Prior art is not anticipatory if it must be “distorted from its obvious design”
The patent applicant appealed the decision of the Patent Trial and Appeal Board (PTAB) rejecting claims directed to rotator cuff procedures in light of two prior art references. On appeal, the PTAB sustained the examiner’s rejection of the claims as obvious over the cited art. The claims required a protruding surface that was “arranged for engaging” a certain cavity. The PTAB held that the claim language did not require the protruding surface to actually engage that cavity and that the prior art could be arranged as claimed despite the fact that the prior art protruding surface did not engage the cavity. The applicant appealed, arguing that the prior art references could not anticipate the claims without improper modification.
The Federal Circuit reversed the PTAB determination, finding that substantial evidence did not support the anticipation rejections. For one prior art reference , the court found that despite that “the ‘arranged to engage’ language could imply that the protruding surface need not always actually engage the [cavity,]... it must be at least capable of doing so.” Thus, that reference could not anticipate the claim without being “distorted from [its] obvious design.” For the other prior art reference, the court found that the PTAB “failed to describe how a user could rotate [the prior protruding surface] without modification while continuing ‘to accomplish the function performed by’ the applicant’s claims.