In Re: Chudik , 706 F. App'x 670 ( 2017 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: STEVEN C. CHUDIK,
Appellant
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2016-2673
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 13/068,309.
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Decided: August 25, 2017
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ERIC RYAN WALTMIRE, Erickson Law Group, PC,
Wheaton, IL, argued for appellant. Also represented by
GREGORY B. BEGGS, Law Offices of Gregory B. Beggs,
Downers Grove, IL.
MEREDITH HOPE SCHOENFELD, Office of the Solicitor,
United States Patent and Trademark Office, Alexandria,
VA, argued for appellee Joseph Matal. Also represented
by NATHAN K. KELLEY, AMY J. NELSON, THOMAS W.
KRAUSE.
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Before LOURIE, MOORE, and HUGHES, Circuit Judges.
HUGHES, Circuit Judge.
2 IN RE: CHUDIK
Dr. Steven Chudik appeals from the Patent Trial and
Appeal Board’s determination that claims 5–15 of U.S.
Patent Application 13/068,309 are not patentable over the
prior art. Because substantial evidence supports the
Board’s determination, we affirm.
I
The ’309 application is directed to a humeral implant
used in shoulder replacement surgery. The specification,
as shown in Figure 16 below, discloses a humeral implant
having a humeral surface 96 that is shaped to match the
anatomy of the humeral head, while stem 98 engages the
side facing away from the glenoid cavity.
Independent claim 5 reads as follows:
5. A humeral implant comprising a humeral sur-
face component having a non-articular surface
configured for long-lasting fixation of the implant
on a humeral head and no stem.
The Examiner rejected claim 5 under 35 U.S.C.
§ 102(b) as anticipated by Leonard (French Patent Pub.
IN RE: CHUDIK 3
No. 2825263), and the Board affirmed the Examiner.
Dr. Chudik appeals from the Board’s decision. We have
jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
II
Because Dr. Chudik’s arguments for the patentability
of dependent claims 6–15 depends on claim 5, we address
only claim 5. We review the Board’s legal conclusions de
novo and its factual findings for substantial evidence.
Rambus Inc. v. Rea, 731 F.3d 1248, 1251 (Fed. Cir. 2013).
Dr. Chudik first challenges the Board’s finding that
Leonard discloses the “no stem” limitation of claim 5.
Leonard discloses shoulder implants for attachment in
the glenoid cavity. In one embodiment, as depicted in
Figures 3A and 5 below, the implant comprises a platen
24 with portion 40 that is placed between a base 20 and
the head of the humerus 12.
According to Dr. Chudik, portion 40 in Leonard is a
“stem” because it extends away from the main body of
platen 24. We disagree. The ’309 specification describes
the stem as a physically distinct and separate component
from the implant. J.A. 249 ¶ 155. In Leonard, portion 40
is a part of and not separate from platen 24. Therefore,
4 IN RE: CHUDIK
the Board did not err in finding that Leonard discloses the
“no stem” limitation of claim 5.
Next, Dr. Chudik argues that Leonard does not dis-
close a “non-articular surface configured for long-lasting
fixation” as required by claim 5. Dr. Chudik contends
that Leonard discloses a sliding contact between the
humeral head and the platen, and that using screws and
cements to achieve “long-lasting fixation” would change
the structure of Leonard. Contrary to Dr. Chudik’s argu-
ment, claim 5 requires only a non-articular surface that is
configured for long-lasting fixation. As a result, whether
Leonard discusses a sliding contact is not relevant to
whether Leonard is capable of long-lasting fixation. Dr.
Chudik has not pointed to any evidence in the record that
Leonard is incapable of long-lasting fixation. He also
argues that using screws and cements to achieve long-
lasting fixation would result in a joint with a limited
range of motion—but claim 5 contains no limitation
regarding range of motion. Therefore, substantial evi-
dence supports the Board’s conclusion.
Finally, Dr. Chudik argues that Leonard does not dis-
close the “humeral implant” limitation of claim 5 because
Leonard is directed to a glenoid implant and not a hu-
meral implant. The patentability of an apparatus claim
“depends on the claimed structure, not on the use or
purpose of that structure.” Catalina Mktg. Int’l v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002);
see also In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997) (“It is well settled that the recitation of a new
intended use for an old product does not make a claim to
that old product patentable.”) Thus, Dr. Chudik’s conten-
tion that his apparatus will be used in a humeral, as
opposed to a glenoid, implant is not a patentable distinc-
tion, and cannot prevent Leonard from anticipating the
claim.
IN RE: CHUDIK 5
We have considered Dr. Chudik’s remaining argu-
ments but find them unpersuasive. Because the Board
applied the correct law and because its decision is sup-
ported by substantial evidence, we affirm the Board’s
decision.
AFFIRMED
No costs.