Docket No. 2016-1817
DYK, REYNA, STOLL
March 27, 2017
Brief Summary: Board affirmance of Examiner’s rejection of Mr. Chudik’s claims as anticipated reversed since “prior art that must be modified ‘to accomplish the function performed by the patent in question’ does not anticipate” (Topliff, US 1892).
Summary: Mr. Chudik appealed PTAB determination that claims 1, 15, 18, and 33-40 of his Ser. No. 11/525,631 relating to implants used to repair shoulder injuries (“glenoid implants”, the glenoid being the cavit of the shoulder joint) are anticipated by “Rambert” (FR 2 579 454 (Oct. 3, 1986); claims 1, 15, 33-39) as well as “Bouttens” (WO 01/47442 A1 (July 5, 2001); claim 40). The FC panel explained that “[a]nticipation is a question of fact” reviewed “for substantial evidence” (that which “a reasonable mind might accept as adequate” (Blue Calypso, FC 2016; Universal Camera, US 1951). It also noted that “[w]here two different conclusions may be warranted…, the Board’s decision to favor” one or the other “must be sustained by this court as supported by substantial evidence” (In re Bayer, FC 2007). As to anticipation, it explained that “a prior art reference that ‘must be distorted from its obvious design’ does not anticipate” (In re Wells, CCPA 1931; Topliff, US 1892 (“prior art that must be modified ‘to accomplish the function performed by the patent in question’ does not anticipate”); must “disclose all the elements ‘in the same form and order as in the claim” (Abbott, FC 2008; NetMoneyIN, FC 2008)). The prior art must also be enabled (ClearValue, FC 2012). The Board concluded that since “independent claim 1 is an apparatus claim and does not require the recited surfaces to ‘engage’ the specified glenoid regions” but “only that the recited surfaces be ‘arranged’ for such engagement”, “the fact that Rambert’s protruding and flat surfaces are not described or depicted a actually engaging the specified glenoid regions is not dispositive, as they can still be arranged to do so.” The FC disagreed with the Board, finding that “element 27b’s protruding surface cannot be ‘arranged to engage’ the glenoid cavity surface without removing element 27a” (citing In re Wells). The Board also sustained the rejection of claim 40 because “Mr. Chudik ‘[did] not adequately address why Boutten’s surface 11 is structurally incapable of engaging a glenoid cavity that matches its protruding profile”, “the claim language does not specify shape characteristics of the cavity”, and “the Examiner’s construction of the term ‘articulating surface’…was ‘broad but reasonable’ and ‘consistent with the Specification.’” But here, again, the FC disagreed, finding that the modification of Bouttens’ disclosure “would constitute a significant and impermissible modification” (citing In re Wells) (“the Board failed to describe how a user could rotate Bouttens without modification while continuing ‘to accomplish the function performed by’ the ‘631 application” (citing Topliff). Thus, the PTAB decision was reversed. The PTAB also sustained the Examiner’s rejection of claim 18 as obvious over Rambert and Church. This point was not addressed in this opinion.