January 10, 2017 – The Federal Circuit reversed a PTAB decision that rejected a claim covering a scalpel used in ACL surgery, which is “configured for creating a passageway through skin and soft-tissue to a target site on a bone.” The Examiner and PTAB found the claim anticipated over U.S. Patent No. 5,843,108, which is directed to a hollow scalpel for creating “skin nicks” with a blade that is “advanced into the patient’s skin until the blocker impedes further travel.” The Examiner and PTAB concluded that the ’108 patent teaches the structural limitations of the claim and inherently teaches the functional limitation of allowing the blade to reach a bone.
The Federal Circuit reversed because the Examiner gave no justification for the belief that the ’108 patent’s blade was inherently capable of reaching a shallow bone and nothing in the patent indicates that fact. Therefore, neither the PTAB nor the Examiner explained how the prior art taught the functional limitation of the claim at issue.
The case is captioned In re: Steven C. Chudik, in the United States Court of Appeals for the Federal Circuit, 2016-1487.
By: Christopher J. Stankus