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In re Huai-Hung Kao - 639 F.3d 1057 (Fed. Cir. 2011)


A claimed invention is unpatentable if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art. 35 U.S.C.S. § 103(a). Whether an invention is obvious is a question of law based on underlying facts. The United States Court of Appeals for the Federal Circuit reviews the United States Patent and Trademark Office, Board of Patent Appeals and Interferences' determination of obviousness de novo and the Board's fact findings for substantial evidence. Substantial evidence is such relevant evidence as a reasonable mind might accept as adequate to support a conclusion. 


Endo Pharmaceuticals, Inc. (Endo) is the assignee of three patent applications related to controlled-release tablets containing the opioid narcotic oxymorphone. The Board of Patent Appeals and Interferences (Board), in separate appeals, affirmed the rejection of the claims of each application as obvious, and Endo has separately appealed each decision to the court of appeals.

The Board affirmed the rejection of all pending claims of United States Patent Application No. 11/680,432 ('432 Application), United States Patent Application No. 12/167,859 ('859 Application), and United States Patent Application No. 11/766,740 ('740 Application) principally over a prior art international patent application that is involved in each appeal. Endo appealed.


Did the Board err in upholding the Patent and Trademark Office's rejection of the '432 Application?




The court found that the Board's decision upholding the Patent and Trademark Office (PTO)'s rejection of the '432 Application had to be vacated and remanded because the Board based its conclusion of obviousness on factual findings that lacked substantial evidence, and the Board erred when it refused to credit the Endo's evidence of commercial success. However, the Board's conclusions regarding the obviousness of the '859 Application and the '740 Application were supported by substantial evidence.

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