IN RE: STEVEN C. CHUDIK, Appellant
from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. 11/525, 631.
Gregory B. Beggs, Law Offices of Gregory B. Beggs, Downers
Grove, IL, argued for appellant.
L. Kelly, Office of the Solicitor, United States Patent and
Trademark Office, Alexandria, VA, argued for appellee
Michelle K. Lee. Also represented by NATHAN K. Kelley,
Meredith Hope Schoenfeld, Thomas W. Krause.
Dyk, Reyna, and Stoll, Circuit Judges.
Chudik appeals from the Patent Trial and Appeal 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.
'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 replacement
surgery." J.A. 24, ¶ 2. The '631 application
improves 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:
79, 91, 94. The scapula is the shoulder bone connecting 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.
the glenoid cavity has been reamed, the implant'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.
independent claims 1 and 40 are at issue in this
appeal. They recite:
1. A glenoid implant comprising:
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, and
a flat surface on the first side adjacent the protruding
surface arranged to engage the peripheral glenoid
surfaces adjacent the cavity, and
a wear-resistant articulating surface on a second 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 glenoid
extending between peripheral glenoid surfaces, and
a substantially planar wear-resistant articulating surface on
a second side opposite the protruding surface.
J.A. 3 (disputed term ...