Ex Parte KAST et al

Patent Trial and Appeal Board

May 23, 2016

13012957 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/012,957 01125/2011
64619 7590 05/25/2016
MEDTRONIC, INC. (NEURO/MRG)
710 MEDTRONIC PARKWAY NE
MS-LC340
MINNEAPOLIS, MN 55432-5604
FIRST NAMED INVENTOR
JohnE. KAST
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.
P0035736.0l I LG10137 7844
EXAMINER
MORALES, JON ERIC C
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
05/25/2016 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
medtronicdocketing@mrgs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN E. KAST, DARREN A. JANZIG,
CHRIS J. PAIDOSH, ANDREW J. THOM,
BRAD C. TISCHENDORF, and GERALD G. LINDNER
Appeal2014-006693
Application 13/012,957 1
Technology Center 3700
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-20. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Medtronic, Inc.
Br. 1.
Appeal2014-006693
Application 13/012,957
Claimed Subject Matter
Claim 1 is representative of the subject matter on appeal and is
reproduced below.
1. A medical device lead connector comprising:
two or more electrically conducting contact rings spaced
apart by electrically insulating glass material, the electrically
insulating glass material fixing the two or more electrically
conducting contact rings in axial alignment, wherein the
electrically insulating glass material comprises a coefficient of
thermal expansion (CTE) value about equivalent to or within
15% of the CTE associated with the two or more electrically
conducting contact rings.
Rejection
Claims 1-20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Janzig (US 2008/0208279 Al, pub. Aug. 28, 2008) and Frysz
(US 2001/0055716 Al, pub. Dec. 27, 2001).2
ANALYSIS
The Appellants do not present separate arguments for any particular
claim. See Br. 3-6. Thus, we decide the appeal on the basis of claim 1.
Claims 2-20 stand or fall with claim 1.
Independent claim 1 is directed to a medical lead connector and
recites "two or more electrically conducting contact rings spaced apart by
electrically insulating glass material" and "the electrically insulating glass
2 Although separated into different sections, claims 1-3, 5-11, and 14--20
(Final Act. 2), claims 4 and 12 (Final Act. 5), and claim 13 (Final Act. 5---6),
are all rejected under section 103(a) as unpatentable over Janzig and Frysz.
2
Appeal2014-006693
Application 13/012,957
material fixing the two or more electrically conducting contact rings in axial
alignment." Br., Claims App.
The Appellants argue that the Examiner's "rejection ... fails to
present any evidence that the Janzig glass insulators themselves fix adjacent
contact rings in axial alignment." Br. 4 (emphasis added). The Appellants
assert Janzig uses "additional braze material (element 176) to fix the contact
rings (elements 175,130) to the insulating ring (element 140)." Id. The
Appellants' argument is not persuasive.
At the outset, we note that claim 1 recites "the electrically insulating
glass material.fixing the two or more electrically conducting contact rings in
axial alignment." Br., Claims App. (emphasis added). The claim does not
recite "directly fixing," only "fixing," which, according to the Specification,
includes indirectly fixing. See Spec. 4, 11. 20-27 (explaining relationships
between elements may have intervening elements unless the term directly is
used to qualify a relationship as having no intervening elements); see, e.g.,
Spec. 15, 11. 25-27 (claiming "the glass insulating material directly bonds
the electrically conducting contact ring and the electrically conducting
spacer ring").
Additionally, the Appellants' argument does not fully address the
means by which Janzig discloses the bonding relationship between
electrically conducting rings 130 and electrically insulating rings 140.
Paragraph 42 of Janzig describes that "electrically conducting rings 130 and
electrically insulating rings 140 [are] welded or brazed together in axial
alignment." Final Act. 2 (citing Janzig, para. 42). As such, Janzig discloses
electrically insulating glass material 140 directly and indirectly bonding to
electrically conducting contact ring 130 in axial alignment.
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Appeal2014-006693
Application 13/012,957
The Appellants also argue that the Examiner's finding that Frysz
discloses "electrically insulating glass material comprises a coefficient of
thermal expansion (CTE) value about equivalent to or within 15% of the
CTE associated with the two or more electrically conducting contact rings"
(hereinafter "CTE relationship"), as recited by claim 1, is incorrect. See
Br. 5. Appellants assert that Frysz discloses a CTE relationship around 30%
and not about equivalent to or within 15%. See Br. 5. The Appellants'
contention is persuasive. But see Final Act. 3 (citing Frysz, para. 21, Tables
1-5).
However, the Examiner finds in the alternative that Janzig discloses
the CTE relationship of claim 1. See Office Communication associated with
the "Notice of Panel Decision from Pre-Appeal Brief Review," mailed
October 23, 2013 (hereinafter "Office Communication"); Ans. 6, 7. More
particularly, the Examiner finds:
that Janzig discloses that Glass CTE value is within 15% of
conducting element since, J anzig discloses that the insulating
material is made of glass and the conducting contact rings can be
made of titanium or platinum. It is known in the art that the CTE
of glass is around 9*10-6 m/m K, Titanium is 8.6*10-6 m/m K,
and platinum is 9. 0* 10-6 m/m K . . . . This makes the glass CTE
level equivalent to or within 15% of the conducting rings.
Office Communication (citations omitted). We determine that this finding is
supported by a preponderance of the evidence. We also note that the
Appellants do not dispute this finding. As such, the totality of the
Examiner's findings support a rejection where Janzig discloses all of the
subject matter of independent claim 1. Compare Final Act. 2-3, with Office
Communication and Ans. 6, 7. Moreover, we note that anticipation is the
epitome of obviousness. See In re Pearson, 494 F.2d 1399, 1402 (CCPA
4
Appeal2014-006693
Application 13/012,957
1974) (citation omitted); Jn re Fracalossi, 681 F.2d 792, 794 (CCPA 1982).
Hence, we determine that the Examiner's finding that Frysz discloses the
CTE relationship of claim 1 is a harmless error.
Thus, the Examiner's rejection of claims 1-20 as unpatentable over
Janzig and Frysz is sustained.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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