Case Information
*1 Before D YK , R EYNA , and S TOLL , Circuit Judges. R EYNA , Circuit Judge .
Steven Chudik appeals from the Patent Trial and Ap- peal Board’s (“Board”) determination that claims 1, 15, 18, and 33–40 of U.S. Patent Application 11/525,631 (“’631 application”) are anticipated by two prior art references. Because substantial evidence does not support the Board’s determination, we reverse . B ACKGROUND
1. The ’631 Application
The ’631 application, entitled “Glenoid Implant for Minimally Invasive Shoulder Replacement Surgery,” describes an invention related to “rotator cuff sparing procedures and associated devices for shoulder replace- ment surgery.” J.A. 24, ¶ 2. The ’631 application im- proves on the prior art by offering “simple and less invasive perpendicular access to the humeral and glenoid joint surfaces,” which “spares the rotator cuff tendons and allows for a quicker and more functional recovery.” J.A. 29–30, ¶¶ 12–13. As relevant here, the surgery described in the ’631 application involves two main steps. First, the surgeon removes “a minimal amount of bone from the peripheral surface of the glenoid”—a process called reaming. See J.A. 51, ¶ 124. Second, the surgeon places an implant in the reamed cavity. See J.A. 57, ¶ 142. The glenoid, reamer, and implant are pictured below:
J.A. 79, 91, 94. The scapula is the shoulder bone connect- ing the humerus (upper arm bone) to the clavicle (the collar bone). Figure 7a shows that the glenoid cavity 22 faces outward on the scapula. Figure 21 depicts a side view of the reamer, and Figure 22 shows how the reaming surface 114 faces toward the glenoid cavity. J.A. 30, ¶ 17; J.A. 37, ¶ 80.
Once the glenoid cavity has been reamed, the im- plant’s protruding surface 119 “sits within the concavity of the reamed glenoid surface.” J.A. 57, ¶ 142. Figures 23a and 27a show the protruding surface 119, which “protrudes into the glenoid 22 to a specified depth.” Id. The ’631 application describes the reaming surface 114 in similar terms to the protruding surface 119. Compare J.A. 51, ¶ 124, with J.A. 57, ¶ 142. Like the reaming surface 114, the protruding surface 119 faces toward the glenoid cavity. See Fig. 22.
Representative independent claims 1 and 40 are at is- sue in this appeal. [1] They recite:
1. A glenoid implant comprising: a shell having a protruding surface on a first side arranged to engage the surface of a cavi- ty formed in a glenoid extending between pe- ripheral glenoid surfaces, and a flat surface on the first side adjacent the pro- truding surface arranged to engage the pe- ripheral glenoid surfaces adjacent the cavity, and
a wear-resistant articulating surface on a sec- ond side opposite the flat surface and the protruding surface.
40. A glenoid implant comprising: a protruding surface on a first side arranged to engage the surface of a cavity formed in a gle- noid extending between peripheral glenoid surfaces, and
a substantially planar wear-resistant articulat- ing surface on a second side opposite the pro- truding surface.
J.A. 3 (disputed term emphasized).
2. Prior Art Rambert FR 2 579 454 (Oct. 3, 1986) (“Rambert”) discloses a glenoid implant with a shell element. J.A. 188. Rambert Figure 2 shows element 27b in contact with anchoring element 27a, which in turn contacts the glenoid cavity. J.A. 198.
Bouttens
WO 01/47442 A1 (July 5, 2001) (“Bouttens”) discloses a shoulder prosthesis assembly for implantation in the glenoid. J.A. 199.
Bouttens Figure 1 shows the protruding surface 11 facing away from the glenoid cavity and toward the humerus. J.A. 210. It also shows screws on the opposite side of the protruding surface attaching the implant to the glenoid region. See id.
3. Examination Proceedings
Mr. Chudik filed the ’631 application on September 25, 2006. On June 5, 2012, the Examiner issued a Final Action rejecting claims 1, 15, 18, and 33–40. The Exam- iner made four rejections:
• Claim 40 rejected under 35 U.S.C. § 112, first paragraph [2] ;
• Claims 1, 15, and 33–39 rejected under 35 U.S.C. § 102(b) as anticipated by Rambert; • Claim 40 rejected under 35 U.S.C. § 102(b) as anticipated by Bouttens; • Claim 18 rejected under 35 U.S.C. § 103(a) as obvious over Rambert and Church.
Mr. Chudik filed a Notice of Appeal of the Examiner’s rejections on September 1, 2012.
4. Board Proceedings
The parties briefed Mr. Chudik’s appeal in 2012 and 2013. The Board issued its Decision on Appeal on Febru- ary 10, 2016. It did not sustain the Examiner’s determi- nation that claim 40 failed to comply with § 112, first paragraph. But it did sustain the Examiner’s determina- tions that:
• Claims 1, 15, and 33–39 were anticipated by Rambert;
• Claim 40 was anticipated by Bouttens; • Claim 18 would have been obvious over Ram- bert and Church.
In support of its findings, the Board stated that “inde- pendent claim 1 is an apparatus claim and does not require the recited surfaces to ‘engage’ the specified glenoid regions; rather, independent claim 1 requires only that the recited surfaces be ‘arranged’ for such engage- ment.” J.A. 6. Therefore, according to the Board, “the fact that Rambert’s protruding and flat surfaces are not described or depicted as actually engaging the specified glenoid regions is not dispositive, as they can still be arranged to do so.” Id. The Board thus sustained the Examiner’s rejection of claims 1, 15, and 33–39 based on Rambert.
As for claim 40, another apparatus claim, the Board stated that Mr. Chudik “does not adequately address why Bouttens’s surface 11 is structurally incapable of engag- ing a glenoid cavity that matches its protruding profile.” J.A. 8. The Board noted that “the claim language does not specify shape characteristics of the cavity, and the Speci- fication conveys that the cavity can have ‘any’ shape that matches that of the protruding surface.” Id. It also found that the Examiner’s construction of the term “articulating surface” to mean “where elements unite as a joint” was “broad but reasonable” and “consistent with the Specifica- tion.” J.A. 9. Therefore, the Board sustained the rejection of claim 40 based on Bouttens.
Finally, the Board affirmed the rejection of claim 18 as obvious over Rambert and Church. J.A. 10. The Board’s reasoning rested only on Rambert; it did not discuss Church. See id. On appeal, Mr. Chudik states that “the Church patent is of no consequence in this case.” Opening Br. 16. Similarly, the Government makes no separate argument regarding Church. We therefore do not address whether claim 18 would have been obvious over Rambert and Church.
Chudik timely appeals, arguing that neither Rambert nor Bouttens anticipates the ’631 application without improper modification and that the Examiner wrongly construed “articulating surface.” We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
S TANDARD OF R EVIEW
Anticipation is a question of fact we review for sub-
stantial evidence.
Blue Calypso, LLC v. Groupon, Inc.
,
815 F.3d 1331, 1341 (Fed. Cir. 2016). Substantial evi-
dence is “such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.”
Uni-
versal Camera Corp. v. NLRB
, 340 U.S. 474, 477 (1951).
“Where two different conclusions may be warranted based
on the evidence of record, the Board’s decision to favor one
conclusion over the other is the type of decision that must
be sustained by this court as supported by substantial
evidence.”
In re Bayer Aktiengesellschaft
, 488 F.3d 960,
970 (Fed. Cir. 2007). Though our review of an anticipa-
tion finding is deferential, we have not hesitated to re-
verse the Board when substantial evidence does not
support its findings.
See Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co.
, __ F.3d __,
D ISCUSSION
1. Legal Standard
A patent claim is invalid for anticipation under 35
U.S.C. § 102 when a prior art reference describes “each
and every claim limitation and enable[s] one of skill in the
art to practice an embodiment of the claimed invention
without undue experimentation.”
ClearValue, Inc.
v. Pearl River Polymers, Inc.
, 668 F.3d 1340, 1344 (Fed.
Cir. 2012) (quotation marks and citation omitted). Simply
put, an anticipated invention “is not new.”
Skvorecz
, 580
F.3d at 1266. By contrast, a prior art reference that
“‘must be distorted from its obvious design’” does not
anticipate a patent claim.
In re Wells
, 53 F.2d 537, 539
(C.C.P.A. 1931) (quoting
Block v. Nathan Anklet Support
Co.
, 9 F.2d 311, 312 (2d Cir. 1925));
accord Topliff
v. Topliff
,
2. Rambert
Claim 1 of the ’631 application requires the “shell hav- ing a protruding surface on a first side arranged to engage the surface of a cavity formed in a glenoid extending between peripheral glenoid surfaces.” J.A. 3. As an initial matter, neither the parties nor the Board construed the term “engage.” However, the Board seems to inter- pret it to mean “contact,” which we find to be reasonable. See J.A. 6 (admitting that because element 27b does not “directly contact[] bone regions of the scapula 5,” it does not actually engage). Indeed, Rambert Figure 2 shows element 27b engaging element 27a, which in turn engages the glenoid cavity. J.A. 198. The Examiner recognized that element 27b— not element 27a—contains the “protruding surface on a first side” that claim 1 requires. See J.A. 6 (“The surfaces identified by the Examiner as the ‘protruding surface’ and the ‘flat surface’ reside on Rambert’s second portion 27b . . . , and thus are not described or depicted as directly contacting bone regions of the scapula 5.”). The Board found this fact not to be dispositive, however, because as an apparatus claim, claim 1 “does not require the recited surfaces to ‘engage’ the specified glenoid regions.” Id. The Board found that because the surfaces of element 27b “can still be arranged to” engage the glenoid regions, Rambert anticipates claims 1 and its dependent claims 15 and 33–39. We disagree.
Claim 1 is indeed an apparatus claim, and the “ar-
ranged to engage” language could imply that the protrud-
ing surface on the flat side need not always actually
engage the glenoid cavity surface. However, it must be at
least capable of doing so.
[3]
Here, element 27b’s protruding
surface cannot be “arranged to engage” the glenoid cavity
surface without removing element 27a. Prior art that
“must be distorted from its obvious design” does not
anticipate a new invention.
Wells
,
3. Bouttens
Claim 40 of the ’631 application requires “a protrud- ing surface on a first side arranged to engage the surface of a cavity formed in a glenoid extending between periph- eral glenoid surfaces.” J.A. 3. The Board concluded that Bouttens anticipates claim 40 because its surface 11 is not “structurally incapable of engaging a glenoid cavity that matches its protruding profile,” and because “the Specifi- cation conveys that the cavity can have ‘any’ shape that matches that of the protruding surface.” J.A. 8. We disagree.
Mr. Chudik’s brief asks two relevant questions: “If the Bouttens implant’s ‘protruding surface’ is faced about, turned 180 degrees, where does the Examiner or the Board propose to fasten it in a person’s shoulder? What is going to happen to the humerus?” Appellant’s Op. Br. 15. The Board does not address either question. The Board’s reasoning only makes sense if the user rotates Bouttens 180 degrees, thereby rendering the protruding surface 11 capable of engaging the glenoid cavity instead of the humerus.
Figure 1 demonstrates that rotating Bouttens so that
the protruding surface faces the glenoid cavity would
require relocating the screws for Bouttens to remain
operable. This endeavor would constitute a significant
and impermissible modification.
Wells
, 53 F.2d at 539;
Topliff
,
The Board’s determination of anticipation was erro- neous because the Board failed to describe how a user could rotate Bouttens without modification while continu- ing “to accomplish the function performed by” the ’631 application. Topliff , 145 U.S. at 161. We therefore re- verse 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.”
C ONCLUSION
Substantial evidence does not support the Board’s de- termination that Rambert or Bouttens anticipate claims 1, 15, 18, or 33–40 of the ’631 application. We reverse the Board’s rejection of those claims.
REVERSED C OSTS Costs to Mr. Chudik.
[1] Rejected claims 15, 18, and 33–39 depend from claim 1. See J.A. 271–72.
Notes
[2] 35 U.S.C. §§ 102, 103, and 112 were replaced with new versions in the America Invents Act. See Leahy Smith America Invents Act, Pub. L. No. 112-29, §§ 3(b), 3(c), and 4(c), 125 Stat. 284, 285–87, 296 (2011) (“AIA”). The new versions of §§ 102, 103, and 112 do not apply in this case, given that the ’631 patent application predates those revisions. See AIA, §§ 3(n)(1), 4(e), 125 Stat. 293, 297. Thus, we refer to the pre-AIA version of Title 35.
[3] Neither the parties nor the Board construed the term “arranged to.” We assume for purposes of this opinion that “arranged to” is analogous to “adapted to,” which means “made to,” “designed to,” or “configured to.” In re Man Mach. Interface Techs. LLC , 822 F.3d 1282, 1286 (Fed. Cir. 2016). “Adapted to” occasionally has a broader meaning of “capable of” or “suitable for.” Id. Even under this broader definition, element 27b is not capable of engaging with the glenoid cavity surface.
[4] The government relies heavily on In re Schreiber , 128 F.3d 1473 (Fed. Cir. 1997), which involved an old structure from the prior art being put to a new use. But that is not the situation here, because Rambert teaches a different structure than the ’631 application with an identical use.