Fed Circuit remands PTAB decision on scalpel patent

The US Court of Appeals for the Federal Circuit has reversed and remanded a patent dispute centring on a cannulated scalpel, a method of knee surgery.

In the case, decided on Monday, January 9, the patent had initially been rejected by the US Patent and Trademark Office’s Patent Trial and Appeal Board for anticipation.

According to the board, the patent applicant Steven Chudik “failed to rebut the examiner’s rejection”, and therefore concluded that the claim-in suit-was anticipated.

Chudik appealed against the board’s decision.

The Federal Circuit stated in its decision that “there is no dispute that the structural limitations are met by a single prior art reference, US patent no. 5,843,108”, which is referred to as ‘Samuels’.

It added: “The price is that when the structural limitations are met by a single prior art reference, and when the examiner ‘has reason to believe’ that the prior art reference inherently teaches the functional limitation, the burden shifts to the patent applicant to show that the functional limitation cannot be met by the single prior art reference.”

In the case, Chudik made two arguments to show that Samuels does not teach the functional limitation.

First, he focused on the text of the Samuels disclosure. His second argument was aimed at whether the examiner had “reason to believe” that the Samuels blade could reach any of the shallow bones mentioned by the examiner.

According to the Federal Circuit, the board erred in its decision as it lacked adequate reason for believing that Samuels inherently teaches functional limitation.