Board refused to consider two prior art references…which…disclosed the use of non-locking screws in threaded holes” (“discounted…on the ground that the examiner had not relied on them”), and the prior art “disclosed the use of partially threaded holes to accomodate either locking or non-locking screws.” Under the “substantial evidence” standard of review (In re Gartside (FC 2000)), the panel concluded that “compelling evidence” of obviousness and no evidence “that the choice of a fully conical hole, as opposed to a partially conical hole, would produce a surprising result or involve anything more than a choice among designs already found in the prior art” (“no ‘more than the predictable use of prior art elements according to their established functions'”, citing KSR (US 2007)). Synthes argued that the prior art had only provided inoperable alternatives which it addressed using a “specialized” or “specially-designed” screw which the panel noted was not claimed (citing E.I. Du Pont, FC 1988 (cannot read elements into the claim that are not present). Thus, the Board decision was reversed.