Ex Parte Kast et al

Board of Patent Appeals and Interferences

May 26, 2011

10836127 (B.P.A.I. May. 26, 2011)

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.
10/836,127 04/30/2004 John E. Kast 151P20369US01 7708
54228 7590 05/26/2011
IPLM GROUP, P.A.
POST OFFICE BOX 18455
MINNEAPOLIS, MN 55418
EXAMINER
KAHELIN, MICHAEL WILLIAM
ART UNIT PAPER NUMBER
3762
MAIL DATE DELIVERY MODE
05/26/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN E. KAST, JEFFREY J. CLAYTON,
and STEVE T. DEININGER
____________

Appeal 2009-012296
Application 10/836,127
Technology Center 3700
____________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
John E. Kast et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-24. We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM-IN-PART.
Appeal 2009-012296
Application 10/836,127

2
The Invention
The claimed invention is directed to mounting power sources for
implantable medical devices.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An implantable medical device, comprising:
a case having a battery cavity and an
electronics cavity;
electronic componentry contained within
said electronics cavity;
a battery contained within said battery
cavity, said battery being operatively coupled to
said electronic componentry;
a spacer situated in said case, said spacer
configured to support said battery around at least a
portion of a periphery of said battery away from an
inside surface of said case, said spacer allowing a
central portion of said battery to expand and
contract during charge and discharge cycles; and
a sealer filling in a portion of said battery
cavity, said spacer ensuring said sealer does not fill
an area proximate said central portion of said
battery.

The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Purdy US 4,041,956 Aug. 16, 1977
Cowdery US 4,399,819 Aug. 23, 1983
Byland US 5,456,698 Oct. 10, 1995
Davis US 5,741,313 Apr. 21, 1998

Appeal 2009-012296
Application 10/836,127

3

The Rejections
The following Examiner’s rejections are before us for review:
Claims 1, 2, 4-6, 13, 14, and 16-18 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Byland.
Claims 3 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Byland and Purdy.
Claims 7-11, 15, 19, and 21-23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Byland and Cowdery.
Claims 12 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Byland and Davis.

OPINION
Anticipation based on Byland
Appellants argue the patentability of claims 1, 2, 4-6, 13, 14, and 16-
18 as a group. App. Br. 11-13. As such, we select claim 1 as representative,
and claims 2, 4-6, 13, 14, and 16-18 stand or fall with claim 1.
We find Appellants’ contentions for patentability of claim 1 fail to
rebut the Examiner’s rejection because the contentions appear premised on a
misapprehension of the Examiner’s rejection. The Examiner found that the
battery cavity limitation is met by the inferior portion of the entire case of
the medical device 10, i.e., the portion below intermediate web 62. Ans. 3.
The Appellants’ arguments appear premised on the insulator cup 24 being
what the Examiner found to read on the battery cavity. App. Br. 12-13.
The Examiner’s findings can be illustrated with annotations to
Figure 1 of Byland and viewing Figure 4B and Figures 6A and 6C of Byland
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/836,127
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Appeal 2009-012296
Application 10/836,127

5
on the claimed spacer, supports a battery around its periphery. As depicted
in Figure 4B, cup 24 has a floor area for a battery defined by the outer edge
of the cup 24 and the cutout 70. As depicted in Figures 6A and 6B, the
shroud 26 has a back surface and thus the inferior portion of the shroud
reads on an inside surface of the case. Accordingly, the cup 24 is configured
to support the periphery of a battery and, because of its floor, cup 24 also
supports a portion of the battery away from the inside surface of the shroud
26, which was found by the Examiner to partially satisfy the claimed case
feature.
The Examiner further found that the claimed sealer encompasses the
lower spacer 20. Given that spacer 20 fits between the inside surface of
shroud 26 and the floor of cup 24 (see Figure 1, supra), the floor of cup 24
(spacer, claim nomenclature) ensures that the spacer 20 (sealer, claim
nomenclature) does not fill an area proximate the central portion of a battery
since the floor of cup 24 is between a surface of a battery and the surface of
the spacer 20 facing a surface of a battery.
Based on the foregoing, we sustain the Examiner’s rejection of claim
1 as anticipated by Byland. We sustain the anticipation rejection of claims
2, 4-6, 13, 14, and 16-18 as well, since we selected claim 1 as representative.
Obviousness based on Byland and Purdy
We find Appellants’ contentions for patentability of claims 3 and 20
fail to rebut the Examiner’s rejection because the contentions appear
premised on same misapprehension of the Examiner’s anticipation rejection
with Byland, in addition to misapprehending the Examiner’s utilization of
Purdy. The Examiner found that Byland discloses all of the claimed features
except for the insulator (upper insulator spacer 22, Byland’s nomenclature)
Appeal 2009-012296
Application 10/836,127

6
comprising polyimide and foam. Ans. 3-5. The Examiner found that Purdy
teaches using an insulator comprising polyimide and foam to provide “a
highly insulative and shock-resistant separator.” Ans. 6. Contrary to the
Appellants’ arguments (App. Br. 20), the Examiner did not utilize the
teachings of Purdy that pertain to the placement of the polyimide and foam
elements. Appellants’ arguments for patentability appear to be premised
upon the idea that in order to show obviousness of claimed subject matter,
the Examiner was required to incorporate the entire teaching, which included
the location or position, of Purdy’s polyimide and foam insulator into the
device of Byland. Such arguments do not sufficiently rebut the Examiner’s
rejection of obviousness since to justify combining reference teachings in
support of a rejection it is not necessary that a device shown in one reference
be physically inserted into the device shown in the other. See In re Keller,
642 F.2d 413, 425 (CCPA 1981).
Based on the foregoing, we will sustain the Examiner’s obviousness
rejection of claims 3 and 20.
Obviousness based on Byland and Cowdery
Appellants’ arguments for the patentability of claims 7-11, 15, 19, and
21-23 fail to rebut the Examiner’s rejection since the arguments are
premised upon the same misapprehension of the Examiner’s rejection of
anticipation of claim 1. As such, we sustain the Examiner’s obviousness
rejection of claims 7-11, 15, 19, and 21-23 since the rejection appears to be
based on changing the shape of Byland’s battery cavity to fit a rectangular
battery in lieu of the disclosed shape that would fit a semi-circular shaped
battery; to which, we recognize as no more than simple substitution of one
shape for another shape in order to accommodate a different shaped battery.
Appeal 2009-012296
Application 10/836,127

7
Obviousness based on Byland and Davis
We find Appellants’ arguments do rebut the Examiner’s rejection of
claims 12 and 24. The Examiner has not adequately responded to
Appellants’ argument that while providing foam to compensate for
tolerances is taught in Davis, how such addition of foam between the battery
and spacer would permit the battery to expand during charge cycles.
Accordingly, we do not sustain the Examiner’s obviousness rejection of
claims 12 and 24.

DECISION
The Examiner’s decision to reject claims 1, 2, 4-6, 13, 14, and 16-18
under 35 U.S.C. § 102(b) as anticipated by Byland is affirmed.
The Examiner’s decision to reject claims 3 and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Byland and Purdy is affirmed.
The Examiner’s decision to reject claims 7-11, 15, 19, and 21-23
under 35 U.S.C. § 103(a) as unpatentable over Byland and Cowdery is
affirmed.
The Examiner’s decision to reject claims 12 and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Byland and Davis is reversed.
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)(1)(iv) (2010).

AFFIRMED-IN-PART

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