Ex Parte Chen et al

Patent Trial and Appeal Board

May 14, 2018

14209799 (P.T.A.B. May. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/209,799 03/13/2014
71996 7590 05/16/2018
SHUMAKER & SIEFFERT, P.A
1625 RADIO DRIVE, SUITE 100
WOODBURY, MN 55125
FIRST NAMED INVENTOR
Xingfu Chen
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.
1123-094US01/P41397.USU2 3147
EXAMINER
LEVICKY, WILLIAM J
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
05/16/2018 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):
pairdocketing@ssiplaw.com
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XINGFU CHEN, BERNARD Q. LI, RICHARDT. STONE,
DALE F. SEELEY, and ALAN SHI 1
(APPLICANT: Medtronic, Inc.)
Appeal2017-005553
Application 14/209, 799
Technology Center 3700
Before JEFFREY N. FREDMAN, JOHN G. NEW, and
RICHARD J. SMITH, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a medical
device system. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is Medtronic, Inc. of
Minneapolis, Minnesota, and Medtronic plc of Dublin, Ireland, the ultimate
parent entity of Medtronic, Inc. (Appeal Br. 3.)
Appeal2017-005553
Application 14/209,799
STATEMENT OF THE CASE
Background
"Medical electrical stimulation devices ... may deliver electrical
stimulation therapy to a patient via implanted electrodes .... an electrical
stimulation device may include an implantable electrical stimulation
generator and one or more implantable leads carrying electrodes." (Spec.
ii 3.)
Claims on Appeal
Claims 1-6, 8-10, 21, and 22 are on appeal. (Claims Appendix,
Appeal Br. 21-23.) Claim 1, the only independent claim on appeal, is
illustrative and reads as follows (emphasis added):
Claim 1: A medical device system comprising:
a lead including an electrically conductive lead wire;
an electrode electrically coupled to the lead wire, the
electrode including a first portion and a second portion, wherein
the first portion defines an exposed outer surface of the electrode
and is bonded to the second portion along a first interface,
wherein the second portion is electrically and mechanically
coupled to the lead wire along a second interface different from
the first interface via welding to couple the lead wire to the
electrode, wherein the medical device system is configured to
conduct an electrical signal between the lead wire and exposed
outer surface of the first portion via the second portion; and
an electrically insulating material covering an outer
surface of the second portion, and
wherein the first portion is formed from a first material
having a first composition, and the second portion is formed from
a second material having a second composition different from
the first composition.
(Appeal Br. 21.)
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Appeal2017-005553
Application 14/209,799
Examiner's Rejections
1. Claims 1, 2, 5, 6, 8, 10, 21, and 22 stand rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Cole2 and McDonald. 3 (Final Act.
10-13.)4
2. Claims 3 and 4 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Cole, McDonald, and Zhou. 5 (Id. at 13.)
3. Claim 9 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Cole, McDonald, and Janzig. 6 (Id. at 13-14.)
DISCUSSION
Issue
Whether a preponderance of evidence of record supports the
Examiner's rejections under 35 U.S.C. § 103(a).
Analysis
The Examiner's rejections rely on Cole as teaching all of the
limitations of claim 1, except that "Cole does not disclose further comprising
an electrically insulating material covering the outer surface of the second
portion."7 (Final Act. 11.) For example, the Examiner finds that Cole
teaches a first portion 36 and a second portion 112 of an electrode, a wire or
conductor 34 coupled to second portion 112, and wherein the first portion 36
2 Cole, US 7,856,707 B2, issued Dec. 28, 2010.
3 McDonald, US 2011/0130803 Al, pub. June 2, 2011.
4 Office Action dated April 21, 2016.
5 Zhou, US 7,666,523 B2, issued Feb. 23, 2010.
6 Janzig et al., US 2011/0270330 Al, pub. Nov. 3, 2011 ("Janzig").
7 Claim 1 recites "an outer surface" not "the outer surface" of the second
portion. (Appeal Br. 21.)
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Appeal2017-005553
Application 14/209,799
defines an exposed outer surface of the electrode (id. at 10), as illustrated in
Figures 18 and 19 of Cole:
Figure 18 Figure 19
Figures 18 and 19 above illustrate a portion of a medical device lead.
As for McDonald, the Examiner finds that:
McDonald teaches that it is known to use an electrically
insulating material covering the outer surface of the second
portion such that the outer surface does not define an exposed
surface of the second portion . . . as set forth in Figure 5 and
Paragraph [0060] to provide reducing the risk of bums or other
tissue damage.
(Final Act. 11.)
Figure 5 of McDonald is illustrated below:
FIG. 5
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Appeal2017-005553
Application 14/209,799
Figure 5 above illustrates an insulator 510 between an inner cylinder
300 and an outer cylinder 400. (McDonald i-f 61.)
The Examiner concludes that:
It would have been obvious to one having ordinary skill in the art
at the time the invention was made to modify the system as taught
by Cole, with an electrically insulating material covering the
outer surface of the second portion [112] such that the outer
surface does not define an exposed surface of the second portion
. . . since such a modification would provide the predictable
results of reducing the risk of bums or other tissue damage.
(Final Act. 11-12.)
Appellants argue that the portion of McDonald cited by the Examiner
"merely describes that the insulator 510 may be useful in electrically
separating two adjacent cylinders. Nowhere does McDonald describe that
the insulator 510 is provided between the inner cylinder 3 00 and outer
cylinder 400 or otherwise to reduce the risks of bums or other tissue
damage." (Appeal Br. 14.) Moreover, according to Appellants, "it appears
that coupling 112 is describ[ed] by Cole as being in electrical contact with
both the contact 36 and the conductor 34, the outer surface of coupling 112
and contact 36 forming an electrode surface." (Id. at 15.)
We find that Appellants have the better position. Moreover, the
Examiner bears the initial burden of establishing a prima facie case of
obviousness and, on this record, has not done so. See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). In particular, the Examiner fails to
provide a persuasive "reason that would have prompted a person of ordinary
skill in the relevant field to combine the elements in the way the claimed
new invention does." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
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Appeal2017-005553
Application 14/209,799
The Examiner's rejection is premised on the positions that (1) "it
would be known [based on McDonald's teachings] to at least partially cover
an outer surface of Cole, portion 112, with an insulator which provides the
predictable results of reducing the risk of bums or other tissue damage"
(Advisory Action dated Aug. 3, 2016, at 4), and that (2) "covering portion
112 would force the current and temperature to spread to the surrounding
area 36 instead of it primarily being dissipated in the region (112) directly
adjacent to the conductor" (Ans. 4). While it may be true that covering an
outer surface of Cole with an insulator would reduce the risk of bums or
other tissue damage, and force current and temperature to spread to area 36,
the Examiner points to no persuasive evidence that would suggest such a
modification to the medical device system of Cole. As Appellants argue,
there is "no description in McDonald that the insulator 510 is employed to
cover an outer surface of an electrode to reduce the risk of bums or other
tissue damage," and further that "the Examiner has failed entirely to provide
any support for the conclusion that 'covering portion 112 would force the
current and temperature to spread to the surrounding area 3 6 instead of it
primarily being dissipated in the region (112) directly adjacent to the
conductor."' (Reply Br. 4, 7.)
Merely because of person of ordinary skill in the art could provide an
insulating material to cover an outer surface of the second portion 112 of
Cole, does not establish a persuasive reason that would have prompted a
person of ordinary skill in the art to do so, particularly where Cole appears to
be using portion 112 as an electrode surface without any indicated desire to
insulate portion 112, and McDonald uses insulator 510 as an electrical
insulator between inner and outer cylinders. See Belden Inc. v. Berk-Tek
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Appeal2017-005553
Application 14/209,799
LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) ("obviousness concerns whether
a skilled artisan not only could have made but would have been motivated to
make the combinations or modifications of prior art to arrive at the claimed
invention.").
Accordingly, the rejection of independent claim 1 is reversed. The
rejection of claims 2, 5, 6, 8, 10, 21, and 22, and the rejections of claims 3,
4, and 9, are reversed because all of those claims depend, directly or
indirectly, from claim 1. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir.
1988).
Conclusions of Law
A preponderance of evidence of record fails to support the Examiner's
rejections of claims 1-6, 8-10, 21, and 22 for obviousness.
SUMMARY
We reverse the rejections of all claims on appeal.
REVERSED
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