Court Cuts Back at PTO on Scalpel Invention

By William Vogeler, Esq. on January 12, 2017 | Last updated on March 21, 2019

A federal appeals court has breathed life into a doctor's patent claim for a scalpel that helps surgeons repair torn knee ligaments and other injuries.

The U.S. Federal Circuit Court of Appeals said the Patent and Trademark Office wrongfully denied the doctor's patent by shifting the burden on him to continue his claim. The trademark examiner and board said that a prior invention could perform the same function, but the appeals court said the doctor had done enough to show his scalpel design worked differently.

"For that reason, the examiner failed to make the necessary prima facie showing to shift the burden of going forward to applicant," the court said.

The Cannulated Scalpel

Dr. Steven Chudik, who filed for the patent, built a reputation using procedures to repair knee injuries with less trauma to his patients, including those who suffered torn anterior cruciate ligaments (ACL's) --- the menace of many athletes. Chudik claimed his scalpel procedure was unique.

The "cannulated scalpel" works kind of like a straw that slides over a tiny needle pinpointing where a surgeon needs to drill a bone in the procedure. The drilling is often necessary to reach the torn ACL, and the cannulated scalpel cuts away less skin in the process.

Another Device Cut Close

The patent examiner concluded that another device, "Samuels over-the-wire scalpel" for inserting catheter tubes, provided the same function. The examiner also said the prior device was capable of creating a passageway to a target site on a bone. The court of appeals disagreed, saying the board adopted the conclusion that the Samuel scalpel could reach the bone.

"The examiner, however, gave no justification for this belief, and nothing in Samuels offers an indication of the size of the blade or indicates that it would be able to contact subdermal anatomical features," the judges said. "If anything, Samuels explains that its design specifically prevents incisions that could damage structures near the skin."

The court reversed and remanded the case for further consideration.

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