Ex Parte Janzig et al

Patent Trial and Appeal Board

Sep 28, 2016

13088913 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/088,913 04/18/2011
64619 7590 09/30/2016
MEDTRONIC, INC (NEURO/MRG)
710 MEDTRONIC PARKWAY NE
MS-LC340
MINNEAPOLIS, MN 55432-5604
FIRST NAMED INVENTOR
Darren A. Janzig
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.
P0036277.02 I LG10137 9473
EXAMINER
BERTRAM, ERIC D
ART UNIT PAPER NUMBER
3766
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):
medtronic _neuro _ docketing@cardinal-ip .com
ptodocketing@mrgs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARREN A. JANZIG, ANDREW J. THOM,
CHRIS J. PAIDOSH, BRAD C. TISCHENDORF, and
GERALD G. LINDNER
Appeal2015-001305
Application 13/088,913 1
Technology Center 3700
Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-7 under 35 U.S.C. § 103(a) as being unpatentable over
Janzig2 and Floyd. 3 Final Act. 4 (mailed Jan. 16, 2014). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify "Medtronic, Inc." as the real party in interest. Br. 3
(filed June 4, 2014).
2 Janzig et al., US 2008/0208278 Al, pub. Aug. 28, 2008, hereinafter
"Janzig."
3 Floyd et al., US 2007/0179627 Al, pub. July 15, 2010, hereinafter "Floyd."
Appeal2015-001305
Application 13/088,913
CLAIMED INVENTION
The claimed invention relates to diffusion bonded lead connectors,
and in particular, hermetic lead connectors that have contact portions
separated by an insulating ring and joined together with an interface bond on
an atomic level. Spec. 2:8-10. Claim 1, the sole independent claim, is
representative of the subject matter on appeal.
1. A medical device lead connector comprising:
electrically conducting contact rings spaced apart by an
electrically insulating ring and in axial alignment, and the
electrically conducting contact ring and the insulating ring
having an interface bond on an atomic level.
ANALYSIS
As an initial matter, we note that Appellants argue claims 1-7 as a
group. Br. 5-14. We select claim 1 as being representative. Thus,
dependent claims 2-7 stand or fall with independent claim 1. See C.F .R.
§ 41.37(c)(l)(iv).
In rejecting independent claim 1 as obvious over Janzig and Floyd, the
Examiner finds that J anzig discloses all the claimed elements except that
"Janzig is silent as to bonding the contact ring and insulating ring using a
diffusion bond." Final Act. 4. The Examiner relies on the teachings of
Floyd to show that "diffusion bonding is known in the art for producing a
seal between lead components, and is considered equivalent to other types of
bonding, of which brazing could be included (par. 0012)." Id. Thus, the
Examiner concludes that it would have been obvious to a skilled artisan at
the time of Appellants' invention "to substitute the diffusion bond[ing
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Appeal2015-001305
Application 13/088,913
technique taught by Floyd] for the brazing process in order to produce the
predictable results of creating a seal between lead components." Id.
Appellants do not dispute the Examiner's findings supra, but
variously argue that "the cited references do not teach diffusion bonding of
dissimilar materials." Br. 5, 9-14. We do not find this argument to be
persuasive at least because the test for obviousness is not whether the
claimed invention is expressly suggested in any one or all of the references,
but whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover,
the mere existence of differences between the prior art and the claim does
not establish nonobviousness. See Dann v. Johnston, 425 U.S. 219, 230
(1976). The relevant question in considering obviousness is not whether the
claimed invention is different from the prior art but rather "whether the
difference between the prior art and the subject matter in question is a
difference sufficient to render the claimed subject matter unobvious to one
skilled in the applicable art." Dann, 425 U.S. at 228 (internal quotations and
citations omitted). Indeed, the Supreme Court made clear in KSR that when
considering obviousness, "the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Here, the Examiner is arguing that it would have been
obvious to one of ordinary skill in the art to utilize a known diffusion
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Application 13/088,913
bonding technique instead of welding to join the claimed elements, given
what Janzig and Floyd disclose.
Appellants contend that the rejection of record cannot be sustained
because "[t]he Examiner has failed to clearly articulate any reason why a
person of skill in the art would combine the teachings of J anzig and Floyd."
Br. 6. In support of this contention, Appellants assert that:
The Examiner fails to recognize two important things: 1) the
technological differences between an electrically conductive
material and an electrically insulative material; and 2) the
technological differences between welding, brazing, and
diffusion bonding. As discussed in more detail below, a skilled
artisan would have, however, recognized both that electrically
conductive materials and electrically insulating materials are
quite distinct, and that the methods of welding, brazing and
diffusion bonding are quite distinct. Despite the clear distinctions
in the material used and methods of welding, brazing and
diffusion bonding, the Examiner asserts that "it would have been
obvious to one or ordinary skill in the art at the time of the
applicant's invention to substitute the diffusion bond [of Floyd]
for the brazing process [of Janzig] in order to produce the
predictable result of creating a seal between lead components."
Id. at 7. Appellants conclude that the Examiner "has made a clear error in
considering the termination sleeve and the electrode of Floyd to be
comparable to the dissimilar materials of the electrically conducting contact
ring and the insulating ring recited in the pending claims." Id.
We are not persuaded of error by Appellants' contention because the
Examiner considers those differences in reaching the conclusion of
obviousness. The Examiner finds that Janzig discloses a method of forming
a hermetic medical device lead connector comprising the claimed lead
components, by using a welding technique. See Final Act. 4 (citing Janzig
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Application 13/088,913
i-fi-150-56). Janzig also discloses that "[t]he lead connector 105 can be
formed by any useful method." Janzig i150.
In the same field of endeavor, the Examiner finds that Floyd expressly
discloses "that welding is equivalent to and/or interchangeable with
diffusion bonding in the art of bonding lead components." Answer 3
(mailed Aug. 19, 2014); see also Final Act. 4 (citing Floyd i-f 12). According
to Floyd,
[ w ]hile laser spot welding represents an exemplary technique to
attach the termination sleeve to the electrode, it should be
recognized that any of several other suitable techniques can
instead be employed. Such other techniques include, but are not
limited to, other types of welding, crimping, diffusion bonding,
capture with threaded or non-threaded fasteners, and the use
conductive adhesives.
Floyd i-f 12.
The Examiner's proposal to replace the bonding technique of Janzig
with the diffusion bonding technique taught by Floyd involves no more than
the simple substitution of one known element for another and the mere
application of a known technique to a piece of prior art in the same field of
endeavor. But Appellants present no persuasive technical reasoning to
explain why the Examiner's motivation is insufficient, or why the proposed
modification of J anzig to include the diffusion bonding technique disclosed
in Floyd is more than the substitution of one known element for another,
yielding predictable results. We find nothing unpredictable in replacing one
known bonding technique with another within the same field of endeavor.
Additionally, in response to Appellants' arguments against the
combination, the Examiner asserts that in view of the disclosures of the
references, "one of ordinary skill in the art would find it obvious to use, or at
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Appeal2015-001305
Application 13/088,913
least try, diffusion bonding between two lead components wherever
brazing/welding was previously used, since Floyd makes it quite clear that
they are interchangeable bonds." Answer 3. Appellants do not respond to
this assertion. A person of ordinary skill in the art would have known of the
various forms of joining lead components, as taught by Floyd. And, in our
view, it would have been obvious to try any one of these finite bonding
techniques, each of which had a reasonable expectation of success.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill in the art has good reason to
pursue the known options within his or her technical grasp. If
this leads to the anticipated success, it is likely the product is not
of innovation but of ordinary skill and common sense.
KSR, 550 U.S. at 421. On the record before us, the preponderance of
the evidence weighs in favor of the Examiner's conclusion of
obviousness. Accordingly, we sustain the rejection of independent
claim 1, as well as claims 2-7, which fall with claim 1.
DECISION
The decision of the Examiner to reject claims 1-7 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)(l )(iv).
AFFIRMED
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