CAFC: A reference that requires significant modification will not anticipate and invalidate that claim

Federal CircuitIn re Chudik, (Fed. Cir. Mar. 27, 2017) (Before Dyk, Reyna, and Stoll, J.) (Opinion for the court, Reyna, J.)

The PTAB found that Chudik’s application was anticipated by each of two prior art references (i.e., Rambert and Bouttens). On appeal, the Court reversed, finding a lack of substantial evidence to support the PTAB’s findings.

Representative independent claims 1 and 40 were at issue in the appeal. Claim 1 read:

1. A glenoid implant comprising:

a shell having a protruding surface on a first side arranged to engage the surface of a cavity formed in a glenoid extending between peripheral glenoid surfaces, and

a flat surface on the first side adjacent the protruding surface arranged to engage the peripheral glenoid surfaces adjacent the cavity, and

a wear-resistant articulating surface on a second side opposite the flat surface and the protruding surface.

Claim 40 read:

40. A glenoid implant comprising:

a protruding surface on a first side arranged to engage the surface of a cavity formed in a glenoid extending between peripheral glenoid surfaces, and

a substantially planar wear-resistant articulating surface on a second side opposite the protruding surface.

The Federal Circuit noted that precedent requires a prior art reference to disclose the invention without modification in order to anticipate. “[A] prior art reference that must be distorted from its obvious design does not anticipate a patent claim.” The Court applied that principle here and found that the first reference (Rambert) would only anticipate if one of its elements was removed. The Board failed to explain the removal of that element. The second reference (Bouttens) also required “significant and impermissible modification,” which was also unexplained. Consequently, the Board’s conclusions were not supported by substantial evidence.

Relative to Rambert, the Federal Circuit concluded:

Neither the Examiner nor the Board described how the protruding surface of Rambert’s element 27b is capable of engaging the surface of the glenoid cavity without removing element 27a, i.e., tearing the invention apart. Therefore, substantial evidence does not support the Board’s anticipation finding based on Rambert.

Relative to Bouttens, the Federal Circuit wrote:

The Board’s determination of anticipation was erroneous because the Board failed to describe how a user could rotate Bouttens without modification while continuing “to accomplish the function performed by” the ’631 application. Topliff, 145 U.S. at 161. We therefore reverse the Board’s anticipation finding as not supported by substantial evidence. We need not resolve Mr. Chudik’s second argument about whether the Examiner correctly construed “articulating surface.”

Ultimately, the Federal Circuit reversed the Board’s rejections and awarded costs to Mr. Chudik.

Absent any overriding explanation, a reference that requires “significant and impermissible modification” to meet a patent claim, will not anticipate and invalidate that claim.

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