Thursday, May 24, 2012

Newman's dissent on obviousness in HYON case

Within Judge Newman's dissent:

The Board held that a person of ordinary skill would have expected to combine aspects selected from the Zacha- riades and Kitamaru processes. As 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Board reasoned backward from the Hyon method, to hold that since Kitamaru cross-linked prior to extending fibers and films, it was obvious to modify Zacha- riades by slightly cross-linking the bulk polymer prior to molding.  (...)

The Board’s suggestion that it was obvious to perform the method that neither Zachariades nor Kitamaru per- formed nor suggested, is supported solely by the teaching in Hyon’s patent. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is obvious.” (quoting In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)); see also Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985) (“The invention must be viewed not with the blueprint drawn by the inventor, but in the state of the art that existed at the time.”).
When the technologic field is mature, apparently small changes that produce unexpected results or improved prop- erties are of heightened significance. Nothing in the record suggests that a person of ordinary skill would have foreseen that Hyon’s method of slight radiation cross-linking followed by heating and compression deformation would produce the described benefits. See In re Gartside, 203 F.3d 1305, 1314 (Fed. Cir. 2000) (“the Board’s decision must be justified within the four corners of th[e] record”). (...)

Life Technologies, Inc v. Clontech Laboratories, Inc., 224 F.3d 1320, 1326 (Fed. Cir. 2000), “[r]easonable expectation of success is assessed from the perspective of the person of ordinary skill in the art. That the inventors were ultimately successful is irrelevant to whether one of ordinary skill in the art, at the time the invention was made, would have reasonably expected success.” See also In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991) (“[T]he reasonable expectation of success must be founded in the prior art, not in the appli- cant’s disclosure.”).


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