In Re: Chudik , 674 F. App'x 1011 ( 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NOTE: This disposition is nonprecedential.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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2016-1487
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 11/701,902.
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Decided: January 9, 2017
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GREGORY B. BEGGS, Law Offices of Gregory B. Beggs,
Downers Grove, IL, argued for appellant.
AMY J. NELSON, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
appellee Michelle K. Lee. Also represented by THOMAS W.
KRAUSE, MONICA BARNES LATEEF.
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Before PROST, Chief Judge, CLEVENGER, and REYNA,
Circuit Judges.
CLEVENGER, Circuit Judge.
This case involves a patent claim to a cannulated
scalpel that stands rejected by the U.S. Patent and
Trademark Office (“PTO”) Patent Trial and Appeal Board
2 IN RE: CHUDIK
(“the Board”) for anticipation. The claim in question
contains a number of structural limitations and a func-
tional limitation. There is no dispute that the structural
limitations are met by a single prior art reference, U.S.
Patent No. 5,843,108 (“Samuels”). When confronted with
such facts, i.e., the only question being whether the func-
tional limitation can be found in the single prior art
reference, we apply the long-standing and unquestioned
precedent as stated in In re Schreiber, 128 F.3d 1473(Fed. Cir. 1997). In a nutshell, Schreiber teaches that
writing a claim that mixes structural and functional
limitations comes at a price. Id. at 1478 (“[C]hoosing to
define an element functionally, i.e., by what it does,
carries with it a risk.”). The price is that when the struc-
tural 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. Id. (citing In re Swinehart, 439
F.2d 210, 212 (C.C.P.A. 1971)).
In this case, the examiner and the Board shifted the
burden to the applicant Steven C. Chudik (“Chudik”) to
disprove anticipation. The Board, finding that Chudik
failed to rebut the examiner’s rejection, concluded that
the claim in suit was anticipated under 35 U.S.C. § 102.
As explained below, in this case the examiner lacked
adequate reason for his belief that Samuels inherently
teaches the functional limitation, and the Board thus
erred in sustaining the examiner’s § 102 final office
action. Accordingly, we reverse the Board’s decision and
remand the case for further proceedings.
BACKGROUND
Chudik’s patent application is directed to novel surgi-
cal methods and instruments for repairing a damaged
anterior cruciate ligament (“ACL”), one of several liga-
IN RE: CHUDIK 3
ments in the knee. Traumatic injury—as experienced, for
example, during athletic activities—may cause an ACL to
tear, in which case ACL reconstructive surgery is neces-
sary to restore stability to the knee and prevent further
structural damage.
ACL reconstruction often requires the orthopedic sur-
geon to drill holes or “tunnel” through the bones that form
the knee—i.e., the femur and tibia—in order to access the
damaged ACL and to anchor a graft on which the ACL
can heal. Claim 15, the sole pending claim on appeal, is
directed to a hollow, “cannulated” scalpel, which can be
used to aid this “tunneling” procedure. Claim 15 reads:
A cannulated scalpel comprising
a blade having a blade end configured for creating
a passageway through skin and soft-tissue to a
target site on a bone,
a flat handle adjacent the blade arranged in the
same plane as the blade end, and
a longitudinal cannulation in the handle and the
blade forming a passageway adapted to accept a
guide pin through the handle and blade.
The idea is that a small “guide wire” or “guide pin”
can be inserted in a patient’s leg to a precise point on the
bone where the surgeon wants to create a tunnel. The
guide pin sets a pathway from the skin of the leg to the
desired tunnel site. Chudik’s cannulated scalpel can then
be “passed over” the guide pin “to create a passage
through the skin and soft-tissue” to the bone. Joint
Appendix at 34. With the skin and soft-tissue cleared
away by the scalpel, the surgeon can bore a tunnel in the
bone.
4 IN RE: CHUDIK
The following figure from Chudik’s application illus-
trates the use of the claimed scalpel:
The figure shows a scenario where guide wire 30 is
threaded in through an existing tibial tunnel 6, through
the femur 2, and out through the patient’s thigh 35. The
cannulated scalpel 40 can then pass over the guide wire
and form a passage to the femur.
The PTO examiner rejected claim 15 under 35 U.S.C.
§ 102(b) as being anticipated by U.S. Patent No. 5,843,108(“Samuels”). Samuels discloses a hollow, “over the wire”
scalpel for creating skin incisions (or “skin nicks”) to allow
for easier insertion of percutaneous devices, such as
catheter tubes. Figure 1 from Samuels is shown below:
IN RE: CHUDIK 5
The Samuels scalpel possesses a central lumen 30, which
extends through the length of the blade 10, the blocker 22,
and the handle 20. Samuels teaches that the “blade
is . . . advanced into the patient’s skin until [the] blocker
impedes further travel. As such, [the] blocker limits the
depth of the skin nick formed.” Samuels, col. 4 ll. 54–57
(citations to figure omitted).
The examiner concluded that Samuels teaches all the
structural limitations of Claim 15, and Chudik did not
challenge that conclusion below or in this court. The
examiner also surmised that the Samuels blade is capable
of creating a passageway to a target site on a bone, thus
satisfying the functional limitation of claim 15, and
rendering the claim anticipated by Samuels. The exam-
iner first reasoned that Samuels taught the functional
limitation because many repeated nicks of the skin with
the Samuels blade should eventually result in the blade
reaching a bone, and rejected claim 15 as anticipated for
that reason.
6 IN RE: CHUDIK
On appeal to the Board, Chudik pointed out that the
examiner’s reasoning ignored the blocker in Samuels,
which limits the depth of an incision, proving that repeat-
ed nicks would not cause an incision deeper than the first
nick. The examiner, before the Board, retreated and
shifted his rationale to another ground, namely his view
that the Samuels blade is capable of reaching a shallow
bone (shallow in comparison to the bone’s location near a
patient’s skin), such as where “the bone can be easily
access [sic] without a large or deep incision.” Joint Ap-
pendix at 392.
The Board, without any analysis of its own and with-
out acknowledging the examiner’s original, mistaken
rationale, agreed with the examiner’s assessment that the
blade in Samuels could reach a shallow bone, and thus
satisfied the functional limitation of claim 15. Because
Chudik did not rebut this rationale, the Board thus
affirmed the examiner’s § 102 rejection.
Chudik appeals the Board’s decision. We have juris-
diction under 28 U.S.C. 1295(a)(4)(A).
DISCUSSION
There is no challenge to analyzing this case under the
Schreiber framework. Since the parties agree that Samu-
els teaches all the structural limitations of Claim 15, the
only question on appeal is whether the functional limita-
tion of claim 15 is found in Samuels. If so, the Board
would have been correct in holding that Chudik failed to
carry his burden under Schreiber, and we would affirm. If
not, we must reverse and remand.
Chudik makes two arguments to show that Samuels
does not teach the functional limitation of allowing the
claimed blade to reach a bone. First, he focuses on the
text of the Samuels disclosure and what it affirmatively
teaches. Chudik maintains that, properly understood, the
Samuels blade never actually penetrates through the skin
IN RE: CHUDIK 7
into soft tissue lying under the skin, and thus could not
possibly reach a bone. Chudik points to language in the
Samuels specification saying the “blade is . . . advanced
into the patient’s skin until [the] blocker impedes further
travel,” and the blocker “restricts travel of the blade into
the patient’s skin” and limits “the depth of blade travel
into the patient’s skin.” The Board, however, interpreted
Samuels differently, implicitly reading “into the patient’s
skin” to identify the location of, rather than the depth of,
the incision made by the blade, and reading the Samuels
blade as capable of penetrating skin to reach underlying
soft tissue. “What a reference teaches is a question of
fact.” In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992).
The Board’s interpretation—that Samuels did not ex-
pressly limit itself to superficial incisions on the skin’s
surface—is supported by substantial evidence, given that
the nicks created by the Samuels scalpel must be suffi-
ciently deep to allow a catheter to be inserted into subcu-
taneous tubular structures. Therefore, we reject Chudik’s
first argument.
Chudik’s second argument is aimed directly at wheth-
er, in this case, the examiner had “reason to believe” that
the Samuels blade could reach any of the shallow bones
mentioned by the examiner, such as a patient’s temple,
kneecap, or elbow. See Schreiber at 1478. Under
Schreiber, if it is established that an examiner has reason
to believe that a functional limitation is taught in the
single prior art reference, the burden shifts to the appli-
cant to disprove the examiner’s belief. An examiner’s
belief, however, must be tethered to or grounded in some
rationale so as to establish a prima facie case of anticipa-
tion. See id. (explaining that the examiner’s observation
that the prior art device had the “same general shape” as
the claimed device established a prima facie case of inher-
ent anticipation); see also Mytee Prods., Inc. v. Harris
Research, Inc., 439 F. App’x 882, 886 (Fed. Cir. 2011)
(“The Schreiber case . . . did not establish a presumption
8 IN RE: CHUDIK
of inherency for issued patents. It held only that after
establishing a prima facie case of anticipation, an examin-
er can shift the burden to the applicant ‘to show that the
prior art structure did not inherently possess the func-
tionally defined limitations of the claimed apparatus.’ ”
(emphasis added)).
Here, the examiner believed—and the Board affirmed
this belief—that the blade of the Samuels scalpel was
inherently capable of reaching a shallow bone. The
examiner, however, gave no justification for this belief,
and nothing in Samuels offers an indication of the size of
the blade or indicates that it would be able to contact
subdermal anatomical features. If anything, Samuels
explains that its design specifically prevents incisions
that could damage structures near the skin. Samuels, col.
1 ll. 55–61 (“[T]he current design of the scalpels does not
limit the depth or length of the skin nick. This can be of
great concern when the tubular structure in question is
close to the skin surface. In this circumstance, an inad-
vertently [sic] deep skin nick may sever the structure of
concern with potentially disastrous consequences.”). The
examiner and the Board failed to explain how the Samu-
els blade could be employed in a manner to reach a shal-
low bone, but without the “disastrous consequences” that
the blocker in Samuels is designed to prevent. For that
reason, the examiner failed to make the necessary prima
facie showing to shift the burden of going forward the
applicant. See In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990) (“[T]he PTO’s asserted prima facie case . . . [is] not
properly drawn . . . if the PTO did not correctly apply or
understand the subject matter of the reference, or if the
PTO drew unwarranted conclusions therefrom.”).
Substantial evidence is lacking to show that Samuels
teaches the functional limitation in claim 15. In this
circumstance, we reverse the Board’s rejection of claim 15
under § 102 and remand for further proceedings. See In
re Skvorecz, 580 F.3d 1262, 1267–68, 1270 (Fed. Cir.
IN RE: CHUDIK 9
2009) (reversing § 102 rejection for insufficient reason to
believe that a functional limitation was taught by a prior
art reference, despite “structural similarity” between the
invention and the prior art, and remanding for further
proceedings).
CONCLUSION
For the reasons set forth above, we reverse the
Board’s decision and remand.
REVERSED AND REMANDED
COSTS
No Costs.