Product Sans Problem Can Be Obvious Even Though A Source Of The Problem Is Non-Obvious

Addressing obviousness in the context of a non-obvious problem source, the US Court of Appeals for the Federal Circuit affirmed the US District Court for the Southern District of New York's ruling that the claimed product was obvious where one would have arrived at the claimed product without knowing the source of the problem. Purdue Pharma L.P. v. Epic Pharma, LLC., 811 F.3d 1345 (Fed. Cir., Feb. 1, 2016) (Prost, C.J.)

The case concerned an improved version of the opiate pain reliever OxyContin® (oxycodone HCI) that no longer contained an excessive amount of a toxic byproduct, 14-hydroxy. The excess 14-hydroxy was thought to be derived from two sources: 8α and 8β. While 8β was known in the art to be a source of 14-hydroxy, Purdue scientists were the first to discover 8α as a source. They found that 8α, formed early in the manufacturing process, was being converted to 14-hydroxy during the step of converting the oxycodone free base to oxycodone hydrochloride (the