Ex Parte Dahl et al

Patent Trial and Appeal Board

Sep 28, 2016

12464655 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/464,655 05/12/2009
45458 7590 09/30/2016
SCHWEGMAN LUNDBERG & WOESSNER/BSC
POBOX2938
MINNEAPOLIS, MN 55402
Scott Dahl
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.
279.M91US1 2006
EXAMINER
PHAM, MINH DUC GIA
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT DAHL, JOHN H. TANGREN, KEVIN J. ELY,
DOUGLAS J. BRANDNER, and WILLIAM J. LINDER
Appeal2014-006027
Application 12/464,655
Technology Center 3700
Before JOSEPH A. FISCHETTI, BART A. GERSTENBLITH, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-9 and 11-21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Br.," filed Oct. 28,
2013), the Examiner's Answer ("Ans.," mailed Feb. 14, 2014), and the Final
Office Action ("Final Act.," mailed Apr. 24, 2013).
2 Appellants identify the real party in interest as Cardiac Pacemakers, Inc.
Br. 3.
Appeal2014-006027
Application 12/464,655
CLAIMED SUBJECT MATTER
Appellants' invention "relates generally to medical devices and, more
particularly, to medical devices including a liquid filled housing."
Spec. 1:8-10. Claims 1, 20, and 21 are the independent claims on appeal.
Claim 1 is illustrative of the subject matter on appeal.
1. An implantable medical device comprising:
[a] a hermetically sealed metal housing defining an
interior volume;
[b] a component module disposed within the interior
volume, the component module comprising a circuit board, the
component module displacing a portion of the interior volume;
and
[ c] a liquid composition disposed within the housing,
the liquid composition filling at least 80% of the interior volume
not displaced by the component module;
[ d] the liquid composition comprising a liquid material
with a dielectric strength of greater than about 0.5 kV/mm.
Br. 19, Claims Appendix (with added bracketed matter).
REJECTIONS
The following rejections are before us for review on appeal.
I. Claims 1-5 and 11-21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Gauglitz3 and Wotherspoon.4
II. Claims 6-9 and 11-13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Gauglitz, W otherspoon, and
Tousignant. 5
Final Act. 2-9.
3 Gauglitz et al., US 2005/0119709 Al, published June 2, 2005.
4 Wotherspoon, US 2008/0143619 Al, published June 19, 2008.
5 Tousignant, US 5,411,077, issued May 2, 1995.
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Application 12/464,655
ANALYSIS
Rejection I
Independent claims 1, 20, 21 and dependent claims 2-5 and 11-19
As an initial matter, we note that Appellants argue claims 1-5 and 11-
21 as a group. Br. 10. We select claim 1 as being representative. Thus,
claims 2-5 and 11-21 stand or fall with independent claim 1. See C.F .R.
§ 41.37(c)(l)(iv).
The Examiner maintains that the combination of Gauglitz and
Wotherspoon would have rendered the subject matter of the above claims
obvious to a person of ordinary skill in the art at the time of Appellants'
invention. Ans. 2-3. In rejecting independent claim 1, the Examiner finds
that Gauglitz discloses elements [a] and [b] of the claimed device, but is
deficient as to elements [c] and [d]. Final Act. 3. The Examiner finds that
the teachings of W otherspoon remedy those deficiencies. Id. And 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
implantable medical device as taught by Gauglitz, with a liquid
composition filling the residual volume as taught by
W otherspoon, since such a modification would provide the
predictable results of an implantable medical device with
increased volts-per-mil breakdown strength of circuit elements
and adjacent wires and circuit traces housed within an
implantable medical device by using dielectric fluids.
Id. at 4.
Appellants do not dispute the Examiner's findings as to any of the
claimed elements [a]-[d]. Rather, Appellants raise several arguments
challenging the proposed combination. We address each in the order
presented in Appellants' brief.
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Application 12/464,655
First, Appellants argue that there is no rationale for one skilled in the
art to combine Gauglitz and Wotherspoon. Br. 10. In support of this
argument, Appellants assert that the liquid in Figure 2 of W otherspoon,
relied upon by the Examiner, is water, and
one of skill in the art would not be motivated to fill the housing
containing electronic components with water because of the risk
of corrosion and subsequent failure. Indeed, filling the housing
that has the electronic components with water would defeat the
purpose of having the housing be hermetically sealed.
Id. at 11.
We are not persuaded by Appellants' argument because W otherspoon
teaches that "the electronic circuit 3 [in Figure 2] is hermetically sealed
within a water tight seal 4, which is disposed inside the balloon or bag 1"
(Wotherspoon i-f 24; see Ans. 4), thus excluding passage of water to risk
corrosion or device failure. Moreover, Appellants do not challenge the
Examiner's actual rationale for combining Gauglitz and Wotherspoon, found
in the explicit teachings of Wotherspoon. Ans. 4 (citing Wotherspoon il 18).
Wotherspoon discloses that "[t]he fluid comprises a liquid which is
substantially electrically insulating .... [and i]n the specific example
illustrated, the fluid is water but other liquids and gases may be used."
Wotherspoon i-f 18. And "Gauglitz discloses using a gaseous mixture to
provide improved insulation properties for an implantable device" (Final
Act. 3) by increasing the dielectric strength of the environment within the
implantable device. Ans. 4.
Second, Appellants contend that the proposed combination would
render Gauglitz unsatisfactory for its intended purpose by inhibiting
Gauglitz's functionality. Br. 11. According to Appellants, the area with
electronics in W otherspoon is not filled with a liquid because it is the
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Application 12/464,655
balloon or bag that is filled with a liquid, and "if the housing of Gauglitz was
surrounded by a bag functioning as an 'electrically insulating substrate' as
taught in W otherspoon, the housing of Gauglitz would necessarily be
insulated from creating an electrical connection with an organ or
tissue." Id. at 13.
Appellants' contention however relies on a false premise, because
"the Examiner identified bag 1 [of W otherspoon] as the housing, and the
watertight seal 4 function[ing] as a layer to protect electronic module 3 from
the fluid within the bag." Ans. 5; see also Final Act. 3. And as the
Examiner observes, W otherspoon discloses that "the antenna or electrode 2
is printed on the interior surface of the bag 1 and is connected to the
electronic circuit 3 by a connection passing through and sealed to the water
tight seal 4 so as to preserve water tightness" (Wotherspoon i-f 24;
see Ans. 6), thus providing an electrical connection. Furthermore, claim 1
does not require the area with electronics to be filled with liquid. Although
the claim requires a component module (electronics) and a liquid
composition disposed within the housing, with each displacing a portion of
the interior volume, there is no requirement that the component module be
immersed within the liquid composition.
Additionally, Appellants' argument that the combination would render
Gauglitz inoperable for its intended purpose also fails because the argument
appears to be based on the bodily incorporation of the features of
W otherspoon into the Gauglitz system, which is not the test for obviousness.
See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary
that the inventions of the references be physically combinable to render
obvious the invention under review."); In re Nievelt, 482 F.2d 965
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(CCPA 1973) ("Combining the teachings of references does not involve an
ability to combine their specific structures."). Rather, the test for
obviousness is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. The Examiner does not
propose any bodily incorporation of W otherspoon into Gauglitz or vice
versa.
Third, Appellants' argument-that W otherspoon teaches away
because it discloses that "[ s ]uch an arrangement may be more suitable for
use as a medical or other implant as sharp edges may be avoided and the
implant may be made semi-flexible and soft" (Br. 14 (citing Wotherspoon
i-f 24 (emphasis omitted))}-is similarly unpersuasive, at least because
Appellants do not point to any passage in W otherspoon that criticizes,
discredits, or otherwise discourages the use of metal housings.
See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (A teaching away occurs
when a reference discourages one skilled in the art from following the
claimed path, or when the reference would lead one skilled in the art in a
direction divergent from the path that was taken by the applicant.); see also
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (The prior art's mere
disclosure of more than one alternative does not constitute a teaching away
from any of the alternatives when the disclosure does not criticize, discredit,
or otherwise discourage the solution claimed.). Even though sharp edges
may exhibit certain disadvantages for W otherspoon' s arrangement, the
Examiner finds that Gauglitz's housing may also be fabricated of titanium or
titanium alloy. See Ans. 7 (citing Gauglitz i-f 21 ). Appellants do not address
this finding. A given course of action often has simultaneous advantages
and disadvantages, and this does not necessarily obviate any or all reasons to
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Application 12/464,655
combine teachings. See Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340,
1349 (Fed. Cir. 2000) ("The fact that the motivating benefit comes at the
expense of another benefit, however, should not nullify its use as a basis to
modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another."). We find a preponderance of the evidence weighs in favor of the
Examiner's conclusion of obviousness.
In view of the foregoing, we sustain the rejection of independent
claim 1, as well as claims 2-5 and 11-21, which fall with claim 1.
Dependent claims 6--9 and 11-13
Appellants challenge the rejection of claims 6-9 and 11-13 as
unpatentable over Gauglitz, Wotherspoon, and Tousignant because
Tousignant "has nothing to do with implantable medical devices and
therefore is non-analogous art." Br. 16. In particular, Appellants argue that
it is not apparent how a thermal transfer system has any reasonable bearing
on implantable medical devices. Id. at 17. "Indeed, how could a condenser
'at a location remote from the heat source' be used in the context of an
implantable medical device? Tousignant is not directed towards
implantable medical devices nor is Tousignant reasonably pertinent to the
particular problem." Id.
Whether a reference in the prior art is "analogous" is a fact question.
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v.
Dennison Mfg., 810 F.2d 1561, 1568 n.9 (Fed. Cir. 1987).
A reference is reasonably pertinent if, even though it may be in
a different field from that of the inventor's endeavor, it is one
which, because of the matter with which it deals, logically would
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have commended itself to an inventor's attention in considering
his problem. Thus, the purposes of both the invention and the
prior art are important in determining whether the reference is
reasonably pertinent to the problem the invention attempts to
solve. If a reference disclosure has the same purpose as the
claimed invention, the reference relates to the same problem, and
that fact supports use of that reference in an obviousness
rejection.
In re Clay, 966 F.2d at 659.
Here, the Examiner finds that Tousignant is not within the field of the
inventor's endeavor, but is reasonably pertinent to the particular problem
with which the inventor is involved. See Ans. 8-9. We agree. Appellants'
Specification explains the one problem or disadvantage of filling the residual
volume of a medical device housing with a gas or solid is the contribution to
degradation and stresses to the electronic components that lead to decreased
service life and failure of the medical device. Spec. 3:9-17. Thus,
Appellants' invention "includes medical devices where the residual volume
is filled with a liquid composition," which offers various advantages. Id. at
3:18-22. Notably, "liquid[s] can serve to evenly distribute pressure
throughout the interior volume, thereby minimizing stresses on individual
components" (id. at 3 :23-25), "evenly disperse thermal energy originating
inside or outside of the housing .... [and] effectively provide a heat sink
within the medical device in order to safely absorb and then dissipate any
thermal energy that may exist or form within the housing of the medical
device" (id. at 4: 1---6).
Tousignant discloses that placing thermal transfer liquid in a
component housing adjacent to the integrated circuits is particularly useful
as a heat sink for microelectronic components, acts as a shock absorber for
the circuits, and serves to efficiently cool and maintain the circuits at a stable
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operating temperature enabling each component to function properly. See
Tousignant 3:52---64, 5:28--48.
Accordingly, Tousignant's thermal transfer apparatus arrangement is
reasonably pertinent to the particular problem with which Appellants were
involved because it teaches the use of a thermal transfer liquid within an
electronic component housing to achieve the above-mentioned advantages.
One of ordinary skill in the art would have considered Tousignant when
seeking to overcome the problem pertaining to the use of gases and solids in
an electronic component housing. Thus, because of the matter with which it
deals, Tousignant logically would have commended itself to Appellants'
attention in considering the problem.
Therefore, we sustain the rejection of claims 6-9 and 11-13, which
were argued together. See App. Br. 16.
DECISION
The Examiner's decision to reject claims 1-9 and 11-21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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