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Federal Circuit Determines That the PTAB Erred in Sustaining an Examiner’s Rejection of a Claim for Being Anticipated by Prior Art

IN RE: STEVEN C. CHUDIK, 2016-1487 (Fed. Cir. January 9, 2017) (non-precedential). On appeal from PTAB.  Before Prost, Clevenger, and Reyna.

Procedural Posture: A patent claim was rejected as anticipated by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) . Finding that the applicant failed to rebut the examiner’s rejection, the PTAB concluded that the claim at issue was anticipated under 35 U.S.C. § 102. The patent applicant appealed the PTAB decision and the CAFC reversed.

  • Anticipation: The patent claim in question contained both structural limitations and a functional limitation. Because there was no dispute that the prior art reference at issue taught the structural claim limitations, the CAFC analyzed whether a functional limitation is present in a single prior art reference, applying In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997), which states that when structural 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. The CAFC, however, held that here the examiner lacked adequate reason for his belief that the reference applied under § 102 (“Samuels”) inherently teaches the functional limitation. Accordingly, the CAFC ruled that the PTAB erred in sustaining the examiner’s § 102 rejection. Specifically, the examiner surmised that the Samuels skin incision blade is capable of creating a passageway to a target site on a bone, thus satisfying the functional limitation at issue. However, the CAFC agreed with the patent applicant that the Samuels blade had no reason to reach any of the shallow bones mentioned by the examiner, which is required by the rejected claim. In particular, the CAFC noted that Samuels explains that its design specifically prevents an inadvertently deep incision that could damage structures near the skin. Thus the CAFC reversed PTAB’s determination of anticipation and remanded.

Copyright © 2021, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume VII, Number 54
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About this Author

Aimee Soucie, Andrews Kurth Law Firm, Trade Litigation Attorney
Partner

Aimee has over 12 years of experience representing clients in patent and trade secret litigation at the U.S. International Trade Commission (“ITC”), district courts, and the Federal Circuit. She handles all phases of litigation, including discovery, motion practice, claim construction, trial, and appeal.

Aimee also spent two years as an Attorney-Advisor to the Administrative Law Judges at the ITC, where her responsibilities included providing guidance to the judges on substantive questions of law and procedural disputes, and drafting initial and...

202-662-2734
Dragan Plavsic, Andrews Kurth, fuel cell systems lawyer, hybrid vehicles attorney
Associate

Dragan represents firm clients in patent litigation matters and in the Patent Trial and Appeal Board proceedings. In addition, he prepares and prosecutes patent applications and provides IP counseling to clients. The range of services that he provides further includes validity opinions, freedom to operate opinions and due diligence. Dragan provides his clients with services in a wide variety of technologies, including automotive safety systems, telematics systems, and fuel cell systems, hybrid vehicles, oil and gas exploration and production, oil and gas processing and...

202-662-2733
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