13550730 (P.T.A.B. Nov. 21, 2017)

Ex Parte Ball

Patent Trial and Appeal BoardNov 21, 2017

13550730 (P.T.A.B. Nov. 21, 2017)

United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/550,730 07/17/2012 Geoffrey R. Ball 3435/193 4904 2101 7590 11/24/2017 Sunstein Kann Murphy & Timbers LLP 125 SUMMER STREET BOSTON, MA 02110-1618 EXAMINER LEVICKY, WILLIAM J ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 11/24/2017 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): usptomail @ sunsteinlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEOFFREY R. BALL Appeal 2016-000165 Application 13/550,730 Technology Center 3700 Before LYNNE H. BROWNE, JILL D. HILL, and NATHAN A. ENGELS, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Geoffrey R. Ball (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1—8. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2016-000165 Application 13/550,730 BACKGROUND Sole independent claim 1, reproduced below, illustrates the claimed invention. 1. An arrangement for an implantable medical system comprising: an implant housing containing a portion of an implantable electronic system and including a planar outer surface adapted to lie parallel to overlying skin in an implanted patient; and an implant magnet arrangement within the housing adapted to magnetically interact with a corresponding external magnet in an external device on the skin of the implanted patient over the implant housing, the implant magnet arrangement including: i. an inner center disc having a magnetic dipole parallel to the planar outer surface of the implant housing with an inner magnetic orientation in an inner magnetic direction, and ii. an outer radial ring having a magnetic dipole parallel to the planar outer surface of the implant housing with an outer magnetic orientation in an outer magnetic direction opposite to the inner magnetic direction. REJECTIONS I. Claims 1—8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Zimmerling ’560 (US 2006/0244560 Al, pub. Nov. 2, 2006) and Baermann (US 4,549,532, iss. Oct. 29, 1985). Final Act. 4. II. Claims 1—3 and 6—8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Griffith (US 6,178,353 Bl, iss. Jan. 23, 2001) and Baermann. Final Act. 7. 2 Appeal 2016-000165 Application 13/550,730 III. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Griffith, Baermann, and Ball (US 2007/0191673 Al, pub. Aug. 16,2007). Final Act. 10. IV. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Griffith, Baermann, and Zimmerling ’963 (US 6,838,963 B2, iss. Jan. 4, 2005). Final Act. 11 V. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Griffith, Baermann, and Rule (US 2008/0123866 Al, pub. May 29, 2008). Final Act. 12. VI. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Griffith, Baermann, and Della Santina (US 7,225,028 B2, iss. May 29, 2007). Final Act. 13. VII. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Zimmerling ’560, Baermann, and Rule. Final Act. 13. VIII. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Zimmerling ’560, Baermann, and Della Santina. Final Act. 14. XI. Claims 1, 2, 6, and 7 stand rejected on the ground of non- statutory double patenting as unpatentable over (1) claims 1, 2, 4, and 5 of co-pending Application No. 13/462,931 and Zimmerling ’560, and (2) claims 1, 2, 5, 8 and 9 of co-pending Application No. 12/839,887 and Zimmerling ’560. Final Act. 4. ANALYSIS The Examiner finds that Baermann discloses that it is known to use (1) an inner disc 16 with a magnetic dipole parallel to a housing planar outer surface, having an inner magnetic orientation in an inner magnetic direction, 3 Appeal 2016-000165 Application 13/550,730 and (2) an outer ring 14 with a magnetic dipole parallel to the planar outer surface of the implant housing, having with an outer magnetic orientation in an outer magnetic direction opposite to the inner magnetic direction. Final Act. 5 (citing Baermann 3:6—14, Fig. 1); see also Ans. 3. The Examiner concludes that it would have been obvious to one skilled in the art to modify Zimmerling ’560 to have a magnet with an inner disc and outer ring as taught by Baermann “since such a modification would provide the predictable results of increased blood flow and alleviation of pain.” Id. at 5— 6 (citing Baermann 1:23—32 (“The magnetic fields cause the body sites to be heated and blood circulation to be promoted. . . . The therapeutic[] effect of such application is characterized by alleviation and removal of pain”). Regarding the Examiner’s findings, Appellant argues that Baermann’s magnet arrangement is not the same as the claimed magnet arrangement, because Baermann’s innermost portion S “will be magnetized as in Fig. 6A of the present application with the direction of the magnetic field dipole [being] perpendicular to the planar outer surface of the implant housing, not parallel.” Appeal Br. 10 (emphasis omitted). Further, according to Appellant, no matter how many radial rings are added around Baermann’s innermost portion S, “the resulting arrangement will never be as in Fig. 6B and as required by the present claims. That is, no selection of Baermann’s magnets will ever provide a center disc with a magnetic field dipole that is parallel to the planar outer surface of the implant housing. Id. The Examiner’s findings appear, on their face, to be supported by the disclosure of Baermann, and Appellant’s arguments do not persuade us that one skilled in the art would understand that the Examiner’s findings contain 4 Appeal 2016-000165 Application 13/550,730 error, because Appellant’s arguments amount to no more than unsubstantiated attorney argument. Regarding the Examiner’s conclusion of obviousness, Appellant argues that Baermann is an “ancient patent” disclosing “unsubstantiated medical quackery”1 and, even if one skilled in the art knew of Baermann’s “dubious and unsubstantiated teachings and decide to use those teachings to enjoy the ‘benefit’ of‘tissue heating’ in [Zimmerling’s] implant magnet,” Baermann’s therapeutic purpose differs from, and is unsuitable for, “the entirely different purpose of magnetically holding in place a corresponding external magnet.” Appeal Br. 8. Appellant’s arguments do not persuade us that the Examiner’s reasoning lacks a rational basis, because Appellant’s arguments again amount to no more than unsubstantiated attorney argument. Appellant has not explained why the age of Baermann’s patent, which issued in 1985, is relevant to the veracity and applicability of its disclosure. We also are not persuaded by mere attorney argument characterizing Baermann’s teachings as “dubious” and “quackery.” In addition, regarding the argument that Baermann’s therapy purpose differs from the claimed attachment purpose, this difference in purpose does not prevent the Examiner’s reasoning from having a rational basis. Lastly, regarding Appellant’s argument that Baermann’s purpose is unsuitable for the claimed attachment purpose, we are not persuaded by the conclusory argument lacking evidence or an explanation, particularly given that the Examiner also recognized that 1 Appellant contends that “[t]he Examiner has not provided any showing to demonstrate that the purported benefit derived by Baermann’s arrangement is recognized in the real world of peer reviewed science.” Appeal Br. 9. We are aware of no such requirement. 5 Appeal 2016-000165 Application 13/550,730 Zimmerling teaches an implant’s magnet magnetically holding an external magnet was a known advantage naturally flowing from the arrangement suggested by the prior art. Ans. 3. For the reasons set forth above, we are not persuaded that any of the pending rejections contain Examiner error. We, therefore, sustain all of the pending rejections. DECISION We AFFIRM all of the pending rejections. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED 6