Ex Parte Anderson et al

Patent Trial and Appeal Board

Apr 7, 2016

12702982 (P.T.A.B. Apr. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121702,982 02/09/2010
27581 7590 04/11/2016
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
FIRST NAMED INVENTOR
David A. Anderson
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
P0009578.02/LG10126 3159
EXAMINER
TOWA,RENET
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
04/11/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
medtronic_crdm_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID A. ANDERSON, JAMES F. KELLEY,
NAIM S. ISTEPHANOUS, and STEVEN L. WALDHAUSER
Appeal2014-000255
Application 12/702,982
Technology Center 3700
Before JENNIFER D. BAHR, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David A. Anderson et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 5-25. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2014-000255
Application 12/702,982
THE CLAIMED SUBJECT MATTER
Claim 5, reproduced below, is illustrative of the claimed subject
matter.
5. A method for manufacturing an elongated medical device
adapted for controlled deformation by means of one or more
actuators, comprising:
providing a shape memory alloy (SMA) substrate
including a surface, a groove being defined in the surface of the
SMA substrate establishing a trace pattern;
forming an electrically insulative layer on portions of the
surface of the SMA substrate and within the groove;
forming a conductive trace material upon the electrically
insulative layer at least within the groove and electrically isolated
from the SMA substrate by the electrically insulative layer
formed within the groove; and
removing at least portions of the electrically insulative
layer formed on portions of the surface of the SMA substrate to
provide a conductive trace including a first end, a second end,
and a heating element disposed between the first end and the
second end, wherein at least portions of the conductive trace,
portions of the electrically insulative layer electrically isolating
the conductive trace from the SMA substrate within the groove,
and portions of the SMA substrate are flush after the conductive
trace has been formed upon the electrically insulative layer
within the groove.
REJECTIONS
I. Claims 5-14 and 16-25 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Maynard (US 5,941,249, iss. Aug. 24,
1999) and Post (US 3,566,220, iss. Feb. 23, 1971).
II. Claim 15 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Maynard, Post, and Shaw (US 3,615,913, iss.
Oct. 26, 1971).
2
Appeal2014-000255
Application 12/702,982
DISCUSSION
Each of independent claims 5, 14, 1 7, and 18 requires forming a layer
of electrically insulative material on the surface of an SMA substrate within
a groove of the substrate, and forming a layer of conductive material over
the electrically insulative layer, including in the groove. Appeal Br., Claims
App. The Examiner acknowledges that Maynard does not disclose a groove
on the surface of the SMA substrate (sheet 72) in which insulative and
conductive trace layers are formed. Final Act. 3.
The Examiner finds:
Post teaches that it is known to provide a method comprising the
steps of providing a substrate 20 with grooves (i.e.[,] pockets) for
printing electrically conductive trace material (i.e.[,] P+, N)
therein; wherein the method further comprises the step of
removing at least portions of the electrically insulative layer 7
formed on portions of the surface of the substrate 20 to provide
a conductive trace; wherein the method further includes the steps
of removing a conductive trace material (i.e.[,] P+, N) from a
portion of the substrate 20 not including the groove (i.e.[,]
pocket), leaving behind the conductive material ... in the groove.
Id. at 4 (emphasis omitted) (citing Post, Figs. 1--4; col. 3, 1. 75; col. 4,
11. 1-59).
The Examiner determines:
[I]t would have been obvious to . . . print the electrically
conductive trace patterns formed upon an insulative layer of
Maynard in a groove as taught by Post since such a modification
would amount to applying a known technique (i.e.[,] as taught by
Post) to a known device (i.e.[,] as taught by Maynard) ready for
the improvement to achieve a predictable result such as reliably
and reproducibly manufacturing the electrodes formed upon the
electrically insulative layer, with a defined surface area and
conductivity.
Id. (emphasis omitted).
3
Appeal2014-000255
Application 12/702,982
Appellants argue that "the Examiner has failed to provide articulated
reasoning with some rational underpinning that the alleged technique of Post
is applicable to the device of Maynard, or that such a modification of
Maynard would have achieved predictable results." Appeal Br. 8.
Appellants add that "the Examiner has failed to provide any factual findings
to support the allegation that it would have been obvious to one of ordinary
skill in the art to print the electrically conductive patterns formed upon the
insulation layer of Maynard in a groove as taught by Post." Id.
In response, the Examiner explains:
[S]ince Maynard already teaches a method compnsmg:
providing an SMA substrate 72 comprising a surface, forming an
electrically insulative layer (74, 80) upon said surface, and
forming a conductive trace 82B-E upon said electrically
insulative layer . . ., the Examiner's rejection relies on a
modification that would involve applying the known technique
of Post, which involves forming the electrically insulative layer
and the electrically conductive trace material into a groove of the
substrate to the knmvn method of l\1aynard ready for
improvement to achieve a predictable result such as reliably and
reproducibly manufacturing the conductive trace material
formed upon the electrically insulative layer, with a defined
surface area and conductivity.
Ans. 13 (citing Maynard, Fig. 15; col. 8, 11. 4--9, 11-21, 24--32, 41--43).
The shortcoming in the Examiner's reasoning is that it does not
articulate an apparent reason, with any rational underpinnings, why a person
of ordinary skill in the art would have been prompted to form Maynard's
SMA substrate (sheet 72) with a groove therein and form either of insulative
layers 74 or 80, heating elements 76A-D, or conductive lines 82A-E in such
groove, rather than forming the sheet 72 without a groove and layering the
insulating layers, heating elements, and conductive lines on the planar
4
Appeal2014-000255
Application 12/702,982
surface thereof~ as disclosed by Maynard. The Examiner finds that "shape
memory alloys (SMA) are ubiquitously known to be capable of deposition
by vapor deposition [and,] thus, one of ordinary skill in the art would have
known that SMA can be deposited by vapor deposition." Ans. 11.
However, even assuming a person having ordinary skill in the art would
have been prompted to use such a technique to form Maynard's SMA
substrate (sheet 72), it is not apparent, and the Examiner does not cogently
explain, how or why the method of making Maynard's activator employing
such a technique would entail forming the insulation layers, heating
elements, or conductive lines in a groove in the SMA substrate, as called for
in Appellants' claims.
For the above reasons, we do not sustain the rejection of claims 5-14
and 16-25 under 35 U.S.C. § 103(a) as unpatentable over Maynard and Post.
We also do not sustain the rejection of claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Maynard, Post, and Shaw, which suffers from the
shortcoming discussed above. See Final Act. 6-7.
DECISION
The Examiner's decision rejecting claims 5-25 under 35 U.S.C.
§ 103(a) is REVERSED.
REVERSED
5