Smith & Nephew, Inc. v. Synthes (U.S.A.)

New designs borne from combining prior art can only be patented if the new combination is not so obvious as to be a predictable use of prior art elements according to their established functions.

Opinion (Bryson): Synthes U.S.A ("Synthes") owned patent #744 that disclosed a system for securing metal plates to repair bones. Smith & Nephew challenged the #744 patent and the PTO examiner rejected all 55 claims of the patent. Synthes appealed, and the Board of Patent Appeals upheld 31 of the rejections, but reversed 24. Smith and Nephew then appealed to the U.S. Court of Appeals. The dispute centered around the structure of holes in the plate through which screws were inserted, and the main issue was whether it was obvious to design a bone plate where all the holes in the plate’s head were conically tapered and at least partially threaded to engage locking screws. The PTO record contained four references to prior art, each of which disclosed at least one of the elements claimed in the #744 patent. The disputed elements were non-locking versus locking screws, partially threaded versus fully threaded holes, and partially conical versus fully conical holes. Because the #744 patent disclosed the use of either locking or non-locking screws, and because the differences between partially and fully-threaded, and partially and fully-conical holes were only a matter of degree, the Court ruled that both the screws and the holes performed their conventional, expected function in securing the plate. The 24 claims would have been obvious and the #744 patent was invalid. REVERSED.