IP Law Daily Implant for shoulder replacement surgery not anticipated by prior art
News
Monday, March 27, 2017

Implant for shoulder replacement surgery not anticipated by prior art

By Mark Engstrom, J.D.

Substantial evidence did not support the Patent Trial and Appeal Board’s finding that 11 claims of a patent application for a "Glenoid Implant for Minimally Invasive Shoulder Replacement Surgery" were anticipated by prior art, the U.S. Court of Appeals for the Federal Circuit has ruled. Neither the patent examiner nor the PTAB had explained how the "protruding surface" of one element of the "Rambert" prior art could "engage the surface" of the glenoid cavity without removing another element and "tearing the invention apart," the court explained. In addition, the Board failed to explain how a user could rotate the Bouttens prior art, without modifying it, while continuing to accomplish the function that was performed by the invention. The court thus reversed the Board’s rejection of all 11 claims (In re Chudik, March 27, 2017, Reyna, J.).

Invention. U.S. Patent Application No. 11/525,631 described "rotator cuff sparing procedures and associated devices for shoulder replacement surgery." The application purportedly improved the prior art by offering "simple and less invasive perpendicular access to the humeral and glenoid joint surfaces," thereby sparing the rotator cuff tendons and facilitating a quicker and more functional recovery. The surgery described in the application had two main steps: (1) the removal of a minimal amount of bone from the "peripheral surface of the glenoid,’ a process called "reaming," and (2) the placement of an implant in the reamed cavity. Independent claims 1 and 40 were representative.

Rambert prior art. Claim 1 of the application required 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." The court agreed with the Board that Claim 1 was an apparatus claim. Although the court found that the application’s "arranged to engage" language could imply that the protruding surface on the flat side of the implant did not have to "always actually engage" the surface of the glenoid cavity, the court also found that the implant had to be "at least capable" of doing so.

The protruding surface of Rambert’s element 27b could not be "arranged to engage" the glenoid cavity surface without removing element 27a, the court observed, and prior art that had to be distorted from its obvious design could not anticipate a new invention. Significantly, neither the examiner nor the Board had described how the protruding surface of element 27b could engage the surface of the glenoid cavity without removing element 27a and "tearing the invention apart." Substantial evidence thus failed to support the Board’s anticipation finding based on Rambert.

Bouttens prior art. Claim 40 of the application required "a protruding surface on a first side arranged to engage the surface of a cavity formed in a glenoid extending between peripheral glenoid surfaces." According to the court, rotating Bouttens so the protruding surface faced the glenoid cavity would require the screws in Boutten to be relocated, and that change would constitute a "significant and impermissible modification."

The Board’s anticipation finding was erroneous, the court concluded, because the Board failed to explain how a user could rotate Bouttens—without modification—while continuing to accomplish the function that was performed by the application. The court thus reversed the Board’s anticipation finding as not supported by substantial evidence.

The case is No. 2016-1817.

Attorneys: Gregory B. Beggs (Law Offices of Gregory B. Beggs) for Steven C. Chudik. Mary L. Kelly, USPTO Office of the Solicitor, for Michelle K. Lee.

MainStory: TopStory Patent FedCirNews

Back to Top

Interested in submitting an article?

Submit your information to us today!

Learn More