this Commentary, Robert T. Burns and Laurie A. Axford focus on the Federal
Circuit's holding and rationale in In re Huai-Hung Kao, 2011 U.S. App.
LEXIS 9729 (Fed. Cir. May 13, 2011) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law]
and how they provide a "ray
of hope" for responding to obviousness rejections in a post-KSR world (KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (U.S. 2007) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law]). The authors
discuss the ruling and its implications. They write:
the court reversed the Board and remanded the case for further consideration,
holding that (1) the Board improperly relied on its own factual assertions in
the face of evidence presented by the assignee, and that (2) the Board
improperly considered evidence of secondary considerations presented on appeal.
A. Overview of the claimed subject matter and
the issues on appeal
Kao is a consolidation of three appeals
of decisions from the USPTO Board of Patent Appeals and Interferences: United
States Patent Application Nos. 11/680,432 ("the '432 application"),
12/167,859 ("the '859 application"), and 11/766,740 ("the '740
application"). The '432 application relates to controlled-release tablets
containing oxymorphone, an opioid narcotic used to manage chronic pain. The
claims on appeal are for a controlled-release formulation having a dissolution
rate allowing pain relief for twelve to twenty-four hours, compared to previous
tablets that only relieve pair for up to six hours. The claims were rejected as
obvious, using WO 01/08661 ("Maloney") as the primary reference
allegedly teaching everything except the claimed dissolution rate.
assignee challenged these rejections by submitting declarations and arguing
that Maloney did not teach the claimed dissolution rate, and by submitting
declarations presenting evidence of secondary considerations to rebut a
conclusion of obviousness. The USPTO was unconvinced, and actually used
portions of the assignee's declarations to support its finding of obviousness Kao, 2011 Fed. Cir. LEXIS 9729 at *7-8.
The USPTO also dismissed the evidence of secondary considerations, concluding
that the evidence failed to overcome the rejections because it was not
commensurate with the scope of the claims. Id. at *8.
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