Ex Parte Black et al

Board of Patent Appeals and Interferences

Jan 25, 2011

11010108 (B.P.A.I. Jan. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAMON R. BLACK, TERRY D. DAGLOW,
and ROBERT E. JONES
____________

Appeal 2010-006639
Application 11/010,108
Technology Center 3700
____________

Before STEFAN STAICOVICI, KEN B. BARRETT and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-006639
Application 11/010,108

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STATEMENT OF THE CASE
Damon Black et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision finally rejecting claims 1-12 and 15-23 under 35
U.S.C. § 102(b) as anticipated by Baudino (Baudino I) (US 5,927,277,
issued Jul. 27, 1999) and claims 13 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Baudino I and Baudino (Baudino II) (US 6,210,417 B1,
issued Apr. 3, 2001). We have jurisdiction over this appeal under 35 U.S.C.
§ 6.

THE INVENTION
Appellants’ invention relates to an electrical stimulation system and
method for securing an electrical stimulation lead in position in a person’s
brain. Spec. 1, ll. 7-9 and figs. 4A and 4B.
Claims 1 and 9 are representative of the claimed invention and read as
follows:
1. An apparatus for securing an electrical stimulation lead
in position in a person’s brain, comprising:

a body configured to seat within a burr hole formed in the
person’s skull; and

a central elastic membrane coupled to the body and extending
across a central aperture of the body, the elastic membrane
comprising a plurality of pre-formed openings provided for
purposes of securing the lead in position within the brain after
implantation, each pre-formed opening penetrating through an
entire thickness of the elastic membrane, each pre-formed
opening being selectable for insertion of the lead into the brain,
each pre-formed opening being adapted to elastically expand as
the lead is inserted through the pre-formed opening and
positioned in the brain and also being adapted to elastically
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contract on the lead to secure the lead in position within the
brain after implantation.

9. A method for securing an electrical stimulation lead in
position in a person’s brain, comprising:

inserting an apparatus into a burr hole formed in the person’s
skull, a body of the apparatus configured to seat within the burr
hole, a central elastic membrane of the apparatus extending
across a central aperture of the apparatus body, the elastic
membrane comprising a plurality of pre-formed openings
provided for purposes of securing the lead in position within the
brain, each pre-formed opening penetrating through an entire
thickness of the elastic membrane, each pre-formed opening
being selectable for insertion of the lead into the brain, each
pre-formed opening being adapted to elastically expand to
receive the lead as the lead is inserted through the preformed
opening and positioned in the brain and being adapted to
elastically contract on the lead to secure the lead in position
within the brain after implantation; and

inserting the lead through a selected pre-formed opening and
positioning the lead within the brain, the selected pre-formed
opening elastically expanding as the lead is inserted through the
selected pre-formed opening and positioned in the brain, the
selected pre-formed opening elastically contracting on the lead
to secure the lead in position within the brain after implantation.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

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OPINION
The anticipation rejection based on Baudino I
Claims 1-8 and 17-20
Each of independent claims 1 and 17 requires a “central elastic
membrane” having pre-formed openings, “each pre-formed opening being
adapted to elastically expand as the lead is inserted through the pre-formed
opening.” App. Br., Claims Appendix. Appellants argue that the snap ring
34 of the device of Baudino I does not constitute the claimed “central elastic
membrane” of claims 1 and 17. App. Br. 8. Specifically, Appellants argue
that the snap ring 34 of Baudino I does not meet the Examiner’s dictionary
definition of a membrane (“a thin, pliable, and often porous sheet”). The
Examiner responds that because the snap ring 34 of Baudino I is thin and
pliable, the snap ring 34 constitutes a “central elastic membrane,” as called
for by claims 1 and 17.
At the outset, we note that when construing claim terminology in the
United States Patent and Trademark Office, claims are to be given their
broadest reasonable interpretation consistent with the specification, reading
claim language in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). In this case, Appellants’ Specification does not
expressly define the term “membrane” or otherwise indicate that this term is
used in a manner other than its ordinary and customary meaning. Like the
Examiner, we find that an ordinary and customary meaning of the term
“membrane” is “1 : a thin soft pliable sheet or layer.” MERRIAM WEBSTER’S
COLLEGIATE DICTIONARY (11th Ed. 2005). Furthermore, we find that an
ordinary and customary meaning of “pliable” is “supple enough to bend
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freely or repeatedly without breaking.” Id. Hence, because snap ring 34 of
Baudino I is squeezed and released during its operation, without breaking,
we find that it is “pliable,” and as such constitutes a “central elastic
membrane,” as called for by claims 1 and 17.
Appellants further argue that the serrated edges 37 and 39 of the snap
ring 34 of Baudino I are not capable of “elastically expand[ing] as the lead is
inserted” through the pre-formed opening. App. Br. 9. The Examiner
responds that the pre-formed openings (between edges 37 and 39) of
Baudino I are “capable of elastic expansion” and that “a recitation that an
element is ‘adapted to’ perform a function only requires the ability to so
perform.” Ans. 6.
At the outset, regarding apparatus claims 1 and 17, we agree with the
Examiner that pre-formed openings (between edges 37 and 39) of the elastic
membrane 34 of Baudino I need only be capable of elastically expanding as
a lead is inserted through the pre-formed opening. Ans. 6. See also
Advisory Action 2, mailed March 11, 2008 (hereafter “Advisory Action”).
Emphasis added. It is well established that features of an apparatus may be
recited either structurally or functionally, however, claims directed to an
apparatus must be distinguished from the prior art in terms of structure
rather than function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir.
1997). “[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). Therefore, as long as the snap ring of Baudino I is an elastic
membrane having pre-formed openings, wherein each pre-formed opening is
capable of elastically expanding as a lead is inserted through the pre-formed
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opening, the device satisfies the limitation of an “elastic membrane,” as
called for by independent claims 1 and 17.
In this case, because the snap ring 34 of Baudino I is squeezed to
create an open space between edges 37, 39 and then released so as to clamp
around lead 32 to hold it in place, it is our finding that Baudino I discloses
an elastic membrane (snap ring 34), having elastically expandable pre-
formed openings (between opposed edges 37 and 39). Baudino I, col. 5, ll.
1-14 and figs. 5-7. See also Ans. 3. As such, we agree with the Examiner
that because the pre-formed openings (between 37 and 39) in the elastic
membrane 34 of Baudino I is “capable of elastic expansion” it can also
elastically expand when a lead is inserted. See Advisory Action 2.
Lastly, Appellants argue that the Examiner relies on the theory of
inherency to allege anticipation by Baudino I of the above mentioned claim
limitation. Reply Br. 2. Specifically, Appellants appear to argue that lead
32 does not necessarily cause “elastic expansion” of arms 36 and 38 of
Baudino I. Reply Br. 3. However, as the Examiner correctly stated, “an
element [that] is ‘adapted to’ perform a function is not a positive limitation
but only requires the ability to so perform.” Advisory Action 2.
Accordingly, as long as the snap ring 34 of Baudino I is an elastic membrane
having pre-formed openings, wherein each pre-formed opening is capable of
elastically expanding as a lead is inserted through the pre-formed opening,
the device satisfies the limitation of an “elastic membrane,” as called for by
independent claims 1 and 17. Thus, for the reasons discussed above, we do
not find Appellants’ argument persuasive.
In conclusion, since the snap ring 34 of Baudino I is capable of elastic
expansion, the snap ring of Baudino I satisfies the limitations of an “elastic
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membrane,” having “pre-formed openings,” as called for by independent
claims 1 and 17. Accordingly, the rejection of claims 1 and 17 under 35
U.S.C. § 102(b) as anticipated by Baudino I is sustained.
Regarding the rejection of claims 2-8 and 18-20, Appellant does not
present any additional arguments. App. Br. 11. As such, the rejection of
claims 2-8 and 18-20 under 35 U.S.C. § 102(b) as anticipated by Baudino I
is likewise sustained.

Claims 9-12, 15, 16, and 21-23
Each of independent claims 9 and 21 discloses a method for securing
an electrical stimulation lead in position in a person’s brain that requires the
method step of “inserting the lead through a selected pre-formed opening.”
App. Br., Claims Appendix. Although we appreciate that Baudino I teaches
a method for securing an electrical stimulation lead in position in a person’s
brain (Baudino I, col. 5, ll. 19-25), we could not find any portion of Baudino
I, and the Examiner has not pointed to any portion of Baudino I, that teaches
“inserting the lead through a selected pre-formed opening.” Rather, in
Baudino I, the edges 37, 39 of snap ring 34 are released to clamp around
lead 32 to hold it in place. Baudino, col. 5, ll. 13-15. As such, Baudino I
does not teach all the limitations of independent claims 9 and 21 or their
respective, rejected dependent claims. Hence, the rejection of claims 9-12,
15, 16 and 21-23 under 35 U.S.C. § 102(b) as anticipated by Baudino I
cannot be sustained.

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The obviousness rejection over Baudino I and Baudino II
Claims 13 and 14
With respect to claims 13 and 14, the Examiner’s application of
Baudino II does not make up for the deficiencies in Baudino I as shown
above. As such, the rejection of claims 13 and 14 under 35 U.S.C. § 103(a)
as unpatentable over Baudino I and Baudino II likewise cannot be sustained.

DECISION
The decision of the Examiner is reversed as to claims 9-16 and 21-23
and affirmed as to claims 1-8 and 17-20.
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-IN-PART

mls

ST. JUDE MEDICAL NEUROMODULATION DIVISION
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