A prior art reference that must be
distorted from its obvious design does not anticipate claims.
In an appeal from the USPTO where the PTAB affirmed the
examiner's rejection of Chudik's claims as anticipated by
two separate prior art references, the CAFC reversed because
substantial evidence did not support the PTAB's decision.
claims on appeal were directed to a device used in shoulder
replacement surgery requiring "a protruding surface on a first
side arranged to engage the surface of a cavity formed in a glenoid
extending between peripheral glenoid surfaces." The PTAB
sustained the examiner's anticipation rejection under two
separate prior art references because in each, surfaces could be
"arranged" to engage with the specified regions even if
they were not described or depicted as actually engaging. The CAFC
agreed that the claims only required surfaces to be
"arranged" to engage, but disagreed that the surfaces in
each of the prior art references were capable of being
"arranged." The Board and Examiner's modifications to
the first reference would only be proper if an element was removed
from its design without "tearing the invention apart."
Similarly, the modifications to the second reference would only be
proper if the apparatus was rotated in a manner which would require
relocating the screws for the reference to remain operable. The
CAFC found these modifications to be impermissible because prior
art that "must be distorted from its obvious design" does
not anticipate a new invention.
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