Ex Parte Aman et al

Board of Patent Appeals and Interferences

Jan 21, 2010

11135056 (B.P.A.I. Jan. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KATHRYN AMAN, DOUGLAS A. HEITKAMP, STUART
HEITKAMP, STUART R. CHASTAIN, and RUSSELL L. HOEKER
____________________

Appeal 2009-010426
Application 11/135,056
Technology Center 2800
____________________

Decided: January 22, 2010
____________________

Before JAMES D. THOMAS, JOHN A. JEFFERY, and THU A. DANG,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF CASE
Appellants appeal the Examiner’s final rejection of claims 1-8 and 28-
39 under 35 U.S.C. § 134(a). Claims 9-27 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2009-010426
Application 11/135,056

A. INVENTION
According to Appellants, the invention “relates to the field of
implantable devices, and more specifically to a connector assembly for an
implantable device” (Spec. 1, ll. 4-5).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and reproduced below:

1. A header for an implantable pulse generator, the
header comprising:

a header body having a passage formed therein; and

a header contact located within the passage to contact a
corresponding contact of a lead inserted in the passage;

wherein the header contact includes an MP35N alloy
material having been heat-treated at between about 1650º F to
about 1950º F for between about 30 seconds to about 5 minutes.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Daglow U.S. 5,070,605 Dec. 10, 1991
Dickenson U.S. 7,015,392 Mar. 21, 2006

Claims 1-8 and 28-39 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the teachings of Daglow in view of Dickenson.

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II. ISSUE
Has the Examiner erred in finding that the combination of Daglow in
view of Dickenson would have taught or suggested the “header contact” of
claim 1, “wherein the header contact includes an MP35N alloy material
having been heat-treated at between about 1650º F to about 1950º F for
between about 30 seconds to about 5 minutes?” In particular, the issue turns
on whether a skilled artisan would have modified Daglow’s spring members
to include Dickenson’s MP35N alloy.

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Daglow
1) Daglow discloses a connector system for coupling an
implantable electrical lead to an implantable pulse generator (Abstract).
2) A connector block 200 includes a lumen 202 for receiving the
lead wire 206 and two conductive spring members 224, 226 for electrically
coupling the connector block 200 and lead wire 206 (col. 6, ll. 3-27; Fig. 6).
3) Each spring member 224, 226 has sharp bends that form
deflectable arched sections 312, 314, 316 contacting the lead wire 206 (col.
6, ll. 50-55; Fig. 6).
Dickenson
4) Dickenson discloses a method of forming a MP35N clad silver
wire with a prescribed tensile strength and torsional ductility (Abstract).
5) According to Dickenson, “One of the most common uses of
[MP35N] wires is in the medical devices area” (col. 1, ll. 10-12); and
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Application 11/135,056

“MP35N has been a material of choice for many years for lead wires in
cardiac pacing devices,” which are “typically either coiled or twisted into
cables to produce a highly flexible, fatigue-resistant structure” (col. 1, ll. 12-
19).
6) Dickenson discloses that MP35N “wire for these medical
devices should exhibit biocompatibility and be very tough and fatigue
resistant” (col. 1, ll. 22-23), but a “difficulty associated with conventionally
produced MP35N clad silver wire is the potential for relatively low torsional
strength” (col. 1, ll. 44-48).
7) To improve torsional ductility (turns per length) without
significantly reducing tensile strength (col. 6, ll. 9-18), Dickenson anneals
MP35N clad silver wire “at a temperature near but not over the melting point
of the core for at least 30 seconds and sufficiently long thereafter,” e.g., 30
to 180 seconds (col. 2, ll. 7-12 and 21-25).
8) The annealing temperature of MP35N clad silver wire is
typically around 1700º F, which is below the 1761º F melting point of the
silver core and the 1900 to 2000º F range at which MP35N is typically
annealed (col. 1, ll. 34-38).

IV. PRINCIPLES OF LAW
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
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In affirming a determination of obviousness, the Federal Circuit has
relied, in part, on an applicant’s failure to present evidence that the proposed
combination of teachings was “uniquely challenging or difficult for one of
ordinary skill in the art” or “represented an unobvious step over the prior
art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418-19).
A prima facie case of obviousness exists where claimed ranges
“overlap or lie inside ranges disclosed by the prior art.” In re Wertheim, 541
F.2d 257, 267 (CCPA 1976). Applicants can rebut a prima facie case of
obviousness based on overlapping ranges by showing the criticality of the
claimed range.
The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other
variable within the claims. . . . [I]n such a situation, the
applicant must show that the particular range is critical,
generally by showing that the claimed range achieves
unexpected results relative to the prior art range.

In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (internal citations
omitted).

V. ANALYSIS
As to independent claim 1, Appellants argue that “there is no apparent
reason or motivation” to modify Daglow’s header contact in view of
Dickenson’s lead wires (App. Br. 10). In support, Appellants contend that
“Dickenson does not discuss anything to do with header contacts” (id.); and
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that Daglow’s header contacts are not subject to the same torsional forces
addressed by Dickenson’s lead wires (id.).
The Examiner finds that Daglow’s connector block 200 and
conductive spring members 224, 226 teach or would have suggested the
“header body” and “header contact” of claim 1, “except for the header
contact … including an MP35N alloy material having been heat-treated for
the claimed temperatures and times” (Ans. 4). The Examiner finds that
Dickenson cures this deficiency by teaching a medical device “contact
body,” and more particularly a lead wire, having an MP35N alloy annealed
within the claimed temperatures and times (id.). The Examiner states that it
would have been obvious to modify Daglow’s header contact, to include
Dickenson’s MP35N alloy, because Dickenson discloses the alloy as being
tough and fatigue resistant (Ans. 6; citing col. 1, ll. 22-25).
Accordingly, an issue we address on appeal is whether Daglow in
view of Dickenson would have taught or suggested the “header contact” of
claim 1, “wherein the header contact includes an MP35N alloy material
having been heat-treated at between about 1650º F to about 1950º F for
between about 30 seconds to about 5 minutes.” In particular, we address
whether a skilled artisan would have modified Daglow’s spring members to
include Dickenson’s MP35N alloy.
Daglow discloses a connector system for coupling an implantable
electrical lead to an implantable pulse generator (FF 1). A connector block
200 includes a lumen 202 for receiving a lead wire 206 and two conductive
spring members 224, 226 for electrically coupling the connector block 200
and lead wire 206 (FF 2). Each spring member 224, 226 has sharp bends
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that form deflectable arched sections 312, 314, 316 contacting the lead wire
206 (FF 3).
Dickenson discloses a method of forming an MP35N clad silver wire
with a prescribed tensile strength and torsional ductility, i.e., turns per length
(FF 4 and 6). According to Dickenson, MP35N wires are commonly used in
medical devices and are typically coiled or twisted to produce a highly
flexible, fatigue-resistant structure (FF 5). Dickenson further states that,
though MP35N wires are tough and fatigue-resistant, a “difficulty associated
with conventionally produced MP35N clad silver wire is the potential for
relatively low torsional strength” (FF 6). To improve torsional ductility
without significantly reducing tensile strength, Dickenson anneals MP35N
clad silver wire “at a temperature near but not over the melting point of the
core for at least 30 seconds and sufficiently long thereafter,” e.g., 30 to 180
seconds (FF 7). The annealing temperature of MP35N clad silver wire is
typically around 1700º F, which is below the 1761º F melting point of the
silver core and the 1900-2000º F range at which MP35N is typically
annealed (FF 8).
A skilled artisan would have formed Daglow’s spring members 224,
226 from Dickenson’s MP35N clad silver wire because such wire is
commonly used in medical devices and “a material of choice” to form
flexible, fatigue-resistant coils (FF 5-6). To provide greater torsional
ductility for the sharp deflecting bends of Daglow’s spring members 224,
226, the skilled artisan would have annealed the MP35N clad silver wire, in
view of Dickenson, at just under 1761º F for 30 to 180 seconds (FF 7-8).
Thus, Daglow’s spring members 224, 226, as modified in view of
Dickenson, would include “an MP35N alloy material having been heat-
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treated at between about 1650º F to about 1950º F for between about 30
seconds to about 5 minutes” (claim 1).
Appellants have not presented evidence that the claimed ranges,
which overlap Dickenson’s ranges for improving torsional ductility, would
provide unexpected results relative to Dickenson. See In re Woodruff, 919
F.2d at 1578. Nor have Appellants presented evidence that the proposed use
of Dickenson’s MP35N clad silver wire would have been “uniquely
challenging or difficult for one of ordinary skill in the art” or otherwise
“represented an unobvious step over the prior art.” Leapfrog, 485 F.3d at
1162. Rather, Appellants argue that such use of Dickenson’s MP35N clad
silver wire would not have been obvious because Daglow’s spring members
224, 226 are not subject to “the same torsional forces” addressed by
Dickenson (App. Br. 10). However, a skilled artisan would have understood
the sharp bends of Daglow’s spring members 224, 226 as being subject to
some torsional force and, therefore, as benefiting from Dickenson’s wire
composition and treatment.
Accordingly, Appellants have not shown the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) as being unpatentable over
Daglow in view of Dickenson. We therefore affirm the rejection of claim 1,
and dependent claims 2-8, 28, and 29 falling therewith, under 35 U.S.C. §
103(a).
As Appellants present similar arguments for independent claims 30
and 36, those claims fall with representative claim 1. We therefore also
affirm the rejection of claims 30 and 36, and their dependent claims 31-35
and 37-39, under 35 U.S.C. § 103(a).

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VI. CONCLUSION
Appellants have not shown the Examiner erred in finding that claims
1-8 and 28-39 are unpatentable over the teachings of Daglow in view of
Dickenson.

VII. DECISION
The Examiner’s decision rejecting claims 1-8 and 28-39 under
35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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