by Dennis Crouch
In re Hyon (Fed Cir. 2012)
Hyon’s patent covers a method for producing a high molecular weight polyethylene to be used as a prosthesis. In a broadening reissue application, Hyon added several claims. Those claims were rejected as obvious by the examiner and the Board of Patent Appeals (BPAI). In a split opinion, the Federal Circuit has now affirmed those rejections.
The question on appeal was whether the PTO properly combined the two identified prior art references in forming an obviousness rejection. Because this issue is considered a factual question, the PTO decision making is given deference and only overturned if the decision lacks substantial evidentiary support. This "substantial evidence" standard is quite low and requires the Federal Circuit to affirm even when the panel might have reached a different conclusion in a de novo review.
The “existence of a reason for a person of ordinary skill to combine references” is a question of fact that we review for substantial evidence. Because the Board’s findings concerning motivation to combine are supported by substantial evidence, we affirm.
The dissent by Judge Newman argues that the one skilled in the art would not have been motivated to combine the two references as suggested by the PTO. Interestingly, Judge Newman does not mention the substantial evidence standard while the Bryson majority repeats the standard six times in the ten page opinion.
Appellate attorneys understand the importance of the standard of review. This case highlights this reality and suggests that applicants may be better served to include arguments directed to the ultimate question of obviousness (de novo review) rather than merely challenging the PTO's factual findings. Although perhaps cost prohibitive, challenging PTO factual findings are best pursued in a civil action.