Ex parte Kraska

Board of Patent Appeals and Interferences

Aug 29, 2000

08263700 (B.P.A.I. Aug. 29, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT E. KRASKA
__________
Appeal No. 1997-3513
Application 08/263,700
__________
ON BRIEF
__________
Before CALVERT, PATE, and JENNIFER D. BAHR, Administrative
Patent Judges.
PATE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s refusal to allow
claims 8, 10, 16, 18 and 19 as amended after final rejection.
These are the only claims remaining in the application.
Appeal No. 1997-3513
Application No. 08/263,700
2
The claimed invention is directed to a hermetic seal for
a battery for use in an implanted medical device. With such a
device, it is of some importance that the battery remain
sealed and not leak electrolytic material into contact with
the user’s body. Appellant provides such a seal by placing a
smooth spherical member having an R hardness of about 55 inc
an annealed stainless steel electrolytic-filling passageway.
Claims 19 and 16 are directed to a method for forming the
hermetic seal.
The claims may be further understood with reference to
the text of the appealed claims as set out in appellant’s
appendix to the appeal brief.
The References
The references of record relied upon by the examiner as
evidence of obviousness are:
Rozmus et al. (Rozmus) 4,478,788 Oct. 23,
1984
Sato et al. (Sato) 5,004,656 Apr. 2,
1991
Chaney, Jr. et al. (Chaney) 5,114,808 May 19,
1992
The Rejections
Appeal No. 1997-3513
Application No. 08/263,700
3
Claims 18, 8 and 10 stand rejected under 35 U.S.C. § 103
as unpatentable over Sato in view of Chaney and Rozmus. The
entire rationale for this rejection is set out in detail on
pages 3 through 7 of the examiner’s answer.
Claims 19 and 16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Sato in view of Chaney and Rozmus. For the
details of this rejection, reference is made to pages 7
through 9 of the examiner’s answer.
OPINION
We have carefully reviewed the rejections on appeal in
light of the arguments of the appellant and the examiner. As
a consequence of this review, we have determined that the
applied prior art does not establish the prima facie
obviousness of the claims on appeal. Accordingly, the
rejections of all claims on appeal are reversed. Our reasons
follow.
It is our finding that Sato discloses a sealed battery
pack with a stainless steel case. The electrolyte in Sato is
added through a cylindrical port 12. In Figures 2 through 6,
Sato discloses hermetically sealing the passageway 12 with a
spherical sealing member. Generally, Sato discloses two
Appeal No. 1997-3513
Application No. 08/263,700
4
distinct spherical members. In Examples 1 through 4, the
sealing member is a spherical body of 2.3 mm in diameter made
of polytetrafluoroethylene. See column 5, lines 61 through
column 6, line 7. The Examples 5 through 8 utilize the
structure of Examples 1 through 4, but in Examples 5 through 8
the spherical member is made of stainless steel. In both
embodiments, the case and passageway are made of stainless
steel. Considering that Sato discloses both a polymer
spherical sealing member and a stainless steel spherical
member, it is difficult to generalize about whether Sato does
indeed represent a recognition in the art that this spherical
sealing member should be made harder than the passageway.
The examiner, in part, bases the rejection on the
inherent or implicit finding that the sphere of Sato is harder
than the material of the passageway due to the “reactive
stress” language used in the Sato specification at two
locations. The more detailed of these passages in the
specification reads as follows:
Further described in detail, in the embodiments of
the present invention, since the first sealing
member 13 is inserted in the electrolyte charging
opening 12 by press fitting to the inner surface of
the surrounding wall of the cylindrical or taper
cylindrical shaped opening 12, the circumference
Appeal No. 1997-3513
Application No. 08/263,700
5
wall of the electrolyte charging opening 12 is
expanded by the press fitting insertion of the first
sealing member 13 so that the reactive stress for
recovering the peripheral wall of the electrolyte
charging opening 12 is applied to the contacted
portion of the first sealing member 13, thereby
enhancing of the sealing function between the
peripheral wall of the electrolyte charging opening
12 and the first sealing member 13. (column 4, lines
6-19).
In our view, a close reading of this passage does not support
the examiner’s finding that Sato inherently teaches a ball of
harder material in the passageway. We note the language that
the opening 12 is expanded in that “reactive stress” for
recovering the peripheral wall of the electrolyte charging
opening 12 is applied to the “contacted portion” of the first
sealing member. In our view, this wording raises the
possibility that Sato is relying on elastic yielding of the
passageway in that the passageway expands elastically to allow
the ball to seat therein, and the reactive stress is the
elastic clamping force of the passageway on the spherical
sealing member 13. Therefore, it cannot be said with any
certainty that the specification of Sato supports the
conclusion that the passageway deforms plastically or is
allowed to “flow” around the ball, forming a seal therewith,
as required by the independent claims on appeal. Thus, the
Appeal No. 1997-3513
Application No. 08/263,700
6
examiner’s finding that Sato implicitly requires a ball harder
than the passageway material is based on assumption or
speculation. A proper obviousness determination, under 35
U.S.C. § 103, cannot be based on assumptions or speculation.
With respect to the disclosure of Chaney, we note in
column 4, starting at line 34, that the passageway liner 29
can be either resilient or nonresilient and can be made of
many suggested materials. Likewise, the ball 56 of Chaney can
be made either resilient or nonresilient and of various
materials. Thus, Chaney does not provide motivation or a
suggestion for making both the ball hard and the passageway
hard but ensuring that the
ball is much harder than the passageway. In fact, the Chaney
disclosure would suggest the ball can be made harder than the
passageway or vice versa.
On the other hand, Rozmus does show sealing a passageway
with a ball, the ball being made of steel, and thus being much
harder than the passageway material which is disclosed as
copper. We agree with the examiner that Rozmus discloses the
plastic flow of the softer material around the ball providing
a proper seal. However, if one of ordinary skill were to
Appeal No. 1997-3513
Application No. 08/263,700
7
apply this teaching to Sato, and use a soft material such as
copper for the passageway of Sato, the claimed invention would
not be the result. Additionally, we note the
presence in the claims of limitations directed to the specific
hardness of the ball and the specific smoothness of the
surface area. With respect to these limitations, the examiner
has stated that optimizing the hardness of the material, the
size, the diameter and the smoothness is well within the
purview of the artisan, inasmuch as “[o]nce the general
conditions of a claim are known[,] to optimize parameters is
obvious.” (answer, page 6). However, in our view, as
discussed above, the prior art cited does not indicate the
direction the parameter should be changed for any improved
result. For example, in Sato, both polymer and steel sealing
members are suggested. Furthermore, it is unclear whether
Sato contemplates plastic deformation of the passageway or
merely the elastic expansion thereof. With respect to Chaney,
both resilient and nonresilient spherical sealing members are
disclosed. Finally, Rozmus uses a passageway material which,
as pointed out by appellant in the reply brief, is orders of
magnitude softer than the passageway material claimed (page 4,
Appeal No. 1997-3513
Application No. 08/263,700
8
n.1). The teachings in the three references simply do not
indicate to one of ordinary skill how to improve the
parameters, the optimization of which the examiner has
indicated would have been obvious. Accordingly, it is our
determination that it would not have been obvious from the
applied prior art to utilize a ball of the claimed hardness
with the claimed smoothness upon its exterior surface.
Appeal No. 1997-3513
Application No. 08/263,700
9
For the foregoing reasons, a prima facie case of
obviousness has not been established. The rejections on
appeal are reversed.
REVERSED
Ian A. Calvert )
Administrative Patent Judge )
)
)
)
William F. Pate ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Jennifer D. Bahr )
Administrative Patent Judge )
WFP:tdl
Appeal No. 1997-3513
Application No. 08/263,700
10
Girma Wolde-Michael
Medtronic, Inc.
7000 Central Avenue, N.E.
Minneapolis, MN 55432