Ex Parte Boser et al

Patent Trial and Appeal Board

Feb 1, 2017

13209265 (P.T.A.B. Feb. 1, 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.
13/209,265 08/12/2011 Gregory A. Boser P0030139.USV5 9742
27581 7590
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
EXAMINER
ANTHONY, JESSICA LYNN
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
02/03/2017 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):
medtronic_crdm_docketing @ c ardinal-ip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY A. BOSER, KEVIN R. SEIFERT, and
GREG GARLOUGH
Appeal 2015-000306
Application 13/209,2651
Technology Center 3700
Before ANTON W. FETTING, BIBHU R. MOHANTY, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s rejection of claims 1—3, 5—7, and 9.2 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellants’ claimed invention “relates to implantable medical devices
and, more particularly, to implantable medical leads.” (Spec. 1,11. 15—16.)
1 According to Appellants the real party in interest is Medtronic, Inc.
(Appeal Br. 2.)
2 Claim 10 was canceled by amendment entered December 2, 2013.
Appeal 2015-000306
Application 13/209,265
Claim 1 is the sole independent claim on appeal. It recites (emphasis
added):
1. A medical electrical lead comprising:
a lead body that comprises one or more jacketed
conductors;
wherein a jacketed conductor comprises a conductive
element and a polymeric jacket and wherein the jacket comprises
one or more polymeric covers including a first cover of an
extruded polymer directly contacting the conductive element;
and
wherein the conductive element comprises a coil having a
final outer diameter and which, unconstrained, exhibits elastic
springback to a diameter greater than the final outer diameter
and wherein the polymeric jacket constrains the coil to the final
outer diameter.
REJECTIONS
Claims 1 and 2 are rejected under 35 U.S.C. §§ 102(a) and 102(e) as
anticipated by Kuzma (US 2006/0265037 Al, pub. Nov. 23, 2006).
Claims 3 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable
in view of Kuzma, Zikorus (US 2006/0085054 Al, pub. Apr. 20, 2006), and
Kaplan (US 2006/0089691 Al, pub. Apr. 27, 2006).
Claims 5, 6, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Kuzma, Zikorus, Kaplan, and Myers (US 5,358,516,
iss. Oct. 25, 1994).
ANALYSIS
Kuzma discloses an implantable lead. (Kuzma, Abstract.) In
particular, Kuzma discloses a first step in “making a multi-helix lead body”
by “coating a lead wire with polyurethane to a desired thickness.” {Id. 123.)
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Appeal 2015-000306
Application 13/209,265
Kuzma further discloses that “a wire 100 having a desired diameter dl is
drawn through liquid polyurethane 102, or equivalent coating material, in
order to apply a coating 104 of polyurethane to the wire 100, thereby
forming coated wire 106. When coated, the wire and coating have a
combined diameter d2.” (Id.) The coating has a thickness d3. (Id. )
Therefore, assuming a uniform coating, “the thickness d3 is thus equal to
(d2-dl)/2.” (Id.)
In the next step, the “multi-helix lead body 110 is formed by winding
a plurality of coated wires 106 on a mandrel 112.” (Id. 124.) The helically
wound coated wires have a “wire spacing P (also referred to as the wire
pitch).” (Id.)
In the final step, the polyurethane coating of the coated wires is fused
by applying heat. (Id. 126.) As a result of the heating,
[t]he desired wire spacing or pitch P is maintained in the multi­
helix wire-wound tubing 130 that existed in the unfused multi­
helix body 110. The outside diameter D3 of the fused tubing 130
is slightly reduced from the outside diameter Dl of the unfused
body 110. Similarly, the inside diameter D4 of the fused tubing
130 is slightly increased from the inside diameter D2 of the
unfused body 110.
(Id. 128.)
The Examiner finds that
[sjince Kuzma specifies that “diameter D3 of the fused tubing
130 is slightly reduced from the outside diameter Dl of the
unfused body 110” and that the thermal processing procedure or
annealing produces a more stable and stiff design such that wire
spacing and pitch of the coil formed when tightly wound and
constrained on the mandrel is maintained as “that existed in the
unfused multi-helix body 110”, it is inherent that the coil of
Kuzma exhibits elastic spring back to a diameter greater than
D3 without the thermal processing procedure and the purpose
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Appeal 2015-000306
Application 13/209,265
of the jacket 104 after thermal processing is to constrain the
coiled construction to the desired final outer diameter D3 via
the formation of the more stable and completely sealed fused
tube 130.
(Answer 6.)
Appellants argue that
there is no indication of any springback of the coil 100 in
conjunction with the cited Figures and text. Instead, the inner
diameter of the jacket increases while the outer diameter of the
jacket decreases. No springback or diameter change whatsoever
of the coil 100 is discussed in conjunction with heating/fusing
the jacket.
(Appeal Br. 4—5.) Appellants further argue “that the diametric changes in
Kuzma are entirely due to plastic deformation due to heating of the
polymeric jacket. There is no indication that the coil wire 100 changes
diameter at all.” (Reply Br. 4.)
We agree with Appellants. Neither the Examiner nor the Appellants
point to any suggestion in Kuzma that the diameter D1 of the wire is altered
by the heating process and it is specifically stated that the pitch P is
maintained. (See Kuzma 128.) Thus, it appears that the reduction in size of
the outside diameter corresponds to the reduction in size of D3. This would
similarly account for the increase in size of inside diameter D4. (See id.', see
also Reply Br. 4.)
Therefore, we are persuaded that the Examiner erred in finding that “it
is inherent that the coil of Kuzma exhibits elastic spring back to a diameter
greater than D3 without the thermal processing procedure” and, therefore, in
rejecting claims 1 and 2. (See Answer 6.)
With regard to dependent claims 3, 5—7, and 9, rejected under
§ 103(a), the Examiner does not rely on the additional references to cure the
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Application 13/209,265
deficiency of Kuzma discussed above. Therefore, for the reason discussed
above, we are persuaded that the Examiner erred in rejecting dependent
claims 3, 5—7, and 9.
DECISION
The Examiner’s rejection of claims 1 and 2 under 35 U.S.C. §§ 102(a)
and 102(e) is reversed.
The Examiner’s rejections of claims 3, 5—7, and 9 under 35 U.S.C.
§ 103(a) are reversed.
REVERSED
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